b'EXTENDED READINGS ON COPYRIGHT\nBY MATTHEW SAG\n\xc2\xa9 Matthew Sag (2018\xe2\x80\x932019). No copyright claimed in United States government works or the works of other authors\nspecifically credited herein. This work is released under a Creative Commons (Attribution-NonCommercial-ShareAlike\n4.0 International) license. Email the author at matthewsag@gmail.com subject \xe2\x80\x9cEROC\xe2\x80\x9d for additional permissions,\nsuggestions, and corrections. Note: (1) All case extracts are edited for concision and readability; (2) Placeholders included\nfor topics to be addressed in future versions (3) cite as MATTHEW SAG, EXTENDED READINGS ON COPYRIGHT, [Chapter\nHeading], [Version], [page].\n\n2019 Edition (August 5, 2019)\n\n\x0cABOUT THIS BOOK\nOrigins. This book is a collection of materials that I have developed for my Copyright Law\nclass at Loyola University Chicago over the past few years. The title, Extended Readings on\nCopyright, indicates the origins of this project. Early on, my aim was simply to supplement\nexisting casebooks in those areas where I found them to be unhelpful or out of date. Soon\nenough, the project expanded to the book you are reading now. This book contains several\nplaceholders for further development that I have left in place so that the reader has a sense\nof what they might be missing. Extended Readings on Copyright will probably always be\nsomething of a work in progress because the law of copyright changes so rapidly.\nNevertheless, I think that the book has progressed far enough to be useful.\nThis book is what you make of it. This book is subject to a non-commercial Create Commons\nlicense that allows you to add, subtract, and amend as you see fit, provided you extend those\nterms to any derivative work based on these materials and provided your provide\nappropriate attribution. I encourage you to share your edits and additions with me, but it is\nnot obligatory. Extended Readings on Copyright can be used as a stand alone textbook on United\nStates copyright law. The individual chapters are available on the website\n(matthewsag.com/eroc), and these can be used to supplement other materials. Individual\nchapters are likely to be more up to date than this consolidated build of the book.\nTaking accessibility seriously. Readers might find some of the formatting, editorial, and layout\ndecisions in this book unusual. I have cleaned up internal citations in the cases and expanded\nmost of the abbreviations to make the text flow more smoothly for those using assistive\ntechnologies. The traditional Blue Book conventions used in law are incredibly hostile to the\nvisually disabled and I see no reason to perpetuate the conventional practice of that\nexclusion by design. I have compromised slightly on the issue of footnotes. In my own\nmaterial I have tried to use footnotes sparingly. Where a footnote in a case is worth reading,\nI have promoted it to the main text. This book is available as a .docx file and a .ppt file.\nThose who require larger print sound be able to achieve this simply by changing the style\ndefinitions and updating the table of contents. If there are ways in which this book can be\nmore accessible, please let me know.\nOther reasons to use this book. Although Extended Readings on Copyright is primarily a book about\ncopyright law in the United States, I have tried to situate American law in an international\nand comparative context where possible. Seeing how the law works in other jurisdictions\nprovides an insight into how the law in the United States could be different. Furthermore,\nevery copyright specialist should have some basic understanding of how the international\nintellectual property system works, if only to be able to evaluate appeals to the authority of\nthe Berne Convention, the TRIPs agreement, and other international copyright agreements.\nACKNOWLEDGMENTS\nI have sought and received permission to include extracts from several notable academics,\nfor which I am grateful. Other copyright material is included in reliance on the fair use\ndoctrine.\n\n2\n\n\x0cEXTENDED READINGS ON COPYRIGHT\nSubject Oriented Table of Contents\n1. Introduction to Copyright Law\nAn Overview of Copyright\nThe historical development of copyright law\nThe Expansion of Copyright Rights and Subject Matter\nJurisprudential changes\nThe \xe2\x80\x9cwhy\xe2\x80\x9d of copyright law\nKey economic concepts in copyright law\nCopyright\xe2\x80\x99s International Framework\nA quick look at the rights of the copyright owner\n\n17\n17\n18\n28\n28\n28\n32\n35\n37\n\n2. Copyright Subject Matter and Questions of Creativity, Originality, and\nIntellectual Creation\nThe significance of Creativity, originality, and authorship\nInternational Context\nCreativity, originality and copyright subject matter in the United States\n\n40\n40\n40\n42\n\n3. The Exclusion of Facts, Ideas, Functions, and Processes from Copyright\nProtection\nThe idea-expression distinction and levels of generality\nThe exclusion of facts, ideas, functions, and processes in the United States\nSection 102(b) of the Copyright Act\nMerger and sc\xc3\xa8nes \xc3\xa0 faire\nThe law itself is not copyrightable\nOther exclusions from copyright\n\n68\n69\n75\n83\n94\n107\n114\n\n4. The Historical Development of the Concepts of Reproduction, Adaptation, and\nFair Use\n118\nReproduction and Adaptation\xe2\x80\x94Current International Framework\n118\nReproduction, Adaptation, and Fair Use\xe2\x80\x94United States Framework\n119\nThe Historical Context of the Reproduction Right\n120\nReproduction in the Modern Era\n130\nThe right to prepare a derivative work based upon the copyrighted work\n138\nThe Scope of Copyright in Derivative Works\n151\n5. The Reproduction Right\nThe meaning of reproduction\nDifferent tests and approaches\nThe confusing role of similarity in copyright infringement\nThe ordinary observer test(s)\n\xe2\x80\x9cTotal Concept and Feel\xe2\x80\x9d\nThe abstraction, filtration, and comparison test\n\n3\n\n153\n153\n155\n185\n189\n191\n201\n\n\x0c6. An Overview of Copyright Limitations and Exceptions\nHow to think about copyright limitations and exceptions\nCopyright limitations and exceptions required by international agreements\nSignificant limitations and exceptions to copyright in the United States\nInternational constraints on copyright limitations and exceptions\n\n203\n203\n204\n204\n206\n\n7. Expressive Fair Use\nThe modern era of fair use in the United States\nTransformative use and appropriation art\nUntransformative Copying and New Markets\nRecent fair use cases\n\n209\n209\n228\n241\n266\n\n8. Fair use and non-expressive use\nNon-Expressive Use\nThe relationship between transformative use and non-expressive use\nText data mining in the European Union\n\n267\n267\n312\n314\n\n9. Copyright subject matter and the boundaries of the work\nLocating the threshold of copyrightability\nChallenging cases\n\n317\n317\n320\n\n10. Ownership, Authorship and Transfer\nInitial ownership of copyright interests: International framework\nInitial ownership of copyright interests under United States copyright law\nOwnership of employee works and commissioned works\nNon-employee works made for hire\nTransfer of copyright interests\nFractured ownership \xe2\x80\x93 copyright divisability\nUnited States rules on the termination of transfers\n\n339\n339\n339\n359\n361\n362\n364\n369\n\n11. Moral Rights\nWhat are moral rights?\nThe international legal framework for moral rights protection\nMoral rights in the United States outside the Copyright Act\nMoral rights in the United States under VARA\n\n380\n380\n380\n381\n392\n\n12. Formalities and Duration\nInternational Context\xe2\x80\x94The Berne Convention Prohibition on Formalities\nThe significance of formalities in the United States\nCopyright Duration\nInternational Norms and Agreements Concerning Copyright Duration\nCopyright Duration in the United States\nThe constitutionality and wisdom of copyright term extension\nOrphan works\nDoes the fair use doctrine justify the use of orphan works?\n\n421\n421\n422\n433\n435\n436\n440\n451\n452\n\n4\n\n\x0cLegislative responses to the orphan works problem in the European Union\nThe effect of long copyright terms on the availability of older works\n\n455\n458\n\n13. Copyright and Industrial Design\nDifferent Approaches to Functional Art\nProtecting industrial designs and other PGS works through copyright\nWhat is \xe2\x80\x9cconceptual separability\xe2\x80\x9d after Star Athletica v. Varsity Brands?\nCopyright and design in the wake of Star Athletica, L.L.C. v. Varsity Brands\n\n461\n461\n463\n467\n481\n\n14. Copyright in Computer Software\nCopyright in Computer Programs under Berne and TRIPs\nAn overview of copyright protection for computer software in the United States\nThe history of software copyright litigation in the United States\nThe Oracle v. Google Cases\n\n486\n486\n486\n488\n494\n\n15. Distribution & First Sale\nInternational framework\nThe Distribution Right in the United States\nThe First Sale Doctrine in the United States\nLimits to the First Sale Doctrine in a Digital World\nRental Rights and Lending Rights\nThe \xe2\x80\x9cDroit De Suite\xe2\x80\x9d and Resale Royalties\n\n520\n520\n521\n527\n553\n563\n564\n\n16. Public Performance, Display & Transmission\nThe international framework for performance, display and transmission rights\nPerformance and display in the United States\nThe display right\nThe performance right\nTransmission rights\nThe \xe2\x80\x9cHomestyle\xe2\x80\x9d and Other Exceptions to the public performance right\nCable & Satellite Licenses\n\n567\n567\n569\n569\n571\n574\n588\n589\n\n17. Secondary Liability for Copyright Infringement\nInternational framework\nSecondary Liability for Copyright Infringement in the United States\nLiability of Device Manufacturers and Service Providers\nSignificant Post-Grokster Secondary Liability Cases\nTertiary Liability?\n\n590\n590\n590\n594\n600\n625\n\n18. Internet Safe Harbors From Claims of Copyright Infringement\n629\nThe Digital Millennium Copyright Act and the Origins of the Section 512 Safe Harbors 629\nThe Section 512 Safe Harbors\n632\nExtended commentary on Section 512(i)(A) and what it means to reasonably implement a\nrepeat infringer policy\n637\nSection 512(c) \xe2\x80\x9cstorage at the direction of a user\xe2\x80\x9d\n646\n5\n\n\x0cDesignating an agent to receive notifications of claimed infringement\nWhat activities are at the direction of the user for the purposes of Section 512(c)?\nLiability for misrepresentation under 512(f)\nEuropean Union Internet safe harbors\n\n653\n654\n658\n669\n\n19. Digital Rights Management and Copyright Management Information\n676\nThe Circumvention of Technological Protection Measures (aka Digital Rights Management)\n\xe2\x80\x94 International\n676\nThe Circumvention of Technological Protection Measures (aka Digital Rights\nManagement)\xe2\x80\x94United States\n676\nCopyright Management Information\n694\n20. Volitional Conduct, Linking and Ancillary Copyright\nVolitional Conduct\nThe Copyright Implications of Linking and Embedding on the Internet\nLinking in the European Union\nAncillary Copyright in the European Union\n\n707\n707\n737\n751\n759\n\n21. Remedies for Copyright Infringement\nThe International Framework on Remedies for Copyright Infringement\nRemedies for Copyright Infringement in the United States\nActual Damages and Undue Profits\nInjunctions\nStatutory damages\nAttorney\xe2\x80\x99s fees\nThe significance of copyright formalities in copyright litigation\n\n765\n765\n765\n766\n767\n768\n777\n781\n\n22. Procedural Issues in Copyright Litigation\nStanding\nRegistration and jurisdiction\nChoice of law\nClass Actions\nStatute of Limitations\nSovereign Immunity\nCopyright and the preemption of state law causes of action\n[Placeholder for procedural issues in practice before the U.S. Copyright Office]\n\n788\n788\n800\n808\n808\n808\n818\n823\n834\n\n6\n\n\x0cEXTENDED READINGS ON COPYRIGHT\nComplete Table of Contents\n1. Introduction to Copyright Law\nAn Overview of Copyright\nThe historical development of copyright law\n\n17\n17\n18\n\nMonopoly and censorship as a response to the printing press\nThe First Copyright Act: the Statute of Anne\nThe Battle of the Booksellers, or the Question of Literary Property\nMillar v Taylor 98 Eng. Rep. 201 (K.B. 1769)\nDonaldson v. Becket (1774) 1 Eng. Rep. 837\nThe Battle of the Booksellers 2.0, or the Question of Literary Property in United States\nWheaton v. Peters, 33 U.S. 591 (1834)\n\nThe Expansion of Copyright Rights and Subject Matter\nJurisprudential changes\nThe \xe2\x80\x9cwhy\xe2\x80\x9d of copyright law\nUtilitarian versus natural rights perspectives\nIs copyright property?\n\n18\n19\n20\n21\n21\n22\n23\n\n28\n28\n28\n28\n31\n\nKey economic concepts in copyright law\n\n32\n\nThe standard model\nCopyright and Creativity: Evidence from Italian Operas\nLess money, more music?\nSequential innovation\nHow do people respond to copyright incentives?\n\nCopyright\xe2\x80\x99s International Framework\n\n32\n34\n34\n35\n35\n\n35\n\nWhy and to what extent is the law of intellectual property international?\nCopyright\xe2\x80\x99s International Framework\n\nA quick look at the rights of the copyright owner\n2. Copyright Subject Matter and Questions of Creativity, Originality, and\nIntellectual Creation\nThe significance of Creativity, originality, and authorship\nInternational Context\nCreativity, originality and copyright subject matter in the United States\nPre-Feist\nBurrow-Giles Lithographic Co. v. Sarony, 111 US 53 (1884)\nBleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903)\nAlfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir.1951)\nFeist\nFeist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)\nThe Monkey Selfie and Computer Generated Works\nOriginality and Derivative Works\n\n3. The Exclusion of Facts, Ideas, Functions, and Processes from Copyright\nProtection\nThe idea-expression distinction and levels of generality\nNichols v. Universal Pictures 45 F.2d 119 (2d Cir. 1930)\n\nThe exclusion of facts, ideas, functions, and processes in the United States\n7\n\n35\n36\n\n37\n\n40\n40\n40\n42\n42\n42\n46\n50\n53\n54\n67\n67\n\n68\n69\n69\n\n75\n\n\x0cBaker v. Selden, 101 US 99 (1880)\nRationales for the idea-expression distinction\nRationales for the Exclusion of Functionality from Copyright Protection\n\n75\n81\n82\n\nSection 102(b) of the Copyright Act\n\n83\n\nHow to Read Section 102(b)\nHow to Apply Section 102(b)\nBikram\xe2\x80\x99s Yoga College of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir. 2015)\n\n84\n85\n85\n\nMerger and sc\xc3\xa8nes \xc3\xa0 faire\n\n94\n\nThe Merger Doctrine\nSc\xc3\xa8nes \xc3\xa0 Faire\nLexmark Int\xe2\x80\x99l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004)\n\n94\n95\n96\n\nThe law itself is not copyrightable\n\n107\n\nBanks v. Manchester, 128 U.S. 244 (1888)\n107\nRecent cases: Code Revision Commission v. Public Resource\n109\nCode Revision Commission v. Public.Resource.Org, Inc., 906 F. 3d 1229 (11th Cir. 2018)\n109\nRecent cases: ASTM v. Public Resource\n111\nAmerican Society for Testing & Materials v. Pub.Resource.Org, Inc., 896 F.3d 437 (D.C. Cir. 2018)113\n\nOther exclusions from copyright\n\n114\n\n4. The Historical Development of the Concepts of Reproduction, Adaptation, and\nFair Use\n118\nReproduction and Adaptation\xe2\x80\x94Current International Framework\n118\nBerne Convention\nThe Information Society Directive\n\n118\n119\n\nReproduction, Adaptation, and Fair Use\xe2\x80\x94United States Framework\nThe Historical Context of the Reproduction Right\n\n119\n120\n\nGyles v. Wilcox (1740) 26 ER 489\nFolsom v. Marsh, 9 F. Cas. 342, 349 (C.C.D. Mass. 1841) (No. 4901)\n\n121\n124\n\nReproduction in the Modern Era\n\n130\n\nWhite-Smith Music Publishing Co. v. Apollo Co 209 U.S. 1 (1908)\nKalem Co. v. Harper Brothers, 222 U.S. 55 (1911)\n\n130\n135\n\nThe right to prepare a derivative work based upon the copyrighted work\n\n138\n\nEarlier Copyright Acts\nThe Copyright Act of 1976\nLimiting principles\nThe Harry Potter Lexicon Case as an illustration of the relationship between the concepts of\nreproduction, adaptation, and fair use\nWarner Brothers Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008)\nPenguin Random House LLC v. Colting, 270 F. Supp. 3d 736 (S.D.N.Y. 2017)\n\nThe Scope of Copyright in Derivative Works\n\n138\n138\n139\n140\n141\n146\n\n151\n\n5. The Reproduction Right\nThe meaning of reproduction\nDifferent tests and approaches\n\n153\n153\n155\n\nArnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)\nThe extrinsic/intrinsic test for infringement of the reproduction right\nWilliams v. Gaye, 885 F. 3d 1150 (9th Cir. 2018)\n\nThe confusing role of similarity in copyright infringement\nProbative similarity versus substantial similarity\n\n8\n\n156\n162\n162\n\n185\n185\n\n\x0cThere is no simple relationship between probative and substantial similarity\nThe Inverse Ratio Rule\xe2\x80\x94\xe2\x80\x9chow is this still a thing?\xe2\x80\x9d\n\nThe ordinary observer test(s)\n\n186\n188\n\n189\n\nProblems with the ordinary observer test\n\n189\n\n\xe2\x80\x9cTotal Concept and Feel\xe2\x80\x9d\n\n191\n\nTufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003)\n\nThe abstraction, filtration, and comparison test\n6. An Overview of Copyright Limitations and Exceptions\nHow to think about copyright limitations and exceptions\n\xe2\x80\x9cTrue limitations and exceptions\xe2\x80\x9d versus \xe2\x80\x9cinherent limitations\xe2\x80\x9d\nRules v. Standards\n\nCopyright limitations and exceptions required by international agreements\nSignificant limitations and exceptions to copyright in the United States\nStatutory licenses\nCodifying inherent limitations\nTrue limitations and exceptions\nWhere does fair use fit in?\n\n192\n\n201\n203\n203\n203\n203\n\n204\n204\n204\n204\n204\n205\n\nInternational constraints on copyright limitations and exceptions\nThe Three Step Test\nWorld Trade Organization Panel Decision re: US \xe2\x80\x93 SECTION 110(5) COPYRIGHT ACT\n(DS160)\nHow Restrictive is the Three-Step Test?\n\n7. Expressive Fair Use\nThe modern era of fair use in the United States\nThe state of fair use prior to Campbell v. Acuff-Rose Music\nCampbell v. Acuff-Rose and its legacy\nCampbell v. Acuff-Rose Music, Inc., 510 US 569 (1994)\nHow far does the concept of transformative use extend?\nMattel Inc. v. Walking Mountain Products, 353 F.3d 792 (9th Cir. 2003)\nSuntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270 (11th Cir. 2001)\n\nTransformative use and appropriation art\n\n206\n206\n206\n207\n\n209\n209\n209\n210\n210\n224\n225\n226\n\n228\n\nCariou v. Prince, 714 F. 3d 694 (2d Cir. 2013)\n\nUntransformative Copying and New Markets\n\n228\n\n241\n\nSony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984)\n242\n[Placeholder] American Geophysical Union v. Texaco Inc., 60 F. 3d 913 (2d Cir. 1994)\n246\nA & M Records, Inc. v. Napster, Inc., 239 F. 3d 1004 (9th Cir. 2001)\n246\nNon-transformative, but preferred uses \xe2\x80\x93 Providing access to the print-disabled\n252\nAuthors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014)\n253\nBasic Books, Inc. v. Kinko\'s Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991).\n257\nPrinceton University Press v. Michigan Document Services, Inc., 99 F.3d 1381, 1383 (6th Cir.\n1996) (en banc)\n257\nThe GSU Copyright Case\n258\nCambridge University Press v. Albert, 906 F.3d 1290 (11th Cir. 2018)\n258\n\nRecent fair use cases\n\n266\n\n8. Fair use and non-expressive use\nNon-Expressive Use\n\n267\n267\n9\n\n\x0cReverse Engineering\nSega Enter. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)\nAnti-plagiarism software\nA.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009)\nText Data Mining & Search Engine Cases\nThe image search cases: Kelly and Perfect 10\nAuthors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014)\nAuthors Guild v. Google, Inc., 804 F. 3d 202 (2d Cir. 2015)\n\n267\n267\n273\n273\n282\n282\n283\n293\n\nThe relationship between transformative use and non-expressive use\n\n312\n\nMatthew Sag, The New Legal Landscape for Text Mining and Machine Learning, (Available at\nhttps://ssrn.com/abstract=3331606)\n\n312\n\nText data mining in the European Union\n\n314\n\nArticle 3 of the European Union Digital Single Market Directive\n\n9. Copyright subject matter and the boundaries of the work\nLocating the threshold of copyrightability\n\n314\n\n317\n317\n\nCategories of work recognized by the Copyright Act.\nOriginality\nFixation\n\n317\n317\n319\n\nChallenging cases\n\n320\n\nGarcia v. Google, Inc., 786 F. 3d 733 (9th Circuit 2015) (en banc)\n16 Casa Duse, LLC v. Merkin, 791 F. 3d 247 (2nd Cir. 2015)\n\n10. Ownership, Authorship and Transfer\nInitial ownership of copyright interests: International framework\nInitial ownership of copyright interests under United States copyright law\n\n320\n331\n\n339\n339\n339\n\nOwnership of the physical embodiment of the work has no bearing on copyright ownership\nPope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.)\nAuthorship and ownership are inextricably entwined\nCoauthors are joint owners of the work\nWho qualifies as a joint author?\nAalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)\nJoint works and derivative works\nWeissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989)\n\nOwnership of employee works and commissioned works\nWho is an employee?\nCommunity for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)\nWhat is within the scope of employment?\n\nNon-employee works made for hire\nTransfer of copyright interests\n\n339\n339\n340\n341\n341\n342\n350\n350\n\n359\n360\n360\n361\n\n361\n362\n\nRequirements for transfer\nFailed transfers and implied licenses\nEffects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990)\n\nFractured ownership \xe2\x80\x93 copyright divisability\n\n362\n363\n363\n\n364\n\nGardner v. Nike 279 F.3d 774, 780 (9th Cir. 2002)\n\nUnited States rules on the termination of transfers\nPost-1978 Grants\nPre-1978 Grants\nTerminated derivatives\n\n364\n\n369\n369\n370\n371\n\n10\n\n\x0cStewart v. Abend 495 U.S. 207 (1990)\n\n371\n\n11. Moral Rights\nWhat are moral rights?\nThe international legal framework for moral rights protection\nMoral rights in the United States outside the Copyright Act\nThe patchwork approach\nThe Dastar Decision and its aftermath\nDastar v. Twentieth Century Fox 539 U.S. 23 (2003)\nDefined Space, Inc. v. Lakeshore East, LLC 797 F.Supp.2d 896 (N.D. Ill. 2011)\n\nMoral rights in the United States under VARA\nThe rights of attribution and integrity and their limits\nThe duration rights under VARA\nA case study of VARA in action\nCohen v. G&M Realty LP, 320 F.Supp.3d 421 (EDNY 2018) (February 12, 2018)\n\n12. Formalities and Duration\nInternational Context\xe2\x80\x94The Berne Convention Prohibition on Formalities\nThe significance of formalities in the United States\nNotice\nRegistration & Deposit\nWhat is publication?\nEstate of Martin Luther King v. CBS, INC., 194 F. 3d 1211 (11th Cir. 1999)\nThe effect of publication of derivative works\n\nCopyright Duration\nInternational Norms and Agreements Concerning Copyright Duration\nThe Berne Formula: life of the author plus 50 years\nBeyond Berne\n\nCopyright Duration in the United States\n\n380\n380\n380\n381\n381\n382\n382\n389\n\n392\n398\n399\n400\n400\n\n421\n421\n422\n422\n423\n423\n423\n433\n\n433\n435\n435\n435\n\n436\n\nOverview\nComplexity\nCopyright Duration for unpublished works\nSpecial rules apply to sound recordings\n\n436\n436\n438\n438\n\nThe constitutionality and wisdom of copyright term extension\nEldred v. Ashcroft, 537 U.S. 186 (2003)\nGolan v. Holder, 565 U.S. 302 (2012)\n\n440\n441\n441\n\nOrphan works\nDoes the fair use doctrine justify the use of orphan works?\nOrphan works example 1: the Civil Rights Movement Veterans Website\nOrphan works example 2: Trove, The National Library of Australia\xe2\x80\x99s Digital Archive\n\nLegislative responses to the orphan works problem in the European Union\nThe effect of long copyright terms on the availability of older works\nNotes and questions:\n\n451\n452\n452\n453\n\n455\n458\n459\n\n13. Copyright and Industrial Design\nDifferent Approaches to Functional Art\n\n461\n461\n\nDesign Patents in the United States\n\n462\n\nProtecting industrial designs and other PGS works through copyright\n\n11\n\n463\n\n\x0cPGS works\nUseful Articles and Conceptual Severability\nMazer v. Stein, 347 U.S. 201 (1954)\nDistinguishing Between Useful and Useless Articles\n\nWhat is \xe2\x80\x9cconceptual separability\xe2\x80\x9d after Star Athletica v. Varsity Brands?\nBefore Star Athletica\nStar Athletica LLC v. Varsity Brands Inc. 137 S.Ct. 1002 (2017)\n\nCopyright and design in the wake of Star Athletica, L.L.C. v. Varsity Brands\nYeezy Boost\n\n463\n463\n463\n466\n\n467\n467\n468\n\n481\n482\n\n14. Copyright in Computer Software\nCopyright in Computer Programs under Berne and TRIPs\nAn overview of copyright protection for computer software in the United States\nThe history of software copyright litigation in the United States\nPeter S. Menell, API Copyrightability Bleak House: Unraveling and Repairing the Oracle v. Google\nJurisdictional Mess, 31 Berkeley Technology Law Journal, 1515 (2016)\n\nThe Oracle v. Google Cases\n\n486\n486\n486\n488\n488\n\n494\n\nOracle America, Inc. v. Google LLC 886 F.3d 1179 (Fed. Cir. 2018)\n\n15. Distribution & First Sale\nInternational framework\nThe Distribution Right in the United States\n\n496\n\n520\n520\n521\n\nDistribution by digital transmission?\nDistribution versus \xe2\x80\x9cMaking Available\xe2\x80\x9d\nExtended Discussion: The Copyright Office\xe2\x80\x99s 2016 Making Available Report\n\nThe First Sale Doctrine in the United States\n\n521\n523\n524\n\n527\n\nBobbs-Merrill Co. v. Straus 210 U.S. 339 (1908)\nStatutory recognition of distribution right and first sale doctrine\nCopyright Exhaustion and Parallel Importation\nKirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013)\nCopyright Misuse\nOmega SA v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir. 2015)\nContractual Restraints on the First Sale Doctrine\nSale versus license\nAdobe Sys. Inc. v. Christenson, 809 F.3d 1071 (9th Cir. 2015)\n\nLimits to the First Sale Doctrine in a Digital World\nCapitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018)\n\nRental Rights and Lending Rights\n\n527\n530\n530\n530\n540\n540\n548\n548\n548\n\n553\n553\n\n563\n\nRental Rights in the United States\nLibrary Lending, Printed Books vs. eBooks\nPublic Lending Rights in Other Jurisdictions\n\n563\n563\n564\n\nThe \xe2\x80\x9cDroit De Suite\xe2\x80\x9d and Resale Royalties\n\n564\n\nClose v. Sotheby\xe2\x80\x99s 894 F.3d 1061 (9th Cir. 2018)\n\n16. Public Performance, Display & Transmission\nThe international framework for performance, display and transmission rights\nPerformance and display in the United States\nThe display right\n\n12\n\n564\n\n567\n567\n569\n569\n\n\x0cThe performance right\n\n571\n\nPerformance rights for sound recordings and musical works are different\nKristelia A. Garc\xc3\xada, Facilitating Competition by Remedial Regulation, 31 Berkeley Technology Law\nJournal, 183, 192\xe2\x80\x9393 (2016)\nThe Digital Performance Right in Sound Recordings Act\nPerformance Rights Organizations (PROs)\n\n571\n571\n572\n573\n\nTransmission rights\n\n574\n\nTransmission and public performance under the 1909 Act\nPublic Performance and the \xe2\x80\x9cTransmit Clause\xe2\x80\x9d Under the 1976 Act\nCablevision\nAmerican Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498 (2014)\n\n574\n575\n576\n576\n\nThe \xe2\x80\x9cHomestyle\xe2\x80\x9d and Other Exceptions to the public performance right\nCable & Satellite Licenses\n17. Secondary Liability for Copyright Infringement\nInternational framework\nSecondary Liability for Copyright Infringement in the United States\n\n588\n589\n590\n590\n590\n\nJustifications for secondary liability\nStatutory Basis\nTypes of secondary liability\nShapiro, Bernstein & Co. v. H. L. Green Co., 316 F.2d 304 (2 Cir. 1963)\nGershwin Pub. Corp. v. Columbia Artist Management, Inc., 443 F.2d 1159 (2d Cir. 1971)\n\nLiability of Device Manufacturers and Service Providers\nThe Sony Safe Harbor\nSony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417 (1984)\nNapster and Grokster\nMetro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005)\n\nSignificant Post-Grokster Secondary Liability Cases\n\n590\n590\n591\n591\n592\n\n594\n594\n594\n598\n599\n\n600\n\nPerfect 10, Inc. v. Visa International Service Association, 494 F.3d 788 (9th Cir. 2007)\n600\nSecondary liability for Internet Service Providers\n613\nBMG Rights Management (US) LLC v. Cox Communications, Inc., 881 F.3d 293 (4th Cir. 2018) 613\nCobbler Nevada, LLC v. Gonzales, 901 F. 3d 1142 (9th Cir. 2018)\n618\n\nTertiary Liability?\n\n625\n\nUMG Recordings, Inc. v. Shelter Capital Partners, 718 F.3d 1006, (9th Cir. 2013)\n\n625\n\n18. Internet Safe Harbors From Claims of Copyright Infringement\n629\nThe Digital Millennium Copyright Act and the Origins of the Section 512 Safe Harbors 629\nMatthew Sag, Internet Safe Harbors and the Transformation of Copyright Law\n\nThe Section 512 Safe Harbors\n\n629\n\n632\n\nOverview\nService Provider\nConditions for Eligibility\xe2\x80\x93In General\nConditions for eligibility\xe2\x80\x93repeat infringer policies\nA case study in how not to implement a repeat infringer policy: BMG Rights Management v.\nCox Communications.\n\n632\n632\n633\n633\n634\n\nExtended commentary on Section 512(i)(A) and what it means to reasonably implement a\nrepeat infringer policy\n637\nWhat counts as a repeat infringer policy under Section 512(i)(A)\nWhat does it mean to have \xe2\x80\x9creasonably implemented\xe2\x80\x9d a repeat infringer policy?\n\n13\n\n637\n644\n\n\x0cSection 512(c) \xe2\x80\x9cstorage at the direction of a user\xe2\x80\x9d\nWhat counts as knowledge of infringement under the DMCA safe harbors?\nViacom International, Inc. v. YouTube, Inc., 676 F. 3d 19 (2d Cir. 2012)\nActual knowledge and \xe2\x80\x9cred flag\xe2\x80\x9d knowledge\nWillful blindness\nControl and Benefit: \xc2\xa7 512(c)(1)(B)\nThe status of pre-1972 sound recordings under the DMCA.\n\nDesignating an agent to receive notifications of claimed infringement\nWhat activities are at the direction of the user for the purposes of Section 512(c)?\nMavrix Photographs, LLC v. Livejournal, Inc., 873 F.3d 1045 (9th Cir. 2017)\n\nLiability for misrepresentation under 512(f)\n\n646\n646\n647\n647\n649\n650\n652\n\n653\n654\n654\n\n658\n\nThe case of the dancing baby\nLenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2015)\n\nEuropean Union Internet safe harbors\n\n659\n660\n\n669\n\nThe E-Commerce Directive & the Information Society Directive\nDigital Single Market Directive\n\n669\n671\n\n19. Digital Rights Management and Copyright Management Information\n676\nThe Circumvention of Technological Protection Measures (aka Digital Rights Management)\n\xe2\x80\x94 International\n676\nThe Circumvention of Technological Protection Measures (aka Digital Rights\nManagement)\xe2\x80\x94United States\n676\nAn overview of the DMCA\nDMCA exceptions and limitations\nAdministrative Exemptions\nMDY Industries, LLC v. Blizzard Entertainment, Inc., 629 F. 3d 928 (9th Cir. 2010)\n\nCopyright Management Information\n\n676\n678\n679\n679\n\n694\n\nLeveyfilm, Inc. v. Fox Sports Interactive Media, 999 F. Supp. 2d 1098 (ND Il. 2014)\nStevens v. Corelogic, Inc., 899 F. 3d 666 (9th Cir. 2018)\nSome notes on the interpretation of Section 1202\n\n20. Volitional Conduct, Linking and Ancillary Copyright\nVolitional Conduct\n\n695\n699\n705\n\n707\n707\n\nIntroduction\n707\nNew technologies expose latent ambiguities in copyright law\n707\nReligious Tech. Ctr. v. Netcom On-Line Communication Services, Inc., 907 F. Supp. 1361 (N.D. Cal.\n1995)\n709\nCoStar\n711\nCoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544 (4th Cir. 2004)\n711\nCablevision\n713\nCartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008)\n713\nFox Broadcast Corporation, Inc. v. Dish Network L.L.C., 747 F.3d 1060 (9th Cir. 2013)\n718\nVolition as proximate cause?\n720\nPerfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017)\n721\nBWP Media USA Inc. v. Polyvore, Inc. (2d Cir. 2019) (April 17, 2019)\n722\n\nThe Copyright Implications of Linking and Embedding on the Internet\nThe Server Test\nPerfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)\nGoldman v. Breitbart News Network, LLC, 302 F.Supp.3d 585 (SDNY 2018)\n\n14\n\n737\n737\n737\n741\n\n\x0cLinking in the European Union\n\n751\n\nSvensson v. Retriever Sverige AB, Case C 466/12 (13 February 2014)\nGS Media BV v. Sanoma Media Netherlands BV and Others (Case C-160/15) CJEU (2015)\n\nAncillary Copyright in the European Union\n\n751\n752\n\n759\n\nArticle 15 of the Digital Single Market Directive (Ancillary Copyright)\n\n21. Remedies for Copyright Infringement\nThe International Framework on Remedies for Copyright Infringement\nRemedies for Copyright Infringement in the United States\nActual Damages and Undue Profits\nInjunctions\nThe effect of eBay v. MercExchange\n\n760\n\n765\n765\n765\n766\n767\n767\n\nStatutory damages\n\n768\n\nWho should decide on the amount of statutory damages?\nFeltner v. Columbia Pictures Television, Inc., 523 US 340 (1998)\nOther issues in calculating statutory damages\nFriedman v. Live Nation Merchandise, Inc., 833 F. 3d 1180 (9th Cir. 2016)\n\nAttorney\xe2\x80\x99s fees\n\n769\n769\n772\n772\n\n777\n\nFactors vs. discretion\nNo dual standard for prevailing plaintiffs and defendants\nSpecial considerations for prevailing defendants\nWho is the \xe2\x80\x9cprevailing party\xe2\x80\x9d when a case is dismissed?\nOther questions about prevailing party\n\nThe significance of copyright formalities in copyright litigation\nRemedies and attorney\xe2\x80\x99s fees depend on timely registration\nWhen does infringement commence?\nDerek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008)\n\n22. Procedural Issues in Copyright Litigation\nStanding\nJohn Wiley & Sons, Inc. v. DRK Photo, 882 F.3d 394 (2d Cir. 2018)\n\nRegistration and jurisdiction\n\n777\n778\n779\n779\n780\n\n781\n781\n783\n783\n\n788\n788\n788\n\n800\n\nRegistration vs. filing of a registration application\nFourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019)\nDifferent rules for some foreign works\n\nChoice of law\nClass Actions\nStatute of Limitations\n\n801\n801\n807\n\n808\n808\n808\n\nPetrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014)\n\nSovereign Immunity\n\n809\n\n818\n\nCambridge University Press v. Becker, 863 F. Supp. 2d 1190 (N.D. Ga. 2012)\n\nCopyright and the preemption of state law causes of action\nMaloney v. T3Media, Inc., 853 F. 3d 1004 (9th Cir. 2017)\n\n[Placeholder for procedural issues in practice before the U.S. Copyright Office]\n\n15\n\n819\n\n823\n823\n\n834\n\n\x0c16\n\n\x0c1. INTRODUCTION TO COPYRIGHT LAW\nAn Overview of Copyright\nThe subject of copyright law is human creativity. Like its subject matter, copyright law is\nfascinating, complicated, and contested. Copyright law as we know it today began over 300\nyears ago with the enactment of the Statute of Anne in England in 1710. The Statute of\nAnne was a delayed response to the disruptive technology of the printing press that had\nswept across Europe in late 15th and 16th Centuries. Copyright has continued to respond to\ntechnological and social change ever since.\nThe next few paragraphs sketch out a very basic overview of copyright as a preview of the\nmaterial that lies ahead. The aim of this overview is to describe the law as it is now in the\nUnited States, and to gloss over important questions of history and alternative\ninterpretations of the law\xe2\x80\x94these will come later.\nAuthors & Works. Copyright is a set of exclusive rights that belong, initially at least, to the\nauthor or authors of \xe2\x80\x9ca work\xe2\x80\x9d such as novel, a movie, or a piece of music. Copyright begins\nwhen the work is created and typically lasts for the life of the author plus 50 or 70 years.\nCopyright protects a wide variety of cultural objects, including books, drawings, paintings,\nsculpture, music, and movies. More recently that list has expanded to include computer\nsoftware and architecture.\nRights. Broadly speaking, the copyright owner has the exclusive right to reproduce the work,\nto make adaptations based on the work that are reasonably close to the original, to distribute\nthe work, and to communicate the work to the public through performance and display.\nRights in relation to distribution and display can seem very broad, but in practice they are\nquite narrow because they only apply to any given copy of a work up until the first sale of\nthat copy.\nCopyright rights are broad, but they are not as broad as the equivalent rights in patent law.\nPatent owners have the exclusive right to \xe2\x80\x9cmake, use, or sell\xe2\x80\x9d the patented invention. The\nconcepts of \xe2\x80\x9cmake\xe2\x80\x9d and \xe2\x80\x9csell\xe2\x80\x9d have their analogs in copyright law, but there is nothing so\nbroad as a right to \xe2\x80\x9cuse\xe2\x80\x9d the copyrighted work. This is significant: you don\xe2\x80\x99t need permission\nto read a book or listen to music on a compact disc, you don\xe2\x80\x99t need permission to lend the\nbook or the disc to a friend, or to tell people about the things you have learned from the\nbook or your reaction to the music.\nExpression. Even though copyright law gives the author the exclusive right to make\nreproductions of her works, that right only goes so far: Copyright does not protect every\naspect work, it only protects original expression.\nCopyright does not protect facts, ideas or functional product features. To illustrate, I would\ninfringe the copyright in Martha Stewart\xe2\x80\x99s cookbook if I copied the entire work and made it\navailable for free on the Internet. However, I could follow one of the recipes in that book to\nmake a cake, and I could sell that cake for profit, all with no duty to account to Martha\nStewart. Indeed, I could reduce Martha Stewart\xe2\x80\x99s cake recipe down to a simple set of\n\n17\n\n\x0cinstructions and then describe those instructions in my own words and compete with Martha\nStewart in the market for cake recipes.1\nRights can fragment and overlap. Copyright rights can be fragmented and overlapping.\nSuppose that A writes a poem. B adapts the poem into song lyrics. C adds an original\nmusical composition. D performs the song and it is recorded by E to create a sound\nrecording. Further suppose that F then plays that recording in public, and G records that\nperformance along with images of the reaction of the audience to create an audiovisual work.\nIf Harriet were to copy G\xe2\x80\x99s movie without obtaining permission from anyone, she might be\ninfringing the rights of A, B, C, E and G. It is possible that D and E would be joint authors\nof the sound recording. Also, some jurisdictions outside the United States would also\nrecognize that D has an intrinsic right to the performance such that D\xe2\x80\x99s permission would\nbe required for certain downstream uses whether she is an author of the sound recording or\nnot.\nLimitations & Exceptions. The rights of copyright owners are subject to a number of\nimportant limitations. The copyright laws of most countries contain a hodgepodge of\nlimitations and exceptions that reflect the influence of particular interest groups at particular\ntimes. Some copyright limitations are required to meet its overall purpose of encouraging the\ndiffusion of knowledge, promoting authorship and enabling creativity; some are required\nbecause without them copyright law might unduly constrain freedom of expression; and\nsome limitations are required because without them copyright would confer overly broad\nexclusive rights in related and downstream activities. But we must also concede that some\ncopyright limitations or exceptions are really just a result of special interest pleading and\ncan\xe2\x80\x99t be fully justified as fulfilling the essential purpose of copyright or maximizing general\nwelfare. The copyright system would be self-defeating without some limits on the broad\nrights of copyright owners, but exactly what limits are required, how should they be\nstructured, and who is best placed to make these decisions are all highly controversial\nquestions in modern copyright law.\n\nThe historical development of copyright law\nMonopoly and censorship as a response to the printing press\nCopyright law is constantly evolving. Prior to Gutenberg\xe2\x80\x99s invention of the movable type\nprinting press in the early 15th century, the predominant technology of copying was the\nmonastic scribe. At a time when very few people could read and copying was highly laborintensive, copying was essentially unregulated. But then came Gutenberg and the diffusion\nof printing press technology throughout Europe catalyzed enormous social and political\nchanges. In the early days of this new technological era, regulation of the printing press\nfocused on the need to maintain religious and political orthodoxy. In England, this need was\nmet by a licensing system that ensured that only the Stationers\xe2\x80\x99 Guild was permitted to print\nbooks. In turn, the Guild ensured that only approved books were printed. The Licensing Act\nSee Publications Int\xe2\x80\x99l, Ltd. v. Meredith Corp., 88 F.3d 473, 481 (7th Cir. 1996) (explaining that recipe books\ncan show originality and obtain copyright protection if \xe2\x80\x9cthe authors lace their directions for producing dishes\nwith musings about the spiritual nature of cooking or reminiscences they associate with the wafting odors of\ncertain dishes in various stages of preparation.\xe2\x80\x9d)\n1\n\n18\n\n\x0cof 1662 explained its objective in terms of guarding against the publication of \xe2\x80\x9cheretical\nschismatical blasphemous seditious and treasonable\xe2\x80\x9d books.\nBy convention, the members of the Stationers Guild agreed that the first member to enter a\nliterary title in the Stationers\xe2\x80\x99 Register would have exclusive and perpetual rights to publish it.\nThis practice explains some of the terminology of copyright law. \xe2\x80\x9cThe registered title and the\nrights associated with it were known as the \xe2\x80\x9ccopy\xe2\x80\x9d of the publication, and the acquisition of\na copy (or the \xe2\x80\x9cright of copy\xe2\x80\x9d) was limited to guild members.\xe2\x80\x9d2 The Stationers Guild was\nessentially a cartel of London publishers and booksellers. Within this group it was common\nto view the \xe2\x80\x98copy\xe2\x80\x99 as a form of property, it was treated as an exclusive right and was a thing\nto be owned, traded, and used as collateral for loans.3 But it is important to understand that\nalthough the booksellers thought of the \xe2\x80\x9ccopy\xe2\x80\x9d as their property, this concept of property\nwas very different from the idea of \xe2\x80\x9cliterary property\xe2\x80\x9d\xe2\x80\x94a term that came into vogue only\nmuch later\xe2\x80\x94and our modern concept of copyright.\nThe Licensing Acts lasted until almost the end 17th century in England but they were\neventually allowed to expire, thus bringing the de jure printing monopoly of the Stationers\nGuild to an end. The demise of the Licensing Acts has been attributed to a growing distaste\nfor pre-publication censorship, and to dissatisfaction with the inflated prices and\nmonopolistic practices of the Stationers Guild.4\nThe transition from monopoly and censorship to statutory copyright did not occur in a\nvacuum. England in the 17th Century witnessed regicide, civil war, dictatorship, the\nrestoration of the monarchy, and a \xe2\x80\x9cGlorious Revolution\xe2\x80\x9d which cemented Protestantism as\nthe official state religion. Underlying most of these events was a power struggle between the\ncrown and parliament in which parliament eventually prevailed.\nThe First Copyright Act: the Statute of Anne\nIn 1710, the British Parliament passed \xe2\x80\x9cAn Act for the Encouragement of Learning, by\nVesting the Copies of Printed Books in the Authors, or Purchasers, of such Copies, during\nthe Times therein mentioned\xe2\x80\x9d, or as it is usually simply called, The Statute of Anne.\nHistorians have debated whether the Statute of Anne should be seen as displacing, regulating,\nor merely entrenching the pre-existing monopoly of London booksellers in the seventeenth\ncentury. On the surface, the Statute of Anne was a significant departure from previous\ncustoms of the book trade because it placed control of new works of authorship into the\nhands of authors themselves. Also, unlike the Stationers Guild\xe2\x80\x99s monopoly privileges, the\nSimon Stern, Towards a Pre-History of the Public Domain: Copyright Law and Its Limits in Eighteenth-Century England,\nOXFORD LITERATURE HANDBOOK (Draft on file with the author).\n2\n\nJohn Feather, From Rights in Copies to Copyright: The Recognition of Authors\xe2\x80\x99 Rights in English Law and Practice in the\nSixteenth and Seventeenth Centuries, 10 CARDOZO ARTS AND ENTERTAINMENT LAW JOURNAL 461-62 (1992).\n3\n\nSee for example, Letter from Locke to Edward Clarke (Jan. 2, 1693), in The Correspondence of John Locke, ed. E.S.\nDe Beer, 8 vols. (Oxford: Clarendon Press, 1976-1989), 4: 614-15. \xe2\x80\x9c[T]he Company of Stationers . . . haveing\ngot a Patent for all or most of the Ancient Latin Authors (by what right or pretence I know not) claime the text\nto be theirs and soe will not suffer [others to supply] fairer and more correct Editions. . . . [Thus] a monopoly is\nput into the hands of the company of ignorant and lazy stationers . . . By this monopoly also of these ancient\nauthors noe body here, that would publish any of them a new with comments or any other advantage can doe it\nwithout the leave of the learned judicious stationers.\xe2\x80\x9d As cited in Simon Stern, Towards a Pre-History of the\nPublic Domain: Copyright Law and Its Limits in Eighteenth-Century England\n4\n\n19\n\n\x0cauthor\xe2\x80\x99s rights under the Statute of Anne were for a limited duration. Books published\nbefore the Statute were granted twenty-one years of protection under the new law. The\nauthors of books published after the Statute of Anne took effect were entitled to an initial\nterm of 14 years, renewable for a second term of the same length if the author was still alive\nwhen the first term ended.\nWhy 14 years and not some other period? Why two terms for that matter? In Authors and\nOwners: The Invention of Copyright, Mark Rose, argues that the bifurcated term was an attempt\nto bring the new author\xe2\x80\x99s right within the scope of the 1624 Statute of Monopolies. The\nStatute of Monopolies limited the powers of the Crown to grant monopolies, but created an\nexception relating to any \xe2\x80\x9cmanner of new manufacture\xe2\x80\x9d as long as the monopoly did not\nexceed a specified limited term: twenty-one years for extant grants; fourteen years for future\ngrants.5\nThe scope of protection under the Statute of Anne was much narrower than modern\ncopyright. The statute did not explicitly address translations, incomplete copying or the\nunauthorized creation of sequels. The Statute of Anne also contained a provision whereby\nbooksellers who charged \xe2\x80\x9chigh and unreasonable\xe2\x80\x9d prices could be called into account and\npotentially fined. The statute did not reach the import of foreign books in languages other\nthan English.\nThe Battle of the Booksellers, or the Question of Literary Property\nFollowing the enactment of the Statute of Anne, members of the Stationers\xe2\x80\x99 Guild argued\nthat, regardless of the limited times referred to in the statute, they held perpetual common\nlaw exclusive printing rights. It is worth noting that members of the Stationers\xe2\x80\x99 Guild never\nsought to establish such a common law right in the period between the end of the Licensing\nActs in 1695 and the enactment of the Statute of Anne in 1710.6\nIn support of this contention, these London booksellers noted that members of the Guild\nhad a longstanding practice of respecting such claims and would not reprint any text first\nclaimed by another member. The Guild members based in London came into increasing\ncompetition with provincial and Scottish publishers who failed to respect their comfortable\ncartel and the ensuing litigation led to two pivotal cases in the history of copyright, Millar v\nTaylor and Donaldson v. Becket.\nAn important part of the context in which this litigation took place is the difference between\ncourts of law and courts of equity. In the 18th century, the English common law courts have\njurisdiction to address questions of common-law and could make awards of money damages.\nInjunctions on the other hand were the exclusive province of courts of equity. The\nbooksellers pursued their claims in courts of equity because they preferred the remedy of\npreliminary and permanent injunctions. In addition, by avoiding the common law courts\nthey reduced the risk of facing a serious challenge to the existence of their supposed\ncommon-law right.7\nSee MARK ROSE, AUTHORS AND OWNERS: THE INVENTION OF COPYRIGHT, 45-47 (1993); Statute of\nMonopolies, 1624, 21 Jac., c. 3 (Eng.)\n5\n\n6\n\nSimon Stern, Towards a Pre-History of the Public Domain, supra.\n\nId. \xe2\x80\x9cCourts of equity would grant an ex parte injunction that would remain in effect until the defendant\nappeared to answer the plaintiff\xe2\x80\x99s charges. If the charges proved valid after both sides had been heard, the\n7\n\n20\n\n\x0cMillar v Taylor 98 Eng. Rep. 201 (K.B. 1769)\nThe argument for perpetual copyright was initially successful. In Millar v. Taylor 98 Eng. Rep.\n201 (K.B. 1769) the majority of Court of King\xe2\x80\x99s Bench held that copyright existed as both a\nstatutory and a common-law right. The majority held that when statutory copyright ended,\nthe booksellers\xe2\x80\x99 common law copyright assigned from the author would continue, forever.\nIn this view, the Statute of Anne merely vested copyright owners with additional remedies\nover and above those available at common law and in equity. Justice Yates, dissenting,\nagreed that authors had a right to control the first publication of their manuscripts, but no\nmore. Millar died not long after the ruling and it was never appealed.\nNot being bound by decisions of the Court of the King\xe2\x80\x99s Bench, the Scottish Court of\nSession reached a different position in Hinton v Donaldson (1773, 5 Brn 508)\nDonaldson v. Becket (1774) 1 Eng. Rep. 837\nThis summary relies heavily on Ronan Deazley, Commentary on Donaldson v. Becket (1774), in Primary Sources on Copyright\n(1450-1900), eds L. Bently & M. Kretschmer, (2008) (original at www.copyrighthistory.org).\n\nIn 1771 a London bookseller and publisher by the name of Thomas Becket sought an\ninjunction from the court of Chancery to prevent the Scottish bookseller Alexander\nDonaldson from printing the The Seasons by the poet James Thomson who had died in 1748.\nThe rights conferred on The Seasons by the Statute of Anne had long since expired, thus the\nbasis of the publisher\xe2\x80\x99s claim was a right at common law beyond the mere right of first\npublication.\nDonaldson v. Becket has confused generations of judges, commentators and students because\nthe procedural issues are somewhat baroque and because the early reports of the case were\nentirely inadequate. The case was heard before Lord Chancellor Apsley who considered\nhimself bound by Millar v. Taylor to grant the plaintiff a perpetual injunction.\nLord Chancellor Apsley\xe2\x80\x99s decree was appealed to House of Lords. The twelve common law\njudges of the House of Lords heard the arguments of counsel for both sides and gave their\nanswers to five questions. The fourth and fifth questions overlap with the first three. The\nquestions were:\n1. Whether, at common law, an author of any book or literary composition, had the\nsole right of first printing and publishing the same for sale, and might bring an\naction against any person who printed, published, and sold the same, without his\nconsent?\n2. If the author had such right originally, did the law take it away upon his printing\nand publishing such book or literary composition, and might any person afterward\nreprint and sell, for his own benefit, such book or literary composition, against the\nwill of the author?\ncourt could grant a permanent injunction. However, a preliminary injunction was usually sufficient for the\nplaintiff\xe2\x80\x99s needs and the dispute rarely proceeded any further. This approach proved especially attractive to the\nbooksellers once they saw that the Chancery court would not ask whether the statutory term of protection had\nexpired. The equity courts were willing to entertain the hypothetical premise that the plaintiff had a valid claim,\nand to proceed from there. Thus by avoiding the common-law courts, the booksellers kept alive their claims\nabout common-law copyright for more than six decades, using a form of pleading that required them to\npresuppose the existence, at common law, of the very right whose dubious status had led them to Chancery in\nthe first place.\xe2\x80\x9d\n\n21\n\n\x0c3. If such action would have lain at common law, is it taken away by the Statute of\n8th Anne: and is an author, by the said statute, precluded from every remedy except\non the foundation of the said statute, and on the terms and conditions prescribed\nthereby?\n4. Whether the author of any literary composition, and his assigns, had the sole right\nof printing and publishing the same, in perpetuity, by the common law?\n5. Whether this right is any way impeached, restrained, or taken away, by the statute\n8th Anne?\n\nThe traditional interpretation of Donaldson v. Becket, reflected in the U.S. Supreme Court\xe2\x80\x99s\nfirst copyright case, Wheaton v. Peters 33 U.S. 591 (1834), is that \xe2\x80\x9ca majority of the judges were\nin favor of the common law right of authors [beyond a right of first publication], but that the\nsame had been taken away by the statute.\xe2\x80\x9d However, this traditional view is not correct, nor\nwas it followed in the United States, as we will see shortly.\nThe confusion begins with the fact that the votes of the common law judges were\nmisreported. Ronan Deazley explains this misreporting in detail in his illuminating\nCommentary on Donaldson v. Becket. Deazley also shows how the significance of the votes of the\ncommon law judges of the House of Lords is often misunderstood. The House of Lords\nconsisted of both peers who were common law judges and peers who were not. Although\nthe full House of Lords (the common law judges and the other peers combined) almost\nalways followed the opinion of the majority of its common law judges, it was not bound to\ndo so and in this case it did not. Five peers also spoke to the issue and of these, only one\nfavored a common law right.\nIn addition, whereas the judges had answered five distinct questions raised by the case, the\nonly question put to the peers was whether the perpetual injunction should be overturned.\nWhen the House of Lords voted to reverse the decision below, it did not clearly indicate\nwhether it was because there was no common law copyright, no common law copyright\nbeyond a right of first publication, or whether the Statute of Anne abrogated a pre-existing\ncommon law copyright. Looking to the opinions of the peers on the question of common\nlaw copyright yields a tied vote: seven judges and one peer found such a right, but four\njudges and four peers and found against it. This tied vote does not mean that the issue was\nunresolved, however. There were 84 Lords are listed as in attendance the day the House of\nLords finally voted to reverse the decree, although their individual opinions are unknown.\nWhat matters, however, is that in stating the law of the case in Donaldson v. Becket, Lord\nChancellor Apsley explicitly denied the existence of any common law right, and it was thus\nthis position that carried the day.\n[Placeholder: A future version of these materials may contain a more detailed summary of\nthe argument in Donaldson v. Becket]\n\nThe Battle of the Booksellers 2.0, or the Question of Literary Property in United\nStates\nWheaton v. Peters was a dispute between an early Supreme Court reporter, Wheaton, and his\nsuccessor, Peters. Wheaton had compiled the opinions of the Supreme Court from his\n\n22\n\n\x0ctenure as official reporter along with annotations and summaries of argument into a costly\nseries of reports. His successor, Peters, produced an abridged version of those same\nmaterials, winnowed down to the opinions themselves. Although Peter\xe2\x80\x99s reports were\ninferior in many respects, they were substantially cheaper and thus had a devastating effect\non the market for Wheaton\xe2\x80\x99s reports. In addition to maintaining a claim under statutory\ncopyright, the plaintiff argued that \xe2\x80\x9can author was entitled, at common law, to a perpetual\nproperty in the copy of his works, and in the profits of their publication; and to recover\ndamages for its injury, by an action on the case, and to the protection of a court of equity.\xe2\x80\x9d\nWheaton v. Peters, 33 U.S. 591 (1834)\nMr. Justice McLean delivered the opinion of the Court.\nPerhaps no topic in England has excited more discussion, among literary and\ntalented men, than that of the literary property of authors. So engrossing was the\nsubject, for a long time, as to leave few neutrals, among those who were\ndistinguished for their learning and ability. At length the question, whether the copy\nof a book or literary composition belongs to the author at common law, was brought\nbefore the court of king\xe2\x80\x99s bench, in the great case of Millar v. Taylor, reported in 4\nBurr. 2303. This was a case of great expectation; and the four judges, in giving their\nopinions, seriatim, exhausted the argument on both sides. Two of the judges, and\nLord Mansfield held, that, by the common law, an author had a literary property in\nhis works; and they sustained their opinion with very great ability. Mr Justice Yeates,\nin an opinion of great length, and with an ability, if equalled, certainly not surpassed,\nmaintained the opposite ground.\nPrevious to this case, injunctions had issued out of chancery to prevent the\npublication of certain works, at the instance of those who claimed a property in the\ncopyright, but no decision had been given. And a case had been commenced, at law,\nbetween Tonson and Collins, on the same ground, and was argued with great ability,\nmore than once, and the court of king\xe2\x80\x99s bench were about to take the opinion of all\nthe judges, when they discovered that the suit had been brought by collusion, to try\nthe question, and it was dismissed.\nThis question was brought before the House of Lords, in the case of Donaldson v.\nBeckett and others, reported in 4 Burr. 2408. \xe2\x80\xa6 It would appear from the points\ndecided, that a majority of the judges were in favor of the common law right of\nauthors, but that the same had been taken away by the statute.\nThe title and preamble of the statute, 8 Anne, ch. 19, is as follows:\n\xe2\x80\x9cAn act for the encouragement of learning by vesting the copies of printed books in\nthe authors or purchasers of such copies, during the times therein mentioned.\xe2\x80\x9d\n\xe2\x80\x9cWhereas printers, booksellers and other persons, have of late frequently taken the\nliberty of printing, reprinting and publishing, or causing to be printed, reprinted and\npublished, books and other writings without the consent of the authors or\nproprietors of such books and writings, to their very great detriment, and too often\nto the ruin of them and their families,\xe2\x80\x9d &c.\n\n\xe2\x80\xa6 From the above authorities, and others which might be referred to if time\npermitted, the law appears to be well settled in England, that, since the statute of 8\n\n23\n\n\x0cAnne, the literary property of an author in his works can only be asserted under the\nstatute. And that, notwithstanding the opinion of a majority of the judges in the great\ncase of Miller v. Taylor was in favor of the common law right before the statute, it is\nstill considered, in England, as a question by no means free from doubt.\nThat an author, at common law, has a property in his manuscript, and may obtain\nredress against any one who deprives him of it, or by improperly obtaining a copy\nendeavours to realise a profit by its publication, cannot be doubted; but this is a very\ndifferent right from that which asserts a perpetual and exclusive property in the\nfuture publication of the work, after the author shall have published it to the world.\nThe argument that a literary man is as much entitled to the product of his labour as\nany other member of society, cannot be controverted. And the answer is, that he\nrealises this product by the transfer of his manuscripts, or in the sale of his works,\nwhen first published.\nA book is valuable on account of the matter it contains, the ideas it communicates,\nthe instruction or entertainment it affords. Does the author hold a perpetual\nproperty in these? Is there an implied contract by every purchaser of his book, that\nhe may realise whatever instruction or entertainment which the reading of it shall\ngive, but shall not write out or print its contents.\nIn what respect does the right of an author differ from that of an individual who has\ninvented a most useful and valuable machine? In the production of this, his mind has\nbeen as intensely engaged, as long, and, perhaps, as usefully to the public, as any\ndistinguished author in the composition of his book.\nThe result of their labours may be equally beneficial to society, and in their respective\nspheres they may be alike distinguished for mental vigour. Does the common law\ngive a perpetual right to the author, and withhold it from the inventor? And yet it has\nnever been pretended that the latter could hold, by the common law, any property in\nhis invention, after he shall have sold it publicly.\nIt would seem, therefore, that the existence of a principle may well be doubted,\nwhich operates so unequally. This is not a characteristic of the common law. It is said\nto be founded on principles of justice, and that all its rules must conform to sound\nreason.\nDoes not the man who imitates the machine profit as much by the labour of another,\nas he who imitates or republishes a book? Can there be a difference between the\ntypes and press with which one is formed, and the instruments used in the\nconstruction of the others?\nThat every man is entitled to the fruits of his own labour must be admitted; but he\ncan enjoy them only, except by statutory provision, under the rules of property,\nwhich regulate society, and which define the rights of things in general.\nBut, if the common law right of authors were shown to exist in England, does the\nsame right exist, and to the same extent, in this country. \xe2\x80\xa6 It is insisted, that our\nancestors, when they migrated to this country, brought with them the English\ncommon law, as a part of their heritage.\n\n24\n\n\x0cThat this was the case, to a limited extent, is admitted. No one will contend, that the\ncommon law, as it existed in England, has ever been in force in all its provisions, in\nany state in this union. It was adopted, so far only as its principles were suited to the\ncondition of the colonies: and from this circumstance we see, what is common law in\none state, is not so considered in another. The judicial decisions, the usages and\ncustoms of the respective states, must determine, how far the common law has been\nintroduced and sanctioned in each. \xe2\x80\xa6 The question respecting the literary property\nof authors, was not made a subject of judicial investigation in England until 1760;\nand no decision was given until the case of Millar v. Taylor was decided in 1769. Long\nbefore this time, the colony of Pennsylvania was settled. What part of the common\nlaw did Penn and his associates bring with them from England?\nThe literary property of authors, as now asserted, was then unknown in that country.\nLaws had been passed, regulating the publication of new works under license. And\nthe king, as the head of the church and the state, claimed the exclusive right of\npublishing the acts of parliament, the book of common prayer, and a few other\nbooks.\nNo such right at the common law had been recognized in England, when the colony\nof Penn was organized. Long afterwards, literary property became a subject of\ncontroversy, but the question was involved in great doubt and perplexity; and a little\nmore than a century ago, it was decided by the highest judicial court in England, that\nthe right of authors could not be asserted at common law, but under the statute. The\nstatute of 8 Anne was passed in 1710.\nCan it be contended, that this common law right, so involved in doubt as to divide\nthe most learned jurists of England, at a period in her history, as much distinguished\nby learning and talents as any other; was brought into the wilds of Pennsylvania by\nits first adventurers. Was it suited to their condition?\nBut there is another view still more conclusive.\nIn the eighth section of the first article of the constitution of the United States it is\ndeclared, that congress shall have power \xe2\x80\x9cto promote the progress of science and\nuseful arts, by securing for limited times, to authors and inventors, the exclusive right\nto their respective writings and discoveries.\xe2\x80\x9d And in pursuance of the power thus\ndelegated, congress passed the act of the 30th of May 1790.\nThis is entitled \xe2\x80\x9can act for the encouragement of learning, by securing the copies of\nmaps, charts and books, to the authors and proprietors of such copies, during the\ntimes therein mentioned.\xe2\x80\x9d\nIn the first section of this act, it is provided, \xe2\x80\x9cthat from and after its passage, the\nauthor and authors of any map, chart, book or books, already printed within these\nUnited States, being a citizen, &c. who hath or have not transferred to any other\nperson the copyright of such map, chart, book or books, &c. shall have the sole right\nand liberty of printing, reprinting, publishing and vending such map, book or books,\nfor fourteen years.\xe2\x80\x9d\nIn behalf of the common law right, an argument has been drawn from the word\nsecure, which is used in relation to this right, both in the constitution and in the acts\n\n25\n\n\x0cof congress. This word, when used as a verb active, signifies to protect, insure, save,\nascertain, &c.\nThe counsel for the complainants insist that the term, as used, clearly indicates an\nintention, not to originate a right, but to protect one already in existence.\nThere is no mode by which the meaning affixed to any word or sentence, by a\ndeliberative body, can be so well ascertained, as by comparing it with the words and\nsentences with which it stands connected. By this rule the word secure, as used in the\nconstitution, could not mean the protection of an acknowledged legal right. It refers\nto inventors, as well as authors, and it has never been pretended, by any one, either\nin this country or in England, that an inventor has a perpetual right, at common law,\nto sell the thing invented.\nAnd if the word secure is used in the constitution, in reference to a future right, was\nit not so used in the act of congress?\nBut, it is said, that part of the first section of the act of congress, which has been\nquoted, a copyright is not only recognized as existing, but that it may be assigned, as\nthe rights of the assignee are protected, the same as those of the author.\nAs before stated, an author has, by the common law, a property in his manuscript;\nand there can be no doubt that the rights of an assignee of such manuscript, would\nbe protected by a court of chancery. This is presumed to be the copyright recognized\nin the act, and which was intended to be protected by its provisions. And this\nprotection was given, as well to books published under such circumstances, as to\nmanuscript copies.\nThat congress, in passing the act of 1790, did not legislate in reference to existing\nrights, appears clear, from the provision that the author, &c. \xe2\x80\x9cshall have the sole\nright and liberty of printing,\xe2\x80\x9d &c. Now if this exclusive right existed at common law,\nand congress were about to adopt legislative provisions for its protection, would they\nhave used this language? Could they have deemed it necessary to vest a right already\nvested. Such a presumption is refuted by the words above quoted, and their force is\nnot lessened by any other part of the act.\nCongress, then, by this act, instead of sanctioning an existing right, as contended for,\ncreated it. This seems to be the clear import of the law, connected with the\ncircumstances under which it was enacted.\nFrom these considerations it would seem, that if the right of the complainants can be\nsustained, it must be sustained under the acts of congress. Such was, probably, the\nopinion of the counsel who framed the bill, as the right is asserted under the statutes,\nand no particular reference is made to it as existing at common law. The claim, then,\nof the complainants, must be examined in reference to the statutes under which it is\nasserted.\n[At the time, copyright was conditioned on a number of formalities, including\ndepositing a copy of the work with the Department of State. Justice McLean rejected\nWheaton\xe2\x80\x99s argument that the deposit requirement did not bar copyright protection\nunder the relevant statute.]\n\n26\n\n\x0cThe construction of the acts of congress being settled, in the further investigation of\nthe case it would become necessary to look into the evidence and ascertain whether\nthe complainants have not shown a substantial compliance with every legal requisite.\nBut on reading the evidence we entertain doubts, which induce us to remand the\ncause to the circuit court, where the facts can be ascertained by a jury.\nAnd the cause is accordingly remanded to the circuit court, with directions to that\ncourt to order an issue of facts to be examined and tried by a jury, at the bar of said\ncourt, upon this point, viz. whether the said Wheaton as author, or any other person\nas proprietor, had complied with the requisites prescribed by the third and fourth\nsections of the said act of congress, passed the 31st day of May 1790, in regard to the\nvolumes of Wheaton\xe2\x80\x99s Reports in the said bill mentioned, or in regard to one or\nmore of them in the following particulars, viz. whether the said Wheaton or\nproprietor did, within two months from the date of the recording thereof in the\nclerk\xe2\x80\x99s office of the district court, cause a copy of the said record to be published in\none or more of the newspapers printed in the resident states, for the space of four\nweeks; and whether the said Wheaton or proprietor after the publishing thereof, did\ndeliver or cause to be delivered to the secretary of state of the United States, a copy\nof the same to be preserved in his office, according to the provisions of the said\nthird and fourth sections of the said act.\nAnd if the said requisites have not been complied with in regard to all the said\nvolumes, then the jury to find in particular in regard to what volumes they or either\nof them have been so complied with.\nIt may be proper to remark that the court are unanimously of opinion, that no\nreporter has or can have any copyright in the written opinions delivered by this\ncourt; and that the judges thereof cannot confer on any reporter any such right.\nNotes and questions\n(1) The Supreme Court\xe2\x80\x99s decision in Wheaton v. Peters 33 U.S. 591 (1834) reprised the\ncommon law copyright debate from Millar v. Taylor and Donaldson v. Beckett. The Supreme\nCourt agreed that the common law carried from England to the colonies that became the\nUnited States recognized a right of first publication, but it rejected the broader claim of\nperpetual common law copyright. At 657 the majority declares:\nThat an author, at common law, has a property in his manuscript, and may obtain\nredress against any one who deprives him of it, or by improperly obtaining a copy\nendeavours to realise a profit by its publication, cannot be doubted; but this is a very\ndifferent right from that which asserts a perpetual and exclusive property in the\nfuture publication of the work, after the author shall have published it to the world.\n\n(2) Why does the majority recognize a common law right of first publication, but reject\nperpetual copyright?\n(3) The final sentence of the majority opinion notes (at 668), almost as an afterthought, that\nthe court is unanimously of the opinion that \xe2\x80\x9cno reporter has or can have any copyright in\nthe written opinions delivered by this court; and that the judges thereof cannot confer on a\nreporter any such right.\xe2\x80\x9d\n\n27\n\n\x0c(4) Does it matter whether copyright existed at common law but was then displaced by\nstatute, versus never having existed at all?\n\nThe Expansion of Copyright Rights and Subject Matter\nThe range of things that copyrights protects and the ways in which it protects them have\nexpanded significantly over the years. New technologies such as photography, player pianos,\nthe gramophone (and other ways of recording music) the motion picture camera, radio and\ntelevision have all had an important influence on the development of copyright.\nMore recently, technologies such as the photocopier and the videocassette recorder and then\nlater the personal computer significantly destabilized copyright policy because these\ninventions placed commercially significant copying technology directly in the hands of large\nnumbers of consumers for the first time.\nThe challenge of new technology intensified with digitalization and the Internet.\nDigitalization allows for perfect reproduction such that the millionth copy of an MP3 file\nsounds just as good as the first copy. The Internet has connected billions of people together;\ngenerally this is regarded as a positive development, but this togetherness has also facilitated\ncopyright piracy on a massive scale. Determining how copyright law should respond to the\nchallenges and opportunities of the Internet is one of the fundamental questions underlying\nalmost every issue in copyright.\n\nJurisprudential changes\n[Placeholder for discussion of how the tests for copyright infringement became more explicit\nin the 20th Century and other developments that make modern copyright cases read quite\ndifferently to older ones.]\n\nThe \xe2\x80\x9cwhy\xe2\x80\x9d of copyright law\nUtilitarian versus natural rights perspectives\nThere are a multitude of theories as to what the true purpose of copyright law should be. At\nthe risk of oversimplification, it seems fair to characterize the Anglo-American view of\ncopyright law as utilitarian.\nThe first copyright statute, the Statute of Anne enacted in England in 1710, begins with the\nfollowing rationale:\nWhereas printers, booksellers, and other persons have of late frequently taken the\nliberty of printing, reprinting, and publishing, or causing to be printed, reprinted,\nand published, books and other writings, without the consent of the authors or\nproprietors of such books and writings, to their very great detriment, and too often\nto the ruin of them and their families \xe2\x80\xa6\n\nThe apparent purpose of the Statute of Anne is apparent in its title:\nAn Act for the Encouragement of Learning, by Vesting the Copies of Printed\nBooks in the Authors, or Purchasers, of such Copies, during the Times therein\nmentioned.\n\n28\n\n\x0cThis sentiment is also reflected in Article I, Section 8, Clause 8 of the United States\nConstitution, which empowers Congress:\nTo promote the Progress of Science and useful Arts, by securing for limited Times\nto Authors and Inventors the exclusive Right to their respective Writings and\nDiscoveries.\n\nThese overlapping sentiments are not a coincidence: the Statute of Anne was the template\nfor similar copyright laws in the American colonies, the United States itself and numerous\nother common law jurisdictions. This common heritage is seen in the long title of the U.S.\nCopyright Act of 1790, which was almost identical to that of the Statute of Anne:\nAn Act for the encouragement of learning, by securing the copies of maps, Charts,\nAnd books, to the authors and proprietors of such copies, during the times therein\nmentioned.\n\nThe U.S. Supreme Court has endorsed a purposive understanding of copyright law on more\nthan one occasion, although with nuanced differences in emphasis between ends and means.\nIn Sony Corporation of America v. Universal City Studios, Inc. 464 U.S. 417 (1984), Justice Stevens,\nwriting for the majority, said (at 429)\nThe monopoly privileges that Congress may authorize are neither unlimited nor\nprimarily designed to provide a special private benefit. Rather, the limited grant is a\nmeans by which an important public purpose may be achieved. It is intended to\nmotivate the creative activity of authors and inventors by the provision of a special\nreward, and to allow the public access to the products of their genius after the\nlimited period of exclusive control has expired.\n\nOr, as Judge Pierre Leval put it in an influential law review article, Toward a Fair Use Standard,\n[Copyright is] not an inevitable, divine, or natural right that confers on authors the\nabsolute ownership of their creations. It is designed rather to stimulate activity and\nprogress in the arts for the intellectual enrichment of the public.8\n\nOther cases and authorities downplay the need to shape copyright to meet its public purpose\ngoals, arguing that copyright incentives intrinsically tend toward the public good. In Mazer v.\nStein, 347 U.S. 201 (1954), the Court said (at 219)\n\xe2\x80\xa6 copyright law celebrates the profit motive, recognizing that the incentive to\nprofit from the exploitation of copyrights will redound to the public benefit by\nresulting in the proliferation of knowledge.... The profit motive is the engine that\nensures the progress of science.\n\nIn Eldred v. Ashcroft 537 U.S. 186 (2003), Justice Ginsburg used this quote in rejoinder to\nJustice Steven\xe2\x80\x99s and Justice Breyer\xe2\x80\x99s arguments concerning the constitutionality of extending\nthe term of copyright for works that had already been created. She explained (at 212,\nfootnote 18) that, in her view, public and private ends are not in tension in copyright law, or\nat least that \xe2\x80\x9cthe two ends are not mutually exclusive; copyright law serves public ends by\nproviding individuals with an incentive to pursue private ones.\xe2\x80\x9d\nWhat should we make of natural rights and other non-utilitarian theories of copyright law?\nThe short answer is that they have their place, but it is difficult to accept them as the primary\njustification for the institution of copyright law. Where it is clear that a non-utilitarian theory\n8\n\nPierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1107 (1990)\n\n29\n\n\x0cof copyright is welfare reducing, privileging the non-utilitarian position amounts to little\nmore than expressing a preference for the utility of one class of persons over another. As\nGlynn Lunney notes in Copyright\xe2\x80\x99s Excess: Money and Music in the US Recording Industry (2018)\n(at 57),\n\xe2\x80\x9cI like authors better\xe2\x80\x9d may be perfectly fine as a basis for deciding who receives an\ninvitation to your next cocktail party; it is not a satisfactory basis for a system of\nlegal rights that binds author and non-authors alike.\n\nThe European approach to copyright does not ignore utilitarian benefits, but its\nfoundational concern is with recognition of the rights of the author. This natural rights view\nof copyright explains the European enthusiasm for \xe2\x80\x9cmoral rights\xe2\x80\x9d that protect the integrity\nof a work as distinct from the traditional economic rights. It also explains another key\nstandard difference between European influenced copyright systems mold and those in the\nAnglo-American tradition, the treatment of the rights of performers. Both of these topics are\naddressed in later chapters of these materials. Of course, many aspects of European\ncopyright law are more consistent with a utilitarian conception of copyright; just as a few\naspects of copyright in common law jurisdictions may be better explained from a natural\nrights perspective.\nNatural rights intuitions about copyright play an important role in constructing the basic\nconcepts of copyright law. Non-economic theories are essential to developing a coherent\nbody of law with reasonably determinate parameters. The problem with a purely\ninstrumental account of copyright law is that it sets a goal, but tells us very little about the\nmeans to realize that goal. As Professor Shyamkrishna Balganesh, explains in The Obligatory\nStructure Of Copyright Law: Unbundling The Wrong Of Copying:\nTo the instrumental account, the precise structure of copyright\xe2\x80\x99s entitlement--that is,\nits \xe2\x80\x9crights\xe2\x80\x9d--matters very little. The inducement for creativity that it seeks to provide\ncould thus be meaningfully achieved in principle through the grant of a governmentsponsored subsidy or reward, a tax break, or perhaps more realistically, a\ncompensation (or compulsory licensing) regime. The instrumental account thus\nlacks explanatory depth, in that it does not extend beyond the surface of copyright\xe2\x80\x99s\noperation to explain why it operates in the precise way that it does \xe2\x80\xa69\n\nWithout some intrinsic idea of what copyright is supposed to be about, we face too many\nchoices about what the law should be to be able to make any rational choices at all. The\nmandate to maximize the public good can\xe2\x80\x99t give us a predictable definition of authorship by\nitself, nor does it dictate where the line between ideas and expression should be drawn in the\nabstract. Answering these questions from a strictly utilitarian position would require\nknowledge of all of the other variables in the system, such as the duration of copyright, the\nscope of rights, etc. Copyright law is built around a few key legal concepts, concepts such as\noriginality and the idea-expression distinction that will be discussed at length elsewhere in\nthese materials. These concepts are not inconsistent with the instrumental account of\ncopyright law, but they are more than merely levers of instrumentalism. As Balganesh further\nexplains:\nThe instrumental account thus answers the question, \xe2\x80\x9cwhy copyright?\xe2\x80\x9d Yet in\noperationalizing the institution and applying it to individual instances, a\nShyamkrishna Balganesh, The Obligatory Structure Of Copyright Law: Unbundling The Wrong Of Copying, 125 HARV.\nL. REV. 1664, 1687 (2012).\n9\n\n30\n\n\x0cdecisionmaker need not make reference to the overall instrumental goals of the\ninstitution, but can instead adopt an analysis using the granular devices and concepts\non which the liability regime relies--all of which revolve around the idea of\ncopying.10\n\nIs copyright property?\nThe debate about whether copyright and other forms of \xe2\x80\x9cintellectual property\xe2\x80\x9d (i.e., patents,\ntrademarks, trade secrets, etc.) are really property tends to proceed along the following lines.\nThose who proclaim that copyright is property observe that as a matter of definition\nexclusive and tradable rights are generally thought of as property. Those who resist the\nproperty label note that copyright and other IP rights are limited in scope and duration and\nsubject to a number of important public interest caveats.\nPro-property advocates respond with fascinating descriptions of the law relating to nuisance,\neasements, riparian rights, and ancient Roman concepts holding the oceans and navigable\nwaterways in public trust. The implication being that, for every conceivable feature of\ncopyright that supposedly distinguishes it from property, there is in fact a property law\nantecedent.\nThose who resist the property label respond by saying something along the lines of \xe2\x80\x9cbut that\nis not what you mean when you say copyright is property. You mean that as a normative\nmatter, the rights of the copyright owner should come as close as possible to absolute\ncontrol that is unyielding and perpetual.\xe2\x80\x9d Both sides then declare victory in the debate and\nrevert to their initial positions.\nWhether you want to call copyright property, regulation, or something else entirely, it is\nworth understanding how copyright is different to rights in relation to tangible things.11 A\nproperty right in Blackacre confers broad rights of exclusion on the owner. As a corollary,\nthe property owner\xe2\x80\x99s right to exclude necessarily implies a duty to refrain from trespass.\nCopyright has a similar right/duty correlation. The copyright owner\xe2\x80\x99s exclusive rights with\nrespect to her original expression can be reframed in terms of a duty not to copy original\nexpression.\nIn real property, the right to exclude makes possible an undefined set of use privileges in\nrelation to Blackacre. These privileges are protected through a right to exclude because the\nunderlying resource is rivalrous. If I am to make full use of my parking space, it is essential\nthat you not be allowed to park your car there. Here we see the difference between copyright\nand real property. The exclusive rights of the copyright owner are entirely superfluous to her\nuse of her intellectual property. If you make a copy of my manuscript, I am not prevented\nfrom reading my original copy, or from using it as the basis for additional copies. To recap,\nthe difference between copyright and property is that in the latter case exclusion and the\ncorrelative duty not to intrude serve as placeholders for more fundamental interests; whereas\nin copyright, the fundamental interest is the duty not to copy original expression.\n\n10\n\nId. at 1688-1689.\n\nThe analysis that follows leans heavily on Shyam Balganesh\xe2\x80\x99s The Obligatory Structure Of Copyright Law,\nalthough it probably does it an injustice.\n11\n\n31\n\n\x0cKey economic concepts in copyright law\nThe standard model\nThe standard model for the economic analysis of copyright begins starts with the idea that\ncopyright law is a solution to a \xe2\x80\x9cpublic goods\xe2\x80\x9d problem.\n\xe2\x80\x9cInformation wants to be free. Information also wants to be expensive.\xe2\x80\x9d This is the basic dilemma that\ncopyright law attempts to resolve.12 Information wants to be free in the sense that, once\nproduced, information is cheap to copy, distribute, and recombine. Information wants to be\nexpensive in the sense that, for information producers to recover their fixed costs of\ncreation, they need to be able to charge more than just the low marginal cost of copying that\nresults from a competitive market.\nIn its pure form, information is what economists call a public good, meaning that it is both\nnon-excludable and non-rivalrous.13 The non-excludable nature of information means that\nthose who produce it often find it difficult to keep the benefits to them-selves. Consider the\nfollowing example. Amy, a budding novelist, plans to write a novel at an expected initial cost\nof $ 100 (called the \xe2\x80\x9ccost of expression\xe2\x80\x9d). Amy also expects that, once written, it will only\ncost her $ 1 to make copies of her novel for distribution. There are ten potential buyers of\nAmy\xe2\x80\x99s work, each with a different valuation ranging from Bill, for whom the novel is worth\n$ 20, to Kevin, for whom the novel is worth only $ 11. If Amy sells ten copies of her novel\nat $ 11 each, she will recover both her initial cost of expression and her marginal cost (the\ncost of printing each additional volume). Unfortunately for Amy, she is unlikely to be able to\ncharge that price because once she sells a copy to her first customer, Bill, he will also be able\nto make copies and offer to sell them to the remaining customers. Bill\xe2\x80\x99s cost of expression is\nzero, because he did not write the novel, so Bill can make a profit by selling at any price\nabove his marginal cost of copying. If Amy can\xe2\x80\x99t stop Bill from free riding on her work, she\nwill abandon the idea of becoming a novelist and pursue an alternative career instead, a\nsuboptimal outcome for both Amy and her customers.\nAmy\xe2\x80\x99s story illustrates the classic economic rationale for the creation of exclusive rights in\ninformation in general and copyright in particular. Without the legal artifact of exclusivity,\nassuming that everyone has the same marginal cost, Amy\xe2\x80\x99s competitors will face a lower\naverage cost of production for her novel than she does. Consequently, faced with the choice\nbetween creating and copying, it makes more sense to copy. To put it another way, in a\ncompetitive market the market price will be that of the lowest cost producer, which the\nauthor will never be. As such, without some mechanism to appropriate the benefits of their\ninvestments, authors and publishers will underinvest in the production of information\nproducts. Of course, authors and artists invest in writing for many reasons beyond the\nfinancial rewards that copyright law provides. But this fact should not obscure the point that\nthe author\xe2\x80\x99s hope of commercial success is often what keeps them chained to the typewriter\nand keeps their publisher paying the rent.\n\n12\n\nSTEWART BRAND, THE MEDIA LAB: INVENTING THE FUTURE AT MIT 202 (1987).\n\nWILLIAM LANDES & RICHARD POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 14\n(2003)\n13\n\n32\n\n\x0cCopyright rights allow an author to internalize more of the benefits of her creations; or in\nthe jargon of economics, copyright facilitates the internalization of a work\xe2\x80\x99s positive externalities\nand limits free riding.\nSo that was the standard model of the economics of copyright. The basic story is that\nwithout the incentives that copyright provides, creators would lack the incentive to create, or\nat least to disseminate their creations.\nSo far, so good, but what about the costs of copyright?\nCopyright facilitates the internalization of a work\xe2\x80\x99s positive externalities and limits free riding,\nbut free riding in this context is not necessarily something we want to limit. Intellectual\nworks are non-rivalrous \xe2\x80\x94 a non-rivalrous good is one for which one person\xe2\x80\x99s use does not\naffect the value of any other person\xe2\x80\x99s use. For example, while a photographic print is a\ntangible physical object, it also embodies creative expression. If I take the print from your\nliving room, you are deprived of the enjoyment of seeing it there; on the other hand, if I\nmerely reproduce the print, you still have the original, and yet I now have one too. The\nphoto qua object is rivalrous; the photo qua artistic expression is non-rivalrous.\nThe non-rivalrous nature of information makes the welfare implications of copyright\ndifferent from those of other forms of property: the incentives attributed to allocating\nproperty rights in information must be offset against the resulting underutilization of that\ninformation. In other words, there is a trade-off between the author\xe2\x80\x99s incentive to produce a\nwork and the public\xe2\x80\x99s interest in access to that work.\nThe author\xe2\x80\x99s exclusive rights under copyright law provide a buffer against price competition.\nThis competitive buffer allows the author to charge higher prices than she otherwise would,\nwhich in turn has two immediate effects. First, some consumers remain willing to purchase\nthe work at a higher price and consequently pay more. Assuming we value the welfare of\nboth consumers and authors equally, this is simply a wealth transfer and is welfare-neutral.\nSecond, those who are unwilling to pay the higher price are forced to go without the work in\nquestion. Market allocation of scarce resources to their highest valued use is usually welfare\nenhancing, but for non-rivalrous goods, the exclusion of low value users produces a\ndeadweight loss because their consumption is not at the expense of another who values the\ngood more.\nAll this suggests that there is a trade-off between efficiency in production and efficiency in\nconsumption; essentially this is a comparison of dynamic benefits (incentives) and static\ncosts (exclusion). Copyright has dynamic benefits in that it creates incentives to invest in the\ncreation of new intellectual and creative works. Copyright has static costs comprised of the\n\xe2\x80\x9cconsumer deadweight loss resulting from higher pricing,\xe2\x80\x9d the concentration of market\npower, and possible stifling of alternative points of view. In the classic model, the optimal\nassignment of copyright rights is determined by balancing the dynamic incentives against\nstatic deadweight losses.14\n\nWilliam M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. LEGAL STUD. 325, 326\n(1989).\n14\n\n33\n\n\x0cCopyright and Creativity: Evidence from Italian Operas\nSo, what do we know about the economics of copyright? We know that in theory copyright\nestablishes market-based incentives for the creation and dissemination of expressive works.\nWe also know that, depending on the scope of copyright, these incentives might become\nobstacles for the next generation of creators and that they might limit access to the work\nleading to a deadweight loss.\nSo much for theory, is there any evidence that copyright actually works in practice?\nIn \xe2\x80\x9cCopyright and Creativity: Evidence from Italian Operas,\xe2\x80\x9d15 Michela Giorcelli and Petra Moser\nfound a creative way to empirically test the effect of copyright law by examining the\nproduction of operas in Italian states between 1770 and 1900. Usually, it doesn\xe2\x80\x99t make sense\nto attribute the difference in output between two states to any particular aspect of their legal\nsystems because the difference may well be attributable to whatever caused the two states to\nadopt different legal systems. But in this case, the variation in copyright laws came about as a\nresult of Napoleon\xe2\x80\x99s military campaign in Northern Italy. This gives the authors something\nclose to a natural experiment, variation between comparable states in copyright law that\ncame about for reasons that have nothing to do with copyright. Lombardy and Venetia\nadopted copyright laws in 1801, as part of a broader packet of French laws, after they had\nfallen under French rule.\nFrom 1801 onwards, Lombardy and Venetia appear to have experienced a significant\nincrease in the number of new operas that premiered per state and per year. Giorcelli and\nMoser also found that the number of high-quality operas also increased in the copyright\nearly adopter states. However, although the Italian experiment suggests that copyright really\ndoes create incentives, the same can\xe2\x80\x99t necessarily be said about extensions of the duration of\ncopyright. As Giorcelli and Moser note, when Lombary and Venetia later moved to extend\ntheir copyright terms, \xe2\x80\x9cthere was no clear increase in the level or the quality of output, even\nthough both states had responded strongly to the adoption of basic copyright laws.\xe2\x80\x9d\nLess money, more music?\nCopyright has steadily expanded for the last 300 years. As Glynn Lunney notes in Copyright\xe2\x80\x99s\nExcess (2018), much of that expansion has been driven by \xe2\x80\x9con the fundamental premise that\nmore incentives will yield more and better original works,\xe2\x80\x9d but this is a premise that we have\nnever really tested. In Copyright\xe2\x80\x99s Excess, Lunney uses a variety of data sources to show that, at\nleast since the 1960s, the relationship between money and music production has been exactly\nthe opposite to that which the incentive story of copyright would predict. The central dogma\nof copyright holds that greater rewards spur greater endeavors and that we should expect\nthat less money means less music. And yet, increases in copyright have reduced music output\nand quality, and forces undermining copyright\xe2\x80\x94especially illegal peer to peer filesharing\xe2\x80\x94\nhave increased it.\nMacroeconomic studies such as those in Lunney\xe2\x80\x99s book are incredibly tricky and not\neveryone will agree that he has demonstrated a perverse relationship between music industry\nrevenue and music production. At the very least, however, the last 50 years of data from the\n\nMichela Giorcelli and Petra Moser, Copyright and Creativity: Evidence from Italian Operas (February 24,\n2015). Available at SSRN: http://ssrn.com/abstract=2505776.\n15\n\n34\n\n\x0cUnited States music industry leave us with a total absence of evidence for the central dogma\nof copyright law.\nSequential innovation\nThe standard model of copyright does not pay much attention to sequential innovation. This\nis unfortunate in a world where very few creations stand alone. Even the greatest authors\nand artists typically see further by standing on the shoulders of those who came before them.\nAlthough we want the law to encourage highly original works, we don\xe2\x80\x99t expect art and\nliterature to stand apart from contemporary culture. Films make reference to other films,\nbooks make reference to other books, even in the visual arts and in architecture one might\nsee references and reactions to other works. The scope of copyright needs to be carefully\ncalibrated to provide sufficient incentive for original works without smothering the creativity\nof the next generation.\nThe economics of sequential innovation raises many questions but provides few answers in\nthe context of copyright. When creator B wants to build all the work of creator A to produce\na new copyrightable work, it is impossible to say in the abstract how the rewards/incentives\nfor the second work should be allocated. The simplistic belief that the initial allocation of\nevery conceivable right relating to a work should be vested in A does not account for\ntransaction costs, uncertainty and strategic behavior, externalities (cost and benefits visited\non third parties), and non-economic motivations. It might seem intuitive that the author of a\nbook should be entitled to determine who writes the sequel, but where do we draw the line\nbetween a sequel and a companion book, a parody or simply a work in the same genre?\nHow do people respond to copyright incentives?\n[Placeholder for discussion of experimental findings]\n\nCopyright\xe2\x80\x99s International Framework\nWhy and to what extent is the law of intellectual property international?\nThere have been significant international agreements concerning intellectual property\nprotection since at least the mid 19th century. However, there was an important paradigm\nshift in 1994 when intellectual property was incorporated into the world free-trade system\nunder the WTO, the World Trade Organization. As Margot Kaminski points out in The\nCapture Of International Intellectual Property Law Through The U.S. Trade Regime, it may not be\nintuitively obvious that a set of laws establishing territorial exclusive rights belongs in a free\ntrade regime devoted to lowering tariffs and other trade barriers to ensure the free flow of\ngoods and services:\nBut over the past several decades, free trade agreements have expanded to cover a\nnumber of regulatory areas, including IP, in surprising depth.\n\nKaminski further explains:\nGlobal efforts to link IP to trade culminated in the 1994 Agreement on TradeRelated Aspects of Intellectual Property (\xe2\x80\x9cTRIPS Agreement\xe2\x80\x9d) in the World Trade\nOrganization. The TRIPS Agreement made international IP law broader, deeper,\n\n35\n\n\x0cand more enforceable. TRIPS covers numerous areas of IP in more detail. However,\nthere was enough space left for policy disagreement that several countries, including\nthe United States, now use bilateral free trade agreements to supplement TRIPS\xe2\x80\x99s\nprotections.\nThe integration of IP into bilateral and multilateral free-trade agreements is justified\non the promise of the efficiencies gained from harmonized standards. By linking\nintellectual property rights to other trade issues, net exporters of intellectual\nproperty \xe2\x80\x93 principally the United States \xe2\x80\x93 were able to persuade net importers to\naccept higher standards of IP protection in exchange for better terms of trade in\nunrelated fields. Linking IP to international trade has led to greater harmonization,\nbut more importantly it also links intellectual property agreements to the WTO\ndispute resolution system unless makes existing agreements more enforceable.16\n\nHowever, progress at the WTO has stalled in recent years and the United States and\nEuropean Union have both pursued bilateral free trade agreements. These agreements have\ntended to impose higher standards of IP protection on the trading parties in ways that are\narguably inconsistent with the spirit of the TRIPs Agreement negotiated in 1994. For\nexample, Chapter 17 of Australia\xe2\x80\x93United States Free Trade Agreement (AUSFTA) (effective\nas of January 1, 2005) required Australia to extend the minimum term of copyright to 70\nyears after the author\xe2\x80\x99s death. This is 20 years more than is required under the Berne\nConvention.\nCopyright\xe2\x80\x99s International Framework\nCopyright law has been the subject of far-reaching international agreements since the Berne\nConvention of 1886. Today, the TRIPs agreement incorporates by reference articles 1 to 21\nof the Berne Convention (Paris 1971) and its Appendix. The TRIPs Agreement also contains\nits own minimum standards for copyright which both overlap with and extend the Berne\nConvention.\nTRIPs Article 9(1)\nMembers shall comply with Articles 1 through 21 of the Berne Convention (1971)\nand the Appendix thereto. However, Members shall not have rights or obligations\nunder this Agreement in respect of the rights conferred under Article 6bis of that\nConvention or of the rights derived therefrom.\nThe first Berne Convention was a significant development in first the internationalization on\nintellectual property. Prior to the Berne Convention, countries either didn\xe2\x80\x99t recognize the\ncopyrights of foreign nationals, or they did so based on bilateral agreements of reciprocity.\nThe Berne convention adopted the principle of national treatment whereby each country\nagrees to treat foreigners at least as well as it treats its own nationals, regardless of the level\nof protection offered in a foreign country. The Berne Convention also adopted certain\nminimum standards.\nRemarkably, the United States stayed outside of the Berne Convention until 1989. Initially,\nthe United States refused to enforce foreign copyrights as part of a deliberate industrial\npolicy that prioritized the education of a fast-growing population over the rights of authors\nMargot E. Kaminski, The Capture Of International Intellectual Property Law Through The U.S. Trade Regime, 87 S.\nCAL. L. REV. 977 (2014).\n16\n\n36\n\n\x0cin far away countries. However, even after the United States became an important producer\nof literature, music, film, and television it was reluctant to accede to the Berne Convention\nbecause United States law predicated copyright protection on compliance with formalities \xe2\x80\x93\nincluding publication with a copyright notice, registration with the copyright office and\ndeposit with the library of congress. Insistence on these formalities was strictly prohibited\nunder the Berne Convention.\nSome other significant international agreements on copyright and related rights include the\nRome Convention, the international convention for the protection of performers, producers\nof phonograms and broadcasting organizations, first signed in 1961; and the WIPO\nCopyright Treaty and the WIPO Performances and Phonograms Treaty.17\nIn addition, copyright has also been an important issue in a number of regional and bilateral\nfree trade agreements, particularly those negotiated by the European Union and the United\nStates. These agreements are often referred to as \xe2\x80\x9cTRIPs-Plus\xe2\x80\x9d agreements because they\nseek to impose minimum standards above and beyond what was agreed to in the TRIPs\nAgreement.\n\nA quick look at the rights of the copyright owner\nBefore getting too immersed in detail of copyright law, it is useful to have a general\nappreciation of the kinds of exclusive rights and copyright provides.\nThe TRIPs Agreement and the Berne Convention both contain some general guidance as to\nthe rights of the copyright owner. However, it is important to recognize that these\ninternational agreements are not self-executing, at least not in the United States. The rights\nof the copyright owner in a particular country only exist by virtue of that country\xe2\x80\x99s domestic\nlegislation. If that domestic legislation is noncompliant with international norms, that may,\nor may not, lead to censure or retaliation through the dispute settlement mechanisms of the\nWorld Trade Organization.\nIt is also important to recognize that although the TRIPs agreement and the Berne\nConvention (and the WIPO Treaties for that matter) use certain language to describe the\nrights of the copyright owner, the use of particular terms of art is not as important as the\nsubstance of the rights.\nThe most significant economic rights of the copyright owner under the Berne Convention\nare the rights of reproduction, adaptation and translation, public performance,\ncommunication and broadcast, and public distribution for cinematographic adaptations.\nBerne Convention Economic Rights\nArticle 2bis (collection of speeches)\nArticle 8 (translations)\nArticle 9 (reproduction)\nArticle 11 (public performance of musical works)\nAlthough over 180 countries are members of WIPO, the influence of these two WIPO treaties is still weaker\nthan the TRIPS Agreement, which enjoys the strong enforcement mechanism under the WTO\xe2\x80\x99s Dispute\nSettlement Body.\n17\n\n37\n\n\x0cArticle 11bis (public communication)\nArticle 11ter (public recitation)\nArticle 12 (adaptations, arrangements, and alterations)\nArticle 14 (cinematographic adaptations)\nArticle l4ter (droit de suite, or resale right)\n\nIn addition to these, the TRIPs Agreement also contains a rental right for computer\nprograms and cinematographic works.\nDifferent jurisdictions have different styles of lawmaking. Some copyright laws contain\nspecific rights tied to particular categories of works; whereas others state the rights of the\ncopyright owner more generally. Section 106 of the United States Copyright Act of 1976 (the\n\xe2\x80\x9cCopyright Act\xe2\x80\x9d) sets out six exclusive rights belonging to the copyright owner. These are:\nthe right to reproduce the work in copies, the right to make a derivative work based on the\ncopyrighted work, the right to distribute the copyrighted work, the rights of public\nperformance and public display, and something called a digital audio transmission right.\n17 U.S. Code \xc2\xa7 106 - Exclusive rights in copyrighted works\nSubject to sections 107 through 122, the owner of copyright under this title has the\nexclusive rights to do and to authorize any of the following:\n(1) to reproduce the copyrighted work in copies or phonorecords;\n(2) to prepare derivative works based upon the copyrighted work;\n(3) to distribute copies or phonorecords of the copyrighted work to the public by\nsale or other transfer of ownership, or by rental, lease, or lending;\n(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes,\nand motion pictures and other audiovisual works, to perform the copyrighted work\npublicly;\n(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes,\nand pictorial, graphic, or sculptural works, including the individual images of a\nmotion picture or other audiovisual work, to display the copyrighted work publicly;\nand\n(6) in the case of sound recordings, to perform the copyrighted work publicly by\nmeans of a digital audio transmission.\n\nThe first three rights apply to all types of work. Generally the performance right in Section\n106(4) applies to things capable of being performed and the display right in Section 106(5)\napplies to things capable of being displayed. However, if you read the section carefully you\nwill see that there is no public performance right for sound recordings in 106(5), only for\nmusical works (for the moment, think \xe2\x80\x9cmusical works\xe2\x80\x9d as musical compositions and \xe2\x80\x9csound\nrecordings\xe2\x80\x9d as recordings of performances). There is however, a public performance right\nfor sound recordings by means of a digital audio transmission, for example, by means of\nwebcasting or Internet radio.\nFinally, it is worth noting that business terms and legal rights under the Copyright Act are\nnot always in sync. In fact, so-called \xe2\x80\x9csynchronization licenses\xe2\x80\x9d are great example of this\nphenomenon. According to Kohn On Music Licensing, \xe2\x80\x9csynchronizing involves making a piece\nof music an integral part of the audiovisual work \xe2\x80\x94 by recording the music in \xe2\x80\x98timed-\n\n38\n\n\x0crelation\xe2\x80\x99 with the moving pictures in an audiovisual work.\xe2\x80\x9d18 In reality, a sync license is\nsimply a license to reproduce the musical work limited to a particular factual context. Usually\nthe terms of a sync license will include performance rights as well, but not always. There is\nnothing special from a legal standpoint about the fact that the music is combined with\nvideo,19 but the terminology is a useful of conveying the limits of the permission and the\nunderstanding that use of the same musical composition in a different context or in a\ndifferent audiovisual work \xe2\x80\x9cwould require a separate license, carrying an additional fee.\xe2\x80\x9d20\n\n18\n\nAL KOHN & BOB KOHN, KOHN ON MUSIC LICENSING 1086 (4th ed. 2010).\n\nWith one exception. The statutory license in Section 115 of the Copyright Act is only available for fixing\nmusical works in \xe2\x80\x9cphonorecords\xe2\x80\x9d and that term is defined to exclude music combined with video.\n19\n\n20\n\nKohn On Music Licensing, at 1105\xe2\x80\x9306.\n\n39\n\n\x0c2. COPYRIGHT SUBJECT MATTER AND QUESTIONS\nORIGINALITY, AND INTELLECTUAL CREATION\n\nOF\n\nCREATIVITY,\n\nThe significance of Creativity, originality, and authorship\nCreativity, originality, and authorship are the fundamental concepts that determine whether a\nwork is entitled to copyright protection and which aspects of a work are protected by the\nexclusive rights of the copyright owner. The following readings concentrate on how these\nconcepts influence whether a work is eligible for copyright protection in the first place.\n\nInternational Context\nOne of the bedrock principles of copyright law in the United States is the concept of\noriginality: to qualify for copyright protection a work must be a work of authorship in the\nsense that it displays some minimal degree of human creativity in its expression. Neither the\nTRIPs Agreement nor the Berne Convention clearly express a universal requirement of\nauthorship or originality, however both agreements refer to works being a product of\n\xe2\x80\x9cintellectual creation\xe2\x80\x9d in the contexts of compilations and collections. This requirement of\n\xe2\x80\x9cintellectual creation\xe2\x80\x9d is arguably implicit in the Berne\xe2\x80\x99s focus on \xe2\x80\x9cliterary and artistic\nworks\xe2\x80\x9d; after all, if a work does not display any creativity or intellectual creation, how can we\ncall it a literary or artistic work?\nThe next few paragraphs highlight some of the key provisions of Berne and TRIPs defining\nthe subject matter of copyright. The Berne Convention calls for the protection of \xe2\x80\x9cliterary\nand artistic works\xe2\x80\x9d and it does so in broad terms.\nBerne Convention Article 2.\n(1) The expression \xe2\x80\x9cliterary and artistic works\xe2\x80\x9d shall include every production in the\nliterary, scientific and artistic domain, whatever may be the mode or form of its\nexpression, such as books, pamphlets and other writings; lectures, addresses,\nsermons and other works of the same nature; dramatic or dramatico-musical works;\nchoreographic works and entertainments in dumb show; musical compositions with\nor without words; cinematographic works to which are assimilated works expressed\nby a process analogous to cinematography; works of drawing, painting, architecture,\nsculpture, engraving and lithography; photographic works to which are assimilated\nworks expressed by a process analogous to photography; works of applied art;\nillustrations, maps, plans, sketches and three-dimensional works relative to\ngeography, topography, architecture or science.\n(3) Translations, adaptations, arrangements of music and other alterations of a\nliterary or artistic work shall be protected as original works without prejudice to the\ncopyright in the original work.\n(5) Collections of literary or artistic works such as encyclopaedias and anthologies\nwhich, by reason of the selection and arrangement of their contents, constitute\nintellectual creations shall be protected as such, without prejudice to the copyright in\neach of the works forming part of such collections.\n\nUnder Article 2(1), the broad category of \xe2\x80\x9cliterary and artistic works\xe2\x80\x9d includes \xe2\x80\x9cevery\nproduction in the literary, scientific and artistic domain, whatever may be the mode form of\n\n40\n\n\x0cexpression,\xe2\x80\x9d and the Article then continues with a number of examples to illustrate this\nbroad definition.\nThe Berne Convention also treats translations, adaptations, and arrangements as original\nworks in the sense that they are entitled to copyright protection, even though they are\nderived from previous works which may already have their own independent copyright\nprotection. This is what Article 2(3) means by the phrase: \xe2\x80\x9cshall be protected as original works\nwithout prejudice to the copyright in the original work\xe2\x80\x9d. Berne Article 2(5) also treats collections of\nliterary or artistic works as \xe2\x80\x9coriginal works\xe2\x80\x9d, but only if they \xe2\x80\x9cconstitute intellectual creations\xe2\x80\x9d \xe2\x80\x9cby\nreason of the selection and arrangement of their contents\xe2\x80\x9d.\nThe TRIPs Agreement deals with copyright subject matter more succinctly. TRIPs Article\n9(2) states simply that \xe2\x80\x9ccopyright shall extend to expressions and not to ideas, procedures,\nmethods of operations or mathematical concepts as such.\xe2\x80\x9d\nTRIPs Article 9(2)\nCopyright protection shall extend to expressions and not to ideas, procedures,\nmethods of operation or mathematical concepts as such.\n\nArticle 10(1) of TRIPs represents an important development in the history of copyright law,\nthe extension of copyright subject matter to include computer programs. There is no parallel\nprovision in the Berne Convention. TRIPs Article 10(2) covers the same ground as Berne\nArticle 2(5) discussed above. This provision provides that compilations of data or other\nmaterial, \xe2\x80\x9cwhich by reason of the selection or arrangement of the contents constitute\nintellectual creations\xe2\x80\x9d should be protected as literary works.\nTRIPs Article 10. Computer Programs and Compilations of Data\n1. Computer programs, whether in source or object code, shall be protected as\nliterary works under the Berne Convention (1971).\n2. Compilations of data or other material, whether in machine readable or other\nform, which by reason of the selection or arrangement of their contents constitute\nintellectual creations shall be protected as such. Such protection, which shall not\nextend to the data or material itself, shall be without prejudice to any copyright\nsubsisting in the data or material itself.\n\nNeither Berne nor Trips provide any definition of the concept of \xe2\x80\x9cintellectual creation\xe2\x80\x9d.\nThe originality requirement is expressly included in the majority of copyright statutes worldwide. Section 102 of the United States Copyright Act provides that \xe2\x80\x9cCopyright protection subsists,\nin accordance with this title, in original works of authorship fixed in any tangible medium of expression \xe2\x80\xa6\xe2\x80\x9d;\nSection 1(1) of the U.K. Copyright, Designs and Patents Act, 1988 provides that \xe2\x80\x9cCopyright is\na property right which subsists in \xe2\x80\xa6 (a) original literary, dramatic, musical or artistic works, (b) sound\nrecordings, films or broadcasts, and (c) the typographical arrangement of published editions.\xe2\x80\x9d The Indian\nCopyright Act uses almost identical terms. Section 32 of the Australian Copyright Act also\nstates that \xe2\x80\x9ccopyright subsists in an original literary \xe2\x80\xa6\xe2\x80\x9d\nJurisdictions tend to agree that originality requires some identifiable quantum of contribution\nby the person claiming authorship, but they may diverge on the nature of the contribution.\n\n41\n\n\x0cCreativity, originality and copyright subject matter in the United States\nPre-Feist\n[Placeholder for discussion of the Trade-Mark cases]\nPhotography was not listed as copyright subject matter in the Statute of Anne, nor in the\nfirst United States Copyright Act of 1790, probably because photography had not yet been\ninvented. The invention of the daguerreotype process for capturing images with light\nsensitive materials in 1839 is generally accepted as the birth of photography. Photography\nwas included in copyright subject matter in the English Fine Arts Copyright Act of 1862 and\nby a similar provision in the United States in 1865. However, it was not until 1884 that the\nSupreme Court had the opportunity to consider whether a mechanical process like\nphotography truly belonged under the rubric of copyright law.\nThe Burrow-Giles case extracted below began with a copyright infringement case filed by\nSarony, a photographer, in the Southern District of New York. As quoted in the Supreme\nCourt\xe2\x80\x99s decision, the trial court made the following findings of fact:\nThat the plaintiff about the month of January, 1882, under an agreement with Oscar\nWilde, became and was the author, inventor, designer, and proprietor of the\nphotograph in suit, the title of which is \xe2\x80\x98Oscar Wilde No. 18,\xe2\x80\x99 being the number\nused to designate this particular photograph and of the negative thereof; that the\nsame is a useful, new, harmonious, characteristic, and graceful picture, and that said\nplaintiff made the same at his place of business in said city of New York, and within\nthe United States, entirely from his own original mental conception, to which he\ngave visible form by posing the said Oscar Wilde in front of the camera, selecting\nand arranging the costume, draperies, and other various accessories in said\nphotograph, arranging the subject so as to present graceful outlines, arranging and\ndisposing the light and shade, suggesting and evoking the desired expression, and\nfrom such disposition, arrangement, or representation, made entirely by the plaintiff,\nhe produced the picture in suit, \xe2\x80\xa6 , and that the terms \xe2\x80\x98author,\xe2\x80\x99 \xe2\x80\x98inventor,\xe2\x80\x99 and\n\xe2\x80\x98designer,\xe2\x80\x99 as used in the art of photography and in the complaint, mean the person\nwho so produced the photograph.\n\nThe primary issue before the Supreme Court was whether Congress had the constitutional\nright to protect photographs and negatives thereof by copyright.\nBurrow-Giles Lithographic Co. v. Sarony, 111 US 53 (1884)\nMr. Justice Miller delivered the opinion of the court\nThe constitutional question is not free from difficulty.\nThe eighth section of the first article of the Constitution is the great repository of the\npowers of Congress, and by the eighth clause of that section Congress is authorized:\nTo promote the progress of science and useful arts, by securing, for limited times to\nauthors and inventors, the exclusive right to their respective writings and discoveries.\n\nThe argument here is, that a photograph is not a writing nor the production of an\nauthor. Under the acts of Congress designed to give effect to this section, the\npersons who are to be benefited are divided into two classes, authors and inventors.\n\n42\n\n\x0cThe monopoly which is granted to the former is called a copyright, that given to the\nlatter, letters patent, or, in the familiar language of the present day, patent right.\nWe have, then, copyright and patent right, and it is the first of these under which\nplaintiff asserts a claim for relief.\nIt is insisted in argument, that a photograph being a reproduction on paper of the\nexact features of some natural object or of some person, is not a writing of which the\nproducer is the author.\nSection 4952 of the Revised Statutes places photographs in the same class as things\nwhich may be copyrighted with \xe2\x80\x9cbooks, maps, charts, dramatic or musical\ncompositions, engravings, cuts, prints, paintings, drawings, statues, statuary, and\nmodels or designs intended to be perfected as works of the fine arts.\xe2\x80\x9d \xe2\x80\x9cAccording to\nthe practice of legislation in England and America,\xe2\x80\x9d says Judge Bouvier, 2 Law\nDictionary, 363, \xe2\x80\x9cthe copyright is confined to the exclusive right secured to the\nauthor or proprietor of a writing or drawing which may be multiplied by the arts of\nprinting in any of its branches.\xe2\x80\x9d\nThe first Congress of the United States, sitting immediately after the formation of\nthe Constitution, enacted that the \xe2\x80\x9cauthor or authors of any map, chart, book or\nbooks, being a citizen or resident of the United States, shall have the sole right and\nliberty of printing, reprinting, publishing and vending the same for the period of\nfourteen years from the recording of the title thereof in the clerk\xe2\x80\x99s office, as\nafterwards directed.\xe2\x80\x9d 1 Stat. 124, 1.\nThis statute not only makes maps and charts subjects of copyright, but mentions\nthem before books in the order of designation. The second section of an act to\namend this act, approved April 29, 1802, 2 Stat. 171, enacts that from the first day of\nJanuary thereafter, he who shall invent and design, engrave, etch or work, or from\nhis own works shall cause to be designed and engraved, etched or worked, any\nhistorical or other print or prints shall have the same exclusive right for the term of\nfourteen years from recording the title thereof as prescribed by law.\nBy the first section of the act of February 3d, 1831, 4 Stat. 436, entitled an act to\namend the several acts respecting copyright, musical compositions and cuts, in\nconnection with prints and engravings, are added, and the period of protection is\nextended to twenty-eight years. The caption or title of this act uses the word\ncopyright for the first time in the legislation of Congress.\nThe construction placed upon the Constitution by the first act of 1790, and the act\nof 1802, by the men who were contemporary with its formation, many of whom\nwere members of the convention which framed it, is of itself entitled to very great\nweight, and when it is remembered that the rights thus established have not been\ndisputed during a period of nearly a century, it is almost conclusive.\nUnless, therefore, photographs can be distinguished in the classification on this point\nfrom the maps, charts, designs, engravings, etchings, cuts, and other prints, it is\ndifficult to see why Congress cannot make them the subject of copyright as well as\nthe others.\nThese statutes certainly answer the objection that books only, or writing in the\nlimited sense of a book and its author, are within the constitutional provision. Both\n43\n\n\x0cthese words are susceptible of a more enlarged definition than this. An author in that\nsense is \xe2\x80\x9che to whom anything owes its origin; originator; maker; one who completes\na work of science or literature.\xe2\x80\x9d Worcester. So, also, no one would now claim that the\nword writing in this clause of the Constitution, though the only word used as to\nsubjects in regard to which authors are to be secured, is limited to the actual script of\nthe author, and excludes books and all other printed matter. By writings in that\nclause is meant the literary productions of those authors, and Congress very properly\nhas declared these to include all forms of writing, printing, engraving, etching, &c.,\nby which the ideas in the mind of the author are given visible expression. The only\nreason why photographs were not included in the extended list in the act of 1802 is\nprobably that they did not exist, as photography as an art was then unknown, and the\nscientific principle on which it rests, and the chemicals and machinery by which it is\noperated, have all been discovered long since that statute was enacted.\nNor is it to be supposed that the framers of the Constitution did not understand the\nnature of copyright and the objects to which it was commonly applied, for copyright,\nas the exclusive right of a man to the production of his own genius or intellect,\nexisted in England at that time, and the contest in the English courts, finally decided\nby a very close vote in the House of Lords, whether the statute of 8 Anne, chap. 19,\nwhich authorized copyright for a limited time, was a restraint to that extent on the\ncommon law or not, was then recent. It had attracted much attention, as the\njudgment of the King\xe2\x80\x99s Bench, delivered by Lord Mansfield, holding it was not such\na restraint, in Millar v. Taylor, 4 Burrows, 2303, decided in 1769, was overruled on\nappeal in the House of Lords in 1774. Ibid. 2408. In this and other cases the whole\nquestion of the exclusive right to literary and intellectual productions had been freely\ndiscussed.\nWe entertain no doubt that the Constitution is broad enough to cover an act\nauthorizing copyright of photographs, so far as they are representatives of original\nintellectual conceptions of the author.\nBut it is said that an engraving, a painting, a print, does embody the intellectual\nconception of its author, in which there is novelty, invention, originality, and\ntherefore comes within the purpose of the Constitution in securing its exclusive use\nor sale to its author, while the photograph is the mere mechanical reproduction of\nthe physical features or outlines of some object animate or inanimate, and involves\nno originality of thought or any novelty in the intellectual operation connected with\nits visible reproduction in shape of a picture. That while the effect of light on the\nprepared plate may have been a discovery in the production of these pictures, and\npatents could properly be obtained for the combination of the chemicals, for their\napplication to the paper or other surface, for all the machinery by which the light\nreflected from the object was thrown on the prepared plate, and for all the\nimprovements in this machinery, and in the materials, the remainder of the process is\nmerely mechanical, with no place for novelty, invention or originality. It is simply the\nmanual operation, by the use of these instruments and preparations, of transferring\nto the plate the visible representation of some existing object, the accuracy of this\nrepresentation being its highest merit.\n\n44\n\n\x0cThis may be true in regard to the ordinary production of a photograph, and, further,\nthat in such case a copyright is no protection. On the question as thus stated we\ndecide nothing.\nIn regard, however, to the kindred subject of patents for invention, they cannot by\nlaw be issued to the inventor until the novelty, the utility, and the actual discovery or\ninvention by the claimant have been established by proof before the Commissioner\nof Patents; and when he has secured such a patent, and undertakes to obtain redress\nfor a violation of his right in a court of law, the question of invention, of novelty, of\noriginality, is always open to examination. Our copyright system has no such\nprovision for previous examination by a proper tribunal as to the originality of the\nbook, map, or other matter offered for copyright. A deposit of two copies of the\narticle or work with the Librarian of Congress, with the name of the author and its\ntitle page, is all that is necessary to secure a copyright. It is, therefore, much more\nimportant that when the supposed author sues for a violation of his copyright, the\nexistence of those facts of originality, of intellectual production, of thought, and\nconception on the part of the author should be proved, than in the case of a patent\nright.\nIn the case before us we think this has been done.\nThe third finding of facts says, in regard to the photograph in question, that it is a\n\xe2\x80\x9cuseful, new, harmonious, characteristic, and graceful picture, and that plaintiff made\nthe same ... entirely from his own original mental conception, to which he gave\nvisible form by posing the said Oscar Wilde in front of the camera, selecting and\narranging the costume, draperies, and other various accessories in said photograph,\narranging the subject so as to present graceful outlines, arranging and disposing the\nlight and shade, suggesting and evoking the desired expression, and from such\ndisposition, arrangement, or representation, made entirely by plaintiff, he produced\nthe picture in suit.\xe2\x80\x9d\nThese findings, we think, show this photograph to be an original work of art, the\nproduct of plaintiff\xe2\x80\x99s intellectual invention, of which plaintiff is the author, and of a\nclass of inventions for which the Constitution intended that Congress should secure\nto him the exclusive right to use, publish and sell, as it has done by section 4952 of\nthe Revised Statutes.\nThe question here presented is one of first impression under our Constitution, but\nan instructive case of the same class is that of Nottage v. Jackson, 11 Q.B.D. 627,\ndecided in that court on appeal, August, 1883.\nThe plaintiffs in that case described themselves as the authors of the photograph\nwhich was pirated, in the registration of it. It appeared that they had arranged with\nthe captain of the Australian cricketers to take a photograph of the whole team in a\ngroup; and they sent one of the artists in their employ from London to some country\ntown to do it.\nThe question in the case was whether the plaintiffs, who owned the establishment in\nLondon, where the photographs were made from the negative and were sold, and\nwho had the negative taken by one of their men, were the authors, or the man who,\n\n45\n\n\x0cfor their benefit, took the negative. It was held that the latter was the author, and the\naction failed, because plaintiffs had described themselves as authors.\nBrett, M.R., said, in regard to who was the author: \xe2\x80\x9cThe nearest I can come to, is that\nit is the person who effectively is as near as he can be, the cause of the picture which\nis produced, that is, the person who has superintended the arrangement, who has\nactually formed the picture by putting the persons in position, and arranging the\nplace where the people are to be \xe2\x80\x94 the man who is the effective cause of that.\xe2\x80\x9d\nLord Justice Cotton said: \xe2\x80\x9cIn my opinion, \xe2\x80\x98author\xe2\x80\x99 involves originating, making,\nproducing, as the inventive or master mind, the thing which is to be protected,\nwhether it be a drawing, or a painting, or a photograph;\xe2\x80\x9d and Lord Justice Bowen\nsays that photography is to be treated for the purposes of the act as an art, and the\nauthor is the man who really represents, creates, or gives effect to the idea, fancy, or\nimagination.\nThe appeal of plaintiffs from the original judgment against them was accordingly\ndismissed.\nThese views of the nature of authorship and of originality, intellectual creation, and\nright to protection confirm what we have already said.\nThe judgment of the Circuit Court is accordingly affirmed.\nNotes and Questions\n(1) In Burrow-Giles Lithographic Co. v. Sarony, 111 US 53 (1884) the Supreme Court held (at 58)\nBy writings in that clause is meant the literary productions of those authors, and\nCongress very properly has declared these to include all forms of writing, printing,\nengraving, etching, &c., by which the ideas in the mind of the author are given\nvisible expression.\n\nThe Court thus concluded that the term \xe2\x80\x9cwriting\xe2\x80\x9d in the Copyright Clause of the U.S.\nConstitution was broad enough to include photographs \xe2\x80\x9cso far as they are representatives of\noriginal intellectual conceptions of the author.\xe2\x80\x9d The Court also noted (at 58) that\nThe only reason why photographs were not included in the extended list in the act\nof 1802 is probably that they did not exist, as photography as an art was then\nunknown, and the scientific principle on which it rests, and the chemicals and\nmachinery by which it is operated, have all been discovered long since that statute\nwas enacted.\n\n(2) What makes a photo the representation of \xe2\x80\x9coriginal intellectual conceptions of the\nauthor\xe2\x80\x9d? Do the references to the English cases help you answer this question? Are there\nany circumstances where a photo would not be copyrightable?\nBleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903)\nJustice Holmes delivered the opinion of the court\nThis case comes here from the United States Circuit Court of Appeals for the Sixth\nCircuit by writ of error. It is an action brought by the plaintiffs in error to recover\nthe penalties prescribed for infringements of copyrights. The alleged infringements\n\n46\n\n\x0cconsisted in the copying in reduced form of three chromolithographs prepared by\nemployees of the plaintiffs for advertisements of a circus owned by one Wallace.\nEach of the three contained a portrait of Wallace in the corner and lettering bearing\nsome slight relation to the scheme of decoration, indicating the subject of the design\nand the fact that the reality was to be seen at the circus. One of the designs was of an\nordinary ballet, one of a number of men and women, described as the Stirk family,\nperforming on bicycles, and one of groups of men and women whitened to represent\nstatues. The Circuit Court directed a verdict for the defendant on the ground that the\nchromolithographs were not within the protection of the copyright law, and this\nruling was sustained by the Circuit Court of Appeals.\nWe shall do no more than mention the suggestion that painting and engraving unless\nfor a mechanical end are not among the useful arts, the progress of which Congress\nis empowered by the Constitution to promote. The Constitution does not limit the\nuseful to that which satisfies immediate bodily needs. Burrow-Giles Lithographic Co. v.\nSarony, 111 U.S. 53. It is obvious also that the plaintiffs\xe2\x80\x99 case is not affected by the\nfact, if it be one, that the pictures represent actual groups \xe2\x80\x94 visible things. They\nseem from the testimony to have been composed from hints or description, not\nfrom sight of a performance. But even if they had been drawn from the life, that fact\nwould not deprive them of protection. The opposite proposition would mean that a\nportrait by Velasquez or Whistler was common property because others might try\ntheir hand on the same face. Others are free to copy the original. They are not free to\ncopy the copy. Blunt v. Patten, 2 Paine, 397, 400. See Kelly v. Morris, L.R. 1 Eq. 697;\nMorris v. Wright, L.R. 5 Ch. 279. The copy is the personal reaction of an individual\nupon nature. Personality always contains something unique. It expresses its\nsingularity even in handwriting, and a very modest grade of art has in it something\nirreducible, which is one man\xe2\x80\x99s alone. That something he may copyright unless there\nis a restriction in the words of the act.\nIf there is a restriction it is not to be found in the limited pretensions of these\nparticular works. The least pretentious picture has more originality in it than\ndirectories and the like, which may be copyrighted. Drone, Copyright, 153. See\nHenderson v. Tomkins, 60 Fed. Rep. 758, 765. The amount of training required for\nhumbler efforts than those before us is well indicated by Ruskin. \xe2\x80\x9cIf any young\nperson, after being taught what is, in polite circles, called `drawing,\xe2\x80\x99 will try to copy\nthe commonest piece of real work, \xe2\x80\x94 suppose a lithograph on the title page of a\nnew opera air, or a woodcut in the cheapest illustrated newspaper of the day \xe2\x80\x94 they\nwill find themselves entirely beaten.\xe2\x80\x9d Elements of Drawing, 1st ed. 3.\nWe assume that the construction of Rev. Stat. \xc2\xa7 4952, allowing a copyright to the\n\xe2\x80\x9cauthor, inventor, designer, or proprietor . .. of any engraving, cut, print . . . [or]\nchromo\xe2\x80\x9d is affected by the act of 1874, c. 301, \xc2\xa7 3. That section provides that \xe2\x80\x9cin the\nconstruction of this act the words `engraving,\xe2\x80\x99 `cut\xe2\x80\x99 and `print\xe2\x80\x99 shall be applied only\nto pictorial illustrations or works connected with the fine arts.\xe2\x80\x9d We see no reason for\ntaking the words \xe2\x80\x9cconnected with the fine arts\xe2\x80\x9d as qualifying anything except the\nword \xe2\x80\x9cworks,\xe2\x80\x9d but it would not change our decision if we should assume further that\nthey also qualified \xe2\x80\x9cpictorial illustrations,\xe2\x80\x9d as the defendant contends.\nThese chromolithographs are \xe2\x80\x9cpictorial illustrations.\xe2\x80\x9d The word \xe2\x80\x9cillustrations\xe2\x80\x9d does\nnot mean that they must illustrate the text of a book, and that the etchings of\n47\n\n\x0cRembrandt or Steinla\xe2\x80\x99s engraving of the Madonna di San Sisto could not be\nprotected to-day if any man were able to produce them. Again, the act however\nconstrued, does not mean that ordinary posters are not good enough to be\nconsidered within its scope. The antithesis to \xe2\x80\x9cillustrations or works connected with\nthe fine arts\xe2\x80\x9d is not works of tittle merit or of humble degree, or illustrations\naddressed to the less educated classes; it is \xe2\x80\x9cprints or labels designed to be used for\nany other articles of manufacture.\xe2\x80\x9d Certainly works are not the less connected with\nthe fine arts because their pictorial quality attracts the crowd and therefore gives\nthem a real use \xe2\x80\x94 if use means to increase trade and to help to make money. A\npicture is none the less a picture and none the less a subject of copyright that it is\nused for an advertisement. And if pictures may be used to advertise soap, or the\ntheatre, or monthly magazines, as they are, they may be used to advertise a circus. Of\ncourse, the ballet is as legitimate a subject for illustration as any other. A rule cannot\nbe laid down that would excommunicate the paintings of Degas.\nFinally, the special adaptation of these pictures to the advertisement of the Wallace\nshows does not prevent a copyright. That may be a circumstance for the jury to\nconsider in determining the extent of Mr. Wallace\xe2\x80\x99s rights, but it is not a bar.\nMoreover, on the evidence, such prints are used by less pretentious exhibitions when\nthose for whom they were prepared have given them up.\nIt would be a dangerous undertaking for persons trained only to the law to constitute\nthemselves final judges of the worth of pictorial illustrations, outside of the\nnarrowest and most obvious limits. At the one extreme some works of genius would\nbe sure to miss appreciation. Their very novelty would make them repulsive until the\npublic had learned the new language in which their author spoke. It may be more\nthan doubted, for instance, whether the etchings of Goya or the paintings of Manet\nwould have been sure of protection when seen for the first time. At the other end,\ncopyright would be denied to pictures which appealed to a public less educated than\nthe judge. Yet if they command the interest of any public, they have a commercial\nvalue \xe2\x80\x94 it would be bold to say that they have not an aesthetic and educational value\n\xe2\x80\x94 and the taste of any public is not to be treated with contempt. It is an ultimate\nfact for the moment, whatever may be our hopes for a change. That these pictures\nhad their worth and their success is sufficiently shown by the desire to reproduce\nthem without regard to the plaintiffs\xe2\x80\x99 rights. See Henderson v. Tomkins, 60 Fed. Rep.\n758, 765. We are of opinion that there was evidence that the plaintiffs have rights\nentitled to the protection of the law.\nThe judgment of the Circuit Court of Appeals is reversed; the judgment of the\nCircuit Court is also reversed and the cause remanded to that court with directions to\nset aside the verdict and grant a new trial.\nJustice Harlan, with whom concurred Justice McKenna, dissenting.\nJudges Lurton, Day and Severens, of the Circuit Court of Appeals, concurred in\naffirming the judgment of the District Court. Their views were thus expressed in an\nopinion delivered by Judge Lurton: \xe2\x80\x9cWhat we hold is this: That if a chromo,\nlithograph, or other print, engraving, or picture has no other use than that of a mere\nadvertisement, and no value aside from this function, it would not be promotive of\nthe useful arts, within the meaning of the constitutional provision, to protect the\n\n48\n\n\x0c`author\xe2\x80\x99 in the exclusive use thereof, and the copyright statute should not be\nconstrued as including such a publication, if any other construction is admissible. If a\nmere label simply designating or describing an article to which it is attached, and\nwhich has no value separated from the article, does not come within the\nconstitutional clause upon the subject of copyright, it must follow that a pictorial\nillustration designed and useful only as an advertisement, and having no intrinsic\nvalue other than its function as an advertisement, must be equally without the\nobvious meaning of the Constitution. It must have some connection with the fine\narts to give it intrinsic value, and that it shall have is the meaning which we attach to\nthe act of June 18, 1874, amending the provisions of the copyright law. We are\nunable to discover anything useful or meritorious in the design copyrighted by the\nplaintiffs in error other than as an advertisement of acts to be done or exhibited to\nthe public in Wallace\xe2\x80\x99s show. No evidence, aside from the deductions which are to\nbe drawn from the prints themselves, was offered to show that these designs had any\noriginal artistic qualities.\xe2\x80\x9d\nI entirely concur in these views, and therefore dissent from the opinion and\njudgment of this court. The clause of the Constitution giving Congress power to\npromote the progress of science and useful arts, by securing for limited terms to\nauthors and inventors the exclusive right to their respective works and discoveries,\ndoes not, as I think, embrace a mere advertisement of a circus.\nNotes and Questions\n(1) Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) is an important case to come to\nterms with when addressing the concept of originality and understanding the Constitutional\nlimits on copyright subject matter more generally. The case concerned the unauthorized\nreproduction of a circus poster, pictured below.\nFigure 1 Bleistein v. Donaldson Circus Poster\n\nThe defendant\xe2\x80\x99s primary argument was that the kind of low art represented in the poster and\nits use in advertising meant that it was not the kind of fine art to which the copyright act was\ndirected. In the course of rejecting this argument Justice Holmes articulated the now famous\n49\n\n\x0cBleistein \xe2\x80\x9canti-discrimination\xe2\x80\x9d principle. Justice Holmes warns (at 251-252) that copyright\nshould not be reserved for works deemed to have a particular importance or quality, or\nindeed social value, because these artistic judgments are beyond the institutional competence\nof the courts.\nIt would be a dangerous undertaking for persons trained only to the law to\nconstitute themselves final judges of the worth of pictorial illustrations, outside of\nthe narrowest and most obvious limits. At the one extreme some works of genius\nwould be sure to miss appreciation. Their very novelty would make them repulsive\nuntil the public had learned the new language in which their author spoke. It may be\nmore than doubted, for instance, whether the etchings of Goya or the paintings of\nManet would have been sure of protection when seen for the first time. At the other\nend, copyright would be denied to pictures which appealed to a public less educated\nthan the judge.\n\n(2) In Bleistein, The Problem Of Aesthetic Progress, And The Making Of American Copyright Law,\nBarton Beebe (Columbia Law Review, 2017) argues that when Holmes declared that judges\nshould refrain from judging aesthetic merit he was not speaking to the standard of originality,\nbut rather to the dissent\xe2\x80\x99s view that a work that has \xe2\x80\x9cno other use than that of a mere\nadvertisement\xe2\x80\x9d did not qualify for copyright protection because it did not \xe2\x80\x9cpromote the\nprogress of\xe2\x80\x9d of knowledge as required by the Constitution. What are the implications of this\nargument?\n(3) The majority opinion argues that \xe2\x80\x9cthe least pretentious picture has more originality in it\nthan directories and the like, which may be copyrighted.\xe2\x80\x9d It cites a leading copyright treatise\nof the day and caselaw for that proposition, but as discussed further below, most directories\nand the like are not in fact copyrightable. See Feist Publications, Inc. v. Rural Telephone Service Co.,\n499 US 340 (1991).\nAlfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir.1951)\nAlfred Bell & Co was a British print producer and dealer that had secured United States copyrights in eight mezzotint\nengravings of certain paintings in the public domain. The plaintiff brought an action against a dealer in lithographs that\nproduced and sold color lithographs of the eight mezzotints.\n\nCircuit Judge Frank\nCongressional power to authorize both patents and copyrights is contained in Article\n1, \xc2\xa7 8 of the Constitution. In passing on the validity of patents, the Supreme Court\nrecurrently insists that this constitutional provision governs. On this basis, pointing\nto the Supreme Court\xe2\x80\x99s consequent requirement that, to be valid, a patent must\ndisclose a high degree of uniqueness, ingenuity and inventiveness, the defendants\nassert that the same requirement constitutionally governs copyrights. As several\nsections of the Copyright Act \xe2\x80\x94 e.g., those authorizing copyrights of \xe2\x80\x9creproductions\nof works of art,\xe2\x80\x9d maps, and compilations \xe2\x80\x94 plainly dispense with any such high\nstandard, defendants are, in effect, attacking the constitutionality of those sections.\nBut the very language of the Constitution differentiates (a) \xe2\x80\x9cauthors\xe2\x80\x9d and their\n\xe2\x80\x9cwritings\xe2\x80\x9d from (b) \xe2\x80\x9cinventors\xe2\x80\x9d and their \xe2\x80\x9cdiscoveries.\xe2\x80\x9d Those who penned the\nConstitution, (many of them were themselves authors) of course, knew the difference.\nThe pre-revolutionary English statutes had made the distinction. In 1783, the\nContinental Congress had passed a resolution recommending that the several states\nenact legislation to \xe2\x80\x9csecure\xe2\x80\x9d to authors the \xe2\x80\x9ccopyright\xe2\x80\x9d of their books. Twelve of the\n50\n\n\x0cthirteen states (in 1783-1786) enacted such statutes. Those of Connecticut and North\nCarolina covered books, pamphlets, maps, and charts.\nMoreover, in 1790, in the year after the adoption of the Constitution, the first\nCongress enacted two statutes, separately dealing with patents and copyrights. The\npatent statute, enacted April 10, 1790, 1 Stat. 109, provided that patents should issue\nonly if the Secretary of State, Secretary of War and the Attorney General, or any two\nof them \xe2\x80\x9cshall deem the invention or discovery sufficiently useful and important\xe2\x80\x9d;\nthe applicant for a patent was obliged to file a specification \xe2\x80\x9cso particular\xe2\x80\x9d as \xe2\x80\x9cto\ndistinguish the invention or discovery from other things before known and used \xe2\x80\xa6\xe2\x80\x9d;\nthe patent was to constitute prima facie evidence that the patentee was \xe2\x80\x9cthe first and\ntrue inventor or \xe2\x80\xa6 discoverer \xe2\x80\xa6 of the thing so specified.\xe2\x80\x9d The Copyright Act,\nenacted May 31, 1790, 1 Stat. 124, covered \xe2\x80\x9cmaps, charts, and books\xe2\x80\x9d. A printed\ncopy of the title of any map, chart or book was to be recorded in the Clerk\xe2\x80\x99s office\nof the District Court, and a copy of the map, chart or book was to be delivered to\nthe Secretary of State within six months after publication. Twelve years later,\nCongress in 1802, 2 Stat. 171, added, to matters that might be copyrighted,\nengravings, etchings and prints.\nThus legislators peculiarly familiar with the purpose of the Constitutional grant, by\nstatute, imposed far less exacting standards in the case of copyrights. They\nauthorized the copyrighting of a mere map which, patently, calls for no considerable\nuniqueness. They exacted far more from an inventor. And, while they demanded that\nan official should be satisfied as to the character of an invention before a patent\nissued, they made no such demand in respect of a copyright. \xe2\x80\xa6 Accordingly, the\nConstitution, as so interpreted, recognizes that the standards for patents and\ncopyrights are basically different.\n\xe2\x80\x9cOriginal\xe2\x80\x9d in reference to a copyrighted work means that the particular work \xe2\x80\x9cowes\nits origin\xe2\x80\x9d to the \xe2\x80\x9cauthor.\xe2\x80\x9d(Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57-58)\nNo large measure of novelty is necessary.\nIt is clear, then, that nothing in the Constitution commands that copyrighted matter\nbe strikingly unique or novel. Accordingly, we were not ignoring the Constitution\nwhen we stated that a \xe2\x80\x9ccopy of something in the public domain\xe2\x80\x9d will support a\ncopyright if it is a \xe2\x80\x9cdistinguishable variation\xe2\x80\x9d; or when we rejected the contention\nthat \xe2\x80\x9clike a patent, a copyrighted work must be not only original, but new\xe2\x80\x9d, adding,\n\xe2\x80\x9cThat is not the law as is obvious in the case of maps or compendia, where later\nworks will necessarily be anticipated.\xe2\x80\x9d(Sheldon v. Metro-Goldwyn Pictures Corp., 2 Cir., 81\nF.2d 49, 53. See also Ricker v. General Electric Co., 2 Cir., 162 F.2d 141, 142.) All that is\nneeded to satisfy both the Constitution and the statute is that the \xe2\x80\x9cauthor\xe2\x80\x9d\ncontributed something more than a \xe2\x80\x9cmerely trivial\xe2\x80\x9d variation, something\nrecognizably \xe2\x80\x9chis own.\xe2\x80\x9d Originality in this context \xe2\x80\x9cmeans little more than a\nprohibition of actual copying.\xe2\x80\x9d No matter how poor artistically the \xe2\x80\x9cauthor\xe2\x80\x99s\xe2\x80\x9d\naddition, it is enough if it be his own. Bleistein v. Donaldson Lithographing Co., 188 U.S.\n239, 250.\nOn that account, we have often distinguished between the limited protection\naccorded a copyright owner and the extensive protection granted a patent owner. So\nwe have held that \xe2\x80\x9cindependent reproduction of a copyrighted work is not\n\n51\n\n\x0cinfringement\xe2\x80\x9d, (Arnstein v. Edward B. Marks Music Corp., 2 Cir., 82 F.2d 275; Ricker v.\nGeneral Electric Co., 2 Cir., 162 F.2d 141, 142) whereas it is vis a vis a patent.\nCorrelative with the greater immunity of a patentee is the doctrine of anticipation\nwhich does not apply to copyrights: The alleged inventor is chargeable with full\nknowledge of all the prior art, although in fact he may be utterly ignorant of it. The\n\xe2\x80\x9cauthor\xe2\x80\x9d is entitled to a copyright if he independently contrived a work completely\nidentical with what went before; similarly, although he obtains a valid copyright, he\nhas no right to prevent another from publishing a work identical with his, if not\ncopied from his. A patentee, unlike a copyrightee, must not merely produce\nsomething \xe2\x80\x9coriginal\xe2\x80\x9d; he must also be \xe2\x80\x9cthe first inventor or discoverer.\xe2\x80\x9d \xe2\x80\x9cHence it is\npossible to have a plurality of valid copyrights directed to closely identical or even\nidentical works. Moreover, none of them, if independently arrived at without copying,\nwill constitute an infringement of the copyright of the others.\xe2\x80\x9d\nWe consider untenable defendants\xe2\x80\x99 suggestion that plaintiff\xe2\x80\x99s mezzotints could not\nvalidly be copyrighted because they are reproductions of works in the public domain.\nNot only does the Act include \xe2\x80\x9cReproductions of a work of art\xe2\x80\x9d, but \xe2\x80\x94 while\nprohibiting a copyright of \xe2\x80\x9cthe original text of any work \xe2\x80\xa6 in the public domain\xe2\x80\x9d \xe2\x80\x94\nit explicitly provides for the copyrighting of \xe2\x80\x9ctranslations, or other versions of works\nin the public domain\xe2\x80\x9d.\nThe mezzotints were such \xe2\x80\x9cversions.\xe2\x80\x9d They \xe2\x80\x9coriginated\xe2\x80\x9d with those who made them,\nand \xe2\x80\x94 on the trial judge\xe2\x80\x99s findings well supported by the evidence \xe2\x80\x94 amply met the\nstandards imposed by the Constitution and the statute. There is evidence that they\nwere not intended to, and did not, imitate the paintings they reproduced. But even if\ntheir substantial departures from the paintings were inadvertent, the copyrights\nwould be valid. A copyist\xe2\x80\x99s bad eyesight or defective musculature, or a shock caused\nby a clap of thunder, may yield sufficiently distinguishable variations. Having hit\nupon such a variation unintentionally, the \xe2\x80\x9cauthor\xe2\x80\x9d may adopt it as his and copyright\nit.\nAccordingly, defendants\xe2\x80\x99 arguments about the public domain become irrelevant.\nThey could be relevant only in their bearing on the issue of infringement, i.e.,\nwhether the defendants copied the mezzotints. But on the findings, again well\ngrounded in the evidence, we see no possible doubt that defendants, who did\ndeliberately copy the mezzotints, are infringers. For a copyright confers the exclusive\nright to copy the copyrighted work \xe2\x80\x94 a right not to have others copy it.\nNotes and questions\n(1) In Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir.1951) the Second\nCircuit held that a mezzotint based on an original work of art in the public domain was\ncopyrightable under the standards imposed by the Constitution and the Copyright Act. The\nDistrict Court had held that the mezzotints were original because they necessarily embodied\nthe \xe2\x80\x9cindividual conception, judgment and execution by the engraver\xe2\x80\x9d and the Second Circuit\naffirmed on the basis that the mezzotints were a \xe2\x80\x9cdistinguishable variation\xe2\x80\x9d of the public\ndomain originals. The court of appeals said (at 102):\nIt is clear, then, that nothing in the Constitution commands that copyrighted matter\nbe strikingly unique or novel. Accordingly, we were not ignoring the Constitution\n\n52\n\n\x0cwhen we stated that a \xe2\x80\x9ccopy of something in the public domain\xe2\x80\x9d will support a\ncopyright if it is a \xe2\x80\x9cdistinguishable variation\xe2\x80\x9d[.]\n\nApplying this to the case at hand the court said (at 104-105):\nThere is evidence that they were not intended to, and did not, imitate the paintings\nthey reproduced. But even if their substantial departures from the paintings were\ninadvertent, the copyrights would be valid. A copyist\xe2\x80\x99s bad eyesight or defective\nmusculature, or a shock caused by a clap of thunder, may yield sufficiently\ndistinguishable variations. Having hit upon such a variation unintentionally, the\n\xe2\x80\x9cauthor\xe2\x80\x9d may adopt it as his and copyright it.\n\nThe mezzotints were no mere imitations, according to the court, because the very process of\ntheir production must inexorably involved substantial departures from the original \xe2\x80\x93 even if\nthose departures were inadvertent.\n(2) The distinction between originality and novelty was not new to this case. In Sheldon v.\nMetro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936) Judge Learned Hand invokes a vivid, if\nimplausible hypothetical to illustrate the distinction. He said (at 54):\n\xe2\x80\xa6 if by some magic a man who had never known it were to compose anew Keats\xe2\x80\x99s\nOde on a Grecian Urn, he would be an \xe2\x80\x98author,\xe2\x80\x99 and, if he copyrighted it, others\nmight not copy that poem, though they might of course copy Keats\xe2\x80\x99s.\n\n(3) In Fred Fisher, Inc. v. Dillingham, D.C., 298 F. 145 Judge Learned Hand said (at 150)\nAny subsequent person is, of course, free to use all works in the public domain as\nsources for his compositions. No later work, though original, can take that from\nhim. But there is no reason in justice or law why he should not be compelled to\nresort to the earlier works themselves, or why he should be free to use the\ncomposition of another, who himself has not borrowed. If he claims the rights of\nthe public, let him use them; he picks the brains of the copyright owner as much,\nwhether his original composition be old or new. The defendant\xe2\x80\x99s concern lest the\npublic should be shut off from the use of works in the public domain is therefore\nillusory; no one suggests it. That domain is open to all who tread it; not to those\nwho invade the closes of others, however similar.\n\nIs Hand suggesting that it is always improper to copy from a copy of a work in the public\ndomain, or only when the intervening copy contains some new layer of authorship that will\ninvariably be reproduced along with the original public domain content? If the former, then\nthis view obviously cannot be reconciled with Feist v. Rural Telephone (see below).\nFeist\nThe cases addressed so far indicate a fairly relaxed standard of originality or creativity. In\nBurrow Giles, a photograph was held to be sufficiently creative because, although the image\nwas reduced to material form by a mechanical process, the photographer executing that\nprocess had made important creative and artistic choices with respect to lighting, shade and\ncomposition. In Bleistein v. Donaldson Lithographing, Justice Holmes forcefully stated that\ncopyrightability is not a judgment of aesthetic or social value. Low art deployed for\ncommercial purposes merits the same degree of copyright protection as artistic works of\ngenius. In Alfred Bell, the Second Circuit held that even a mezzotint reproduction of a work\nin the public domain was entitled to copyright protection because, in the course of\n\n53\n\n\x0ctranslating the work to a new medium, the artist could not help but create a distinguishable\nvariation.\nIn light of these cases, is there anything that would not be sufficiently creative to merit\ncopyright protection? The Supreme Court answered this question in Feist Publications, Inc. v.\nRural Telephone Service Co., 499 U.S. 340 (1991).\nFeist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)\nJustice O\xe2\x80\x99Connor delivered the opinion of the Court.\nThis case requires us to clarify the extent of copyright protection available to\ntelephone directory white pages.\nI\nRural Telephone Service Company, Inc., is a certified public utility that provides\ntelephone service to several communities in northwest Kansas. It is subject to a state\nregulation that requires all telephone companies operating in Kansas to issue\nannually an updated telephone directory. Accordingly, as a condition of its monopoly\nfranchise, Rural publishes a typical telephone directory, consisting of white pages and\nyellow pages. The white pages list in alphabetical order the names of Rural\xe2\x80\x99s\nsubscribers, together with their towns and telephone numbers. The yellow pages list\nRural\xe2\x80\x99s business subscribers alphabetically by category and feature classified\nadvertisements of various sizes. Rural distributes its directory free of charge to its\nsubscribers, but earns revenue by selling yellow pages advertisements.\nFeist Publications, Inc., is a publishing company that specializes in area-wide\ntelephone directories. Unlike a typical directory, which covers only a particular calling\narea, Feist\xe2\x80\x99s area-wide directories cover a much larger geographical range, reducing\nthe need to call directory assistance or consult multiple directories. The Feist\ndirectory that is the subject of this litigation covers 11 different telephone service\nareas in 15 counties and contains 46,878 white pages listings\xe2\x80\x94compared to Rural\xe2\x80\x99s\napproximately 7,700 listings. Like Rural\xe2\x80\x99s directory, Feist\xe2\x80\x99s is distributed free of\ncharge and includes both white pages and yellow pages. Feist and Rural compete\nvigorously for yellow pages advertising.\nAs the sole provider of telephone service in its service area, Rural obtains subscriber\ninformation quite easily. Persons desiring telephone service must apply to Rural and\nprovide their names and addresses; Rural then assigns them a telephone number.\nFeist is not a telephone company, let alone one with monopoly status, and therefore\nlacks independent access to any subscriber information. To obtain white pages\nlistings for its area-wide directory, Feist approached each of the 11 telephone\ncompanies operating in northwest Kansas and offered to pay for the right to use its\nwhite pages listings.\nOf the 11 telephone companies, only Rural refused to license its listings to Feist.\nRural\xe2\x80\x99s refusal created a problem for Feist, as omitting these listings would have left\na gaping hole in its area-wide directory, rendering it less attractive to potential yellow\npages advertisers. In a decision subsequent to that which we review here, the District\nCourt determined that this was precisely the reason Rural refused to license its\nlistings. The refusal was motivated by an unlawful purpose \xe2\x80\x9cto extend its monopoly\n54\n\n\x0cin telephone service to a monopoly in yellow pages advertising.\xe2\x80\x9d Rural Telephone\nService Co. v. Feist Publications, Inc., 737 F. Supp. 610, 622 (Kan. 1990).\nUnable to license Rural\xe2\x80\x99s white pages listings, Feist used them without Rural\xe2\x80\x99s\nconsent. Feist began by removing several thousand listings that fell outside the\ngeographic range of its area-wide directory, then hired personnel to investigate the\n4,935 that remained. These employees verified the data reported by Rural and sought\nto obtain additional information. As a result, a typical Feist listing includes the\nindividual\xe2\x80\x99s street address; most of Rural\xe2\x80\x99s listings do not. Notwithstanding these\nadditions, however, 1,309 of the 46,878 listings in Feist\xe2\x80\x99s 1983 directory were\nidentical to listings in Rural\xe2\x80\x99s 1982-1983 white pages. Four of these were fictitious\nlistings that Rural had inserted into its directory to detect copying.\nRural sued for copyright infringement in the District Court for the District of\nKansas taking the position that Feist, in compiling its own directory, could not use\nthe information contained in Rural\xe2\x80\x99s white pages. Rural asserted that Feist\xe2\x80\x99s\nemployees were obliged to travel door-to-door or conduct a telephone survey to\ndiscover the same information for themselves. Feist responded that such efforts\nwere economically impractical and, in any event, unnecessary because the\ninformation copied was beyond the scope of copyright protection. The District\nCourt granted summary judgment to Rural, explaining that \xe2\x80\x9ccourts have consistently\nheld that telephone directories are copyrightable\xe2\x80\x9d and citing a string of lower court\ndecisions. In an unpublished opinion, the Court of Appeals for the Tenth Circuit\naffirmed \xe2\x80\x9cfor substantially the reasons given by the district court.\xe2\x80\x9d We granted\ncertiorari, to determine whether the copyright in Rural\xe2\x80\x99s directory protects the names,\ntowns, and telephone numbers copied by Feist.\nII\nA\nThis case concerns the interaction of two well-established propositions. The first is\nthat facts are not copyrightable; the other, that compilations of facts generally are.\nEach of these propositions possesses an impeccable pedigree. That there can be no\nvalid copyright in facts is universally understood. The most fundamental axiom of\ncopyright law is that \xe2\x80\x9cno author may copyright his ideas or the facts he narrates.\xe2\x80\x9d\nHarper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 556 (1985). Rural\nwisely concedes this point, noting in its brief that \xe2\x80\x9cfacts and discoveries, of course,\nare not themselves subject to copyright protection.\xe2\x80\x9d At the same time, however, it is\nbeyond dispute that compilations of facts are within the subject matter of copyright.\nCompilations were expressly mentioned in the Copyright Act of 1909, and again in\nthe Copyright Act of 1976.\nThere is an undeniable tension between these two propositions. Many compilations\nconsist of nothing but raw data\xe2\x80\x94 i.e., wholly factual information not accompanied\nby any original written expression. On what basis may one claim a copyright in such\na work? Common sense tells us that 100 uncopyrightable facts do not magically\nchange their status when gathered together in one place. Yet copyright law seems to\ncontemplate that compilations that consist exclusively of facts are potentially within\nits scope.\n\n55\n\n\x0cThe key to resolving the tension lies in understanding why facts are not\ncopyrightable. The sine qua non of copyright is originality. To qualify for copyright\nprotection, a work must be original to the author. Original, as the term is used in\ncopyright, means only that the work was independently created by the author (as\nopposed to copied from other works), and that it possesses at least some minimal\ndegree of creativity. To be sure, the requisite level of creativity is extremely low; even\na slight amount will suffice. The vast majority of works make the grade quite easily,\nas they possess some creative spark, \xe2\x80\x9cno matter how crude, humble or obvious\xe2\x80\x9d it\nmight be. Originality does not signify novelty; a work may be original even though it\nclosely resembles other works so long as the similarity is fortuitous, not the result of\ncopying. To illustrate, assume that two poets, each ignorant of the other, compose\nidentical poems. Neither work is novel, yet both are original and, hence,\ncopyrightable. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F. 2d 49, 54 (CA2 1936).\nOriginality is a constitutional requirement. The source of Congress\xe2\x80\x99 power to enact\ncopyright laws is Article I, \xc2\xa7 8, cl. 8, of the Constitution, which authorizes Congress\nto \xe2\x80\x9csecur[e] for limited Times to Authors . . . the exclusive Right to their respective\nWritings.\xe2\x80\x9d In two decisions from the late 19th century\xe2\x80\x94The Trade-Mark Cases, 100 U.\nS. 82 (1879); and Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)\xe2\x80\x94this\nCourt defined the crucial terms \xe2\x80\x9cauthors\xe2\x80\x9d and \xe2\x80\x9cwritings.\xe2\x80\x9d In so doing, the Court\nmade it unmistakably clear that these terms presuppose a degree of originality.\nIn The Trade-Mark Cases, the Court addressed the constitutional scope of \xe2\x80\x9cwritings.\xe2\x80\x9d\nFor a particular work to be classified \xe2\x80\x9cunder the head of writings of authors,\xe2\x80\x9d the\nCourt determined, \xe2\x80\x9coriginality is required.\xe2\x80\x9d 100 U.S., at 94. The Court explained that\noriginality requires independent creation plus a modicum of creativity: \xe2\x80\x9cWhile the\nword writings may be liberally construed, as it has been, to include original designs\nfor engraving, prints, &c., it is only such as are original, and are founded in the\ncreative powers of the mind. The writings which are to be protected are the fruits of\nintellectual labor, embodied in the form of books, prints, engravings, and the like.\xe2\x80\x9d Ibid.\n(emphasis in original).\nIn Burrow-Giles, the Court distilled the same requirement from the Constitution\xe2\x80\x99s use\nof the word \xe2\x80\x9cauthors.\xe2\x80\x9d The Court defined \xe2\x80\x9cauthor,\xe2\x80\x9d in a constitutional sense, to\nmean \xe2\x80\x9che to whom anything owes its origin; originator; maker.\xe2\x80\x9d As in The TradeMark Cases, the Court emphasized the creative component of originality. It described\ncopyright as being limited to \xe2\x80\x9coriginal intellectual conceptions of the author,\xe2\x80\x9d, and\nstressed the importance of requiring an author who accuses another of infringement\nto prove \xe2\x80\x9cthe existence of those facts of originality, of intellectual production, of\nthought, and conception.\xe2\x80\x9d\nThe originality requirement articulated in The Trade-Mark Cases and Burrow-Giles\nremains the touchstone of copyright protection today. It is the very \xe2\x80\x9cpremise of\ncopyright law.\xe2\x80\x9d Miller v. Universal City Studios, Inc., 650 F. 2d 1365, 1368 (CA5 1981).\nLeading scholars agree on this point. As one pair of commentators succinctly puts it:\n\xe2\x80\x9cThe originality requirement is constitutionally mandated for all works.\xe2\x80\x9d Patterson &\nJoyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory\nCompilations, 36 UCLA LAW REVIEW 719, 763, n. 155 (1989) (emphasis in original).\nAccord, Nimmer (\xe2\x80\x9coriginality is a statutory as well as a constitutional requirement\xe2\x80\x9d);\n\n56\n\n\x0c(\xe2\x80\x9ca modicum of intellectual labor . . . clearly constitutes an essential constitutional\nelement\xe2\x80\x9d).\nIt is this bedrock principle of copyright that mandates the law\xe2\x80\x99s seemingly disparate\ntreatment of facts and factual compilations. \xe2\x80\x9cNo one may claim originality as to\nfacts.\xe2\x80\x9d This is because facts do not owe their origin to an act of authorship. The\ndistinction is one between creation and discovery: The first person to find and report\na particular fact has not created the fact; he or she has merely discovered its existence.\nTo borrow from Burrow-Giles, one who discovers a fact is not its \xe2\x80\x9cmaker\xe2\x80\x9d or\n\xe2\x80\x9coriginator.\xe2\x80\x9d The discoverer merely finds and records. Census takers, for example,\ndo not \xe2\x80\x9ccreate\xe2\x80\x9d the population figures that emerge from their efforts; in a sense, they\ncopy these figures from the world around them. Census data therefore do not trigger\ncopyright because these data are not \xe2\x80\x9coriginal\xe2\x80\x9d in the constitutional sense. The same\nis true of all facts\xe2\x80\x94scientific, historical, biographical, and news of the day. \xe2\x80\x9c[T]hey\nmay not be copyrighted and are part of the public domain available to every person.\xe2\x80\x9d\nMiller, supra, at 1369.\nFactual compilations, on the other hand, may possess the requisite originality. The\ncompilation author typically chooses which facts to include, in what order to place\nthem, and how to arrange the collected data so that they may be used effectively by\nreaders. These choices as to selection and arrangement, so long as they are made\nindependently by the compiler and entail a minimal degree of creativity, are\nsufficiently original that Congress may protect such compilations through the\ncopyright laws. Thus, even a directory that contains absolutely no protectible written\nexpression, only facts, meets the constitutional minimum for copyright protection if\nit features an original selection or arrangement.\nThis protection is subject to an important limitation. The mere fact that a work is\ncopyrighted does not mean that every element of the work may be protected.\nOriginality remains the sine qua non of copyright; accordingly, copyright protection\nmay extend only to those components of a work that are original to the author. Thus,\nif the compilation author clothes facts with an original collocation of words, he or\nshe may be able to claim a copyright in this written expression. Others may copy the\nunderlying facts from the publication, but not the precise words used to present\nthem. In Harper & Row, for example, we explained that President Ford could not\nprevent others from copying bare historical facts from his autobiography, but that he\ncould prevent others from copying his \xe2\x80\x9csubjective descriptions and portraits of\npublic figures.\xe2\x80\x9d Where the compilation author adds no written expression but rather\nlets the facts speak for themselves, the expressive element is more elusive. The only\nconceivable expression is the manner in which the compiler has selected and\narranged the facts. Thus, if the selection and arrangement are original, these elements\nof the work are eligible for copyright protection. No matter how original the format,\nhowever, the facts themselves do not become original through association.\nThis inevitably means that the copyright in a factual compilation is thin.\nNotwithstanding a valid copyright, a subsequent compiler remains free to use the\nfacts contained in another\xe2\x80\x99s publication to aid in preparing a competing work, so\nlong as the competing work does not feature the same selection and arrangement. As\none commentator explains it: \xe2\x80\x9c[N]o matter how much original authorship the work\ndisplays, the facts and ideas it exposes are free for the taking . . . . [T]he very same\n57\n\n\x0cfacts and ideas may be divorced from the context imposed by the author, and\nrestated or reshuffled by second comers, even if the author was the first to discover\nthe facts or to propose the ideas.\xe2\x80\x9d Ginsburg 1868.\nIt may seem unfair that much of the fruit of the compiler\xe2\x80\x99s labor may be used by\nothers without compensation. As Justice Brennan has correctly observed, however,\nthis is not \xe2\x80\x9csome unforeseen byproduct of a statutory scheme.\xe2\x80\x9d Harper & Row, 471\nU. S., at 589 (dissenting opinion). It is, rather, \xe2\x80\x9cthe essence of copyright,\xe2\x80\x9d and a\nconstitutional requirement. The primary objective of copyright is not to reward the\nlabor of authors, but \xe2\x80\x9c[t]o promote the Progress of Science and useful Arts.\xe2\x80\x9d Art. I, \xc2\xa7\n8, cl. 8. Accord, Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). To\nthis end, copyright assures authors the right to their original expression, but\nencourages others to build freely upon the ideas and information conveyed by a\nwork. This principle, known as the idea/expression or fact/expression dichotomy,\napplies to all works of authorship. As applied to a factual compilation, assuming the\nabsence of original written expression, only the compiler\xe2\x80\x99s selection and arrangement\nmay be protected; the raw facts may be copied at will. This result is neither unfair\nnor unfortunate. It is the means by which copyright advances the progress of science\nand art.\nThis Court has long recognized that the fact/expression dichotomy limits severely\nthe scope of protection in fact-based works. More than a century ago, the Court\nobserved: \xe2\x80\x9cThe very object of publishing a book on science or the useful arts is to\ncommunicate to the world the useful knowledge which it contains. But this object\nwould be frustrated if the knowledge could not be used without incurring the guilt of\npiracy of the book.\xe2\x80\x9d Baker v. Selden, 101 U.S. 99, 103 (1880). We reiterated this point\nin Harper & Row:\n\xe2\x80\x9cNo author may copyright facts or ideas. The copyright is limited to those aspects\nof the work\xe2\x80\x94termed `expression\xe2\x80\x99\xe2\x80\x94that display the stamp of the author\xe2\x80\x99s originality.\n\xe2\x80\x9cCopyright does not prevent subsequent users from copying from a prior author\xe2\x80\x99s\nwork those constituent elements that are not original\xe2\x80\x94for example . . . facts, or\nmaterials in the public domain\xe2\x80\x94as long as such use does not unfairly appropriate\nthe author\xe2\x80\x99s original contributions.\xe2\x80\x9d 471 U.S., at 547-548 (citation omitted).\n\nThis, then, resolves the doctrinal tension: Copyright treats facts and factual\ncompilations in a wholly consistent manner. Facts, whether alone or as part of a\ncompilation, are not original and therefore may not be copyrighted. A factual\ncompilation is eligible for copyright if it features an original selection or arrangement\nof facts, but the copyright is limited to the particular selection or arrangement. In no\nevent may copyright extend to the facts themselves.\nB\nAs we have explained, originality is a constitutionally mandated prerequisite for\ncopyright protection. The Court\xe2\x80\x99s decisions announcing this rule predate the\nCopyright Act of 1909, but ambiguous language in the 1909 Act caused some lower\ncourts temporarily to lose sight of this requirement.\nThe 1909 Act embodied the originality requirement, but not as clearly as it might\nhave. The subject matter of copyright was set out in \xc2\xa7\xc2\xa7 3 and 4 of the Act. Section 4\n\n58\n\n\x0cstated that copyright was available to \xe2\x80\x9call the writings of an author.\xe2\x80\x9d By using the\nwords \xe2\x80\x9cwritings\xe2\x80\x9d and \xe2\x80\x9cauthor\xe2\x80\x9d\xe2\x80\x94the same words used in Article I, \xc2\xa7 8, of the\nConstitution and defined by the Court in The Trade-Mark Cases and Burrow-Giles\xe2\x80\x94the\nstatute necessarily incorporated the originality requirement articulated in the Court\xe2\x80\x99s\ndecisions. It did so implicitly, however, thereby leaving room for error.\nSection 3 was similarly ambiguous. It stated that the copyright in a work protected\nonly \xe2\x80\x9cthe copyrightable component parts of the work.\xe2\x80\x9d It thus stated an important\ncopyright principle, but failed to identify the specific characteristic\xe2\x80\x94originality\xe2\x80\x94that\ndetermined which component parts of a work were copyrightable and which were\nnot.\nMost courts construed the 1909 Act correctly, notwithstanding the less-than-perfect\nstatutory language. They understood from this Court\xe2\x80\x99s decisions that there could be\nno copyright without originality. As explained in the Nimmer treatise:\n\xe2\x80\x9cThe 1909 Act neither defined originality, nor even expressly required that a work\nbe `original\xe2\x80\x99 in order to command protection. However, the courts uniformly\ninferred the requirement from the fact that copyright protection may only be\nclaimed by `authors\xe2\x80\x99. . . . It was reasoned that since an author is `the \xe2\x80\xa6 creator,\noriginator\xe2\x80\x99 it follows that a work is not the product of an author unless the work is\noriginal.\xe2\x80\x9d Nimmer \xc2\xa7 2.01.\n\nBut some courts misunderstood the statute. See, e.g., Leon v. Pacific Telephone &\nTelegraph Co., 91 F. 2d 484 (CA9 1937); Jeweler\xe2\x80\x99s Circular Publishing Co. v. Keystone\nPublishing Co., 281 F. 83 (CA2 1922). These courts ignored \xc2\xa7\xc2\xa7 3 and 4, focusing their\nattention instead on \xc2\xa7 5 of the Act. Section 5, however, was purely technical in\nnature: It provided that a person seeking to register a work should indicate on the\napplication the type of work, and it listed 14 categories under which the work might\nfall. One of these categories was \xe2\x80\x9cbooks, including composite and cyclop\xc3\xa6dic works,\ndirectories, gazetteers, and other compilations.\xe2\x80\x9d \xc2\xa7 5(a). Section 5 did not purport to\nsay that all compilations were automatically copyrightable. Indeed, it expressly\ndisclaimed any such function, pointing out that \xe2\x80\x9cthe subject-matter of copyright is\ndefined in section four.\xe2\x80\x9d Nevertheless, the fact that factual compilations were\nmentioned specifically in \xc2\xa7 5 led some courts to infer erroneously that directories and\nthe like were copyrightable per se, without any further or precise showing of\noriginal\xe2\x80\x94personal\xe2\x80\x94authorship.\nMaking matters worse, these courts developed a new theory to justify the protection\nof factual compilations. Known alternatively as \xe2\x80\x9csweat of the brow\xe2\x80\x9d or \xe2\x80\x9cindustrious\ncollection,\xe2\x80\x9d the underlying notion was that copyright was a reward for the hard work\nthat went into compiling facts. The classic formulation of the doctrine appeared in\nJeweler\xe2\x80\x99s Circular Publishing Co., 281 F., at 88:\n\xe2\x80\x9cThe right to copyright a book upon which one has expended labor in its\npreparation does not depend upon whether the materials which he has collected\nconsist or not of matters which are publici juris, or whether such materials show\nliterary skill or originality, either in thought or in language, or anything more than\nindustrious collection. The man who goes through the streets of a town and puts\ndown the names of each of the inhabitants, with their occupations and their street\nnumber, acquires material of which he is the author\xe2\x80\x9d (emphasis added).\n\n59\n\n\x0cThe \xe2\x80\x9csweat of the brow\xe2\x80\x9d doctrine had numerous flaws, the most glaring being that it\nextended copyright protection in a compilation beyond selection and arrangement\xe2\x80\x94\nthe compiler\xe2\x80\x99s original contributions\xe2\x80\x94to the facts themselves. Under the doctrine,\nthe only defense to infringement was independent creation. A subsequent compiler\nwas \xe2\x80\x9cnot entitled to take one word of information previously published,\xe2\x80\x9d but rather\nhad to \xe2\x80\x9cindependently work out the matter for himself, so as to arrive at the same\nresult from the same common sources of information.\xe2\x80\x9d Id., at 88-89 (internal\nquotation marks omitted). \xe2\x80\x9cSweat of the brow\xe2\x80\x9d courts thereby eschewed the most\nfundamental axiom of copyright law\xe2\x80\x94that no one may copyright facts or ideas.\n\xe2\x80\xa6\nDecisions of this Court applying the 1909 Act make clear that the statute did not\npermit the \xe2\x80\x9csweat of the brow\xe2\x80\x9d approach. The best example is International News\nService v. Associated Press, 248 U. S. 215 (1918). In that decision, the Court stated\nunambiguously that the 1909 Act conferred copyright protection only on those\nelements of a work that were original to the author. International News Service had\nconceded taking news reported by Associated Press and publishing it in its own\nnewspapers. Recognizing that \xc2\xa7 5 of the Act specifically mentioned \xe2\x80\x9c`periodicals,\nincluding newspapers,\xe2\x80\x99\xe2\x80\x9c \xc2\xa7 5(b), the Court acknowledged that news articles were\ncopyrightable. It flatly rejected, however, the notion that the copyright in an article\nextended to the factual information it contained: \xe2\x80\x9cThe news element\xe2\x80\x94 the\ninformation respecting current events contained in the literary production\xe2\x80\x94is not\nthe creation of the writer, but is a report of matters that ordinarily are publici juris; it\nis the history of the day.\xe2\x80\x9d\nWithout a doubt, the \xe2\x80\x9csweat of the brow\xe2\x80\x9d doctrine flouted basic copyright principles.\nThroughout history, copyright law has \xe2\x80\x9crecognized a greater need to disseminate\nfactual works than works of fiction or fantasy.\xe2\x80\x9d Harper & Row, 471 U.S., at 563. But\n\xe2\x80\x9csweat of the brow\xe2\x80\x9d courts took a contrary view; they handed out proprietary\ninterests in facts and declared that authors are absolutely precluded from saving time\nand effort by relying upon the facts contained in prior works. In truth, \xe2\x80\x9cit is just such\nwasted effort that the proscription against the copyright of ideas and facts . . . [is]\ndesigned to prevent.\xe2\x80\x9d Rosemont Enterprises, Inc. v. Random House, Inc., 366 F. 2d 303,\n310 (CA2 1966), cert. denied, 385 U.S. 1009 (1967). \xe2\x80\x9cProtection for the fruits of such\nresearch may in certain circumstances be available under a theory of unfair\ncompetition. But to accord copyright protection on this basis alone distorts basic\ncopyright principles in that it creates a monopoly in public domain materials without\nthe necessary justification of protecting and encouraging the creation of \xe2\x80\x98writings\xe2\x80\x99 by\n\xe2\x80\x98authors.\xe2\x80\x99\xe2\x80\x9d Nimmer \xc2\xa7 3.04.\nC\n\xe2\x80\x9cSweat of the brow\xe2\x80\x9d decisions did not escape the attention of the Copyright Office.\nWhen Congress decided to over-haul the copyright statute and asked the Copyright\nOffice to study existing problems, see Mills Music, Inc. v. Snyder, 469 U.S. 153, 159\n(1985), the Copyright Office promptly recommended that Congress clear up the\nconfusion in the lower courts as to the basic standards of copyrightability. The\nRegister of Copyrights explained in his first report to Congress that \xe2\x80\x9coriginality\xe2\x80\x9d was\na \xe2\x80\x9cbasic requisite\xe2\x80\x9d of copyright under the 1909 Act, but that \xe2\x80\x9cthe absence of any\n\n60\n\n\x0creference to [originality] in the statute seems to have led to misconceptions as to\nwhat is copyrightable matter.\xe2\x80\x9d Report of the Register of Copyrights on the General\nRevision of the U.S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm.\nPrint 1961). The Register suggested making the originality requirement explicit. Ibid.\nCongress took the Register\xe2\x80\x99s advice. In enacting the Copyright Act of 1976,\nCongress dropped the reference to \xe2\x80\x9call the writings of an author\xe2\x80\x9d and replaced it\nwith the phrase \xe2\x80\x9coriginal works of authorship.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102(a). In making explicit\nthe originality requirement, Congress announced that it was merely clarifying existing\nlaw: \xe2\x80\x9cThe two fundamental criteria of copyright protection [are] originality and\nfixation in tangible form . . . . The phrase \xe2\x80\x98original works of authorship,\xe2\x80\x99 which is\npurposely left undefined, is intended to incorporate without change the standard of\noriginality established by the courts under the present [1909] copyright statute.\xe2\x80\x9d\nHouse Report p. 51 (1976) (emphasis added); Senate Report p. 50 (1975) (emphasis\nadded). This sentiment was echoed by the Copyright Office: \xe2\x80\x9cOur intention here is\nto maintain the established standards of originality. . . .\xe2\x80\x9d Supplementary Report of\nthe Register of Copyrights on the General Revision of U.S. Copyright Law, 89th\nCong., 1st Sess., pt. 6, p. 3 (H. Judiciary Comm. Print 1965) (emphasis added).\nTo ensure that the mistakes of the \xe2\x80\x9csweat of the brow\xe2\x80\x9d courts would not be repeated,\nCongress took additional measures. For example, \xc2\xa7 3 of the 1909 Act had stated that\ncopyright protected only the \xe2\x80\x9ccopyrightable component parts\xe2\x80\x9d of a work, but had\nnot identified originality as the basis for distinguishing those component parts that\nwere copyrightable from those that were not. The 1976 Act deleted this section and\nreplaced it with \xc2\xa7 102(b), which identifies specifically those elements of a work for\nwhich copyright is not available: \xe2\x80\x9cIn no case does copyright protection for an\noriginal work of authorship extend to any idea, procedure, process, system, method\nof operation, concept, principle, or discovery, regardless of the form in which it is\ndescribed, explained, illustrated, or embodied in such work.\xe2\x80\x9d Section 102(b) is\nuniversally understood to prohibit any copyright in facts. As with \xc2\xa7 102(a), Congress\nemphasized that \xc2\xa7 102(b) did not change the law, but merely clarified it: \xe2\x80\x9cSection\n102(b) in no way enlarges or contracts the scope of copyright protection under the\npresent law. Its purpose is to restate . . . that the basic dichotomy between expression\nand idea remains unchanged.\xe2\x80\x9d House Report at 57; Senate Report at 54.\nCongress took another step to minimize confusion by deleting the specific mention\nof \xe2\x80\x9cdirectories . . . and other compilations\xe2\x80\x9d in \xc2\xa7 5 of the 1909 Act. As mentioned,\nthis section had led some courts to conclude that directories were copyrightable per\nse and that every element of a directory was protected. In its place, Congress enacted\ntwo new provisions. First, to make clear that compilations were not copyrightable\nper se, Congress provided a definition of the term \xe2\x80\x9ccompilation.\xe2\x80\x9d Second, to make\nclear that the copyright in a compilation did not extend to the facts themselves,\nCongress enacted \xc2\xa7 103.\nThe definition of \xe2\x80\x9ccompilation\xe2\x80\x9d is found in \xc2\xa7 101 of the 1976 Act. It defines a\n\xe2\x80\x9ccompilation\xe2\x80\x9d in the copyright sense as \xe2\x80\x9ca work formed by the collection and\nassembling of preexisting materials or of data that are selected, coordinated, or\narranged in such a way that the resulting work as a whole constitutes an original\nwork of authorship\xe2\x80\x9d (emphasis added).\n\n61\n\n\x0cThe purpose of the statutory definition is to emphasize that collections of facts are\nnot copyrightable per se. It conveys this message through its tripartite structure, as\nemphasized above by the italics. The statute identifies three distinct elements and\nrequires each to be met for a work to qualify as a copyrightable compilation: (1) the\ncollection and assembly of pre-existing material, facts, or data; (2) the selection,\ncoordination, or arrangement of those materials; and (3) the creation, by virtue of the\nparticular selection, coordination, or arrangement, of an \xe2\x80\x9coriginal\xe2\x80\x9d work of\nauthorship.\nAt first glance, the first requirement does not seem to tell us much. It merely\ndescribes what one normally thinks of as a compilation\xe2\x80\x94a collection of pre-existing\nmaterial, facts, or data. What makes it significant is that it is not the sole requirement.\nIt is not enough for copyright purposes that an author collects and assembles facts.\nTo satisfy the statutory definition, the work must get over two additional hurdles. In\nthis way, the plain language indicates that not every collection of facts receives\ncopyright protection. Otherwise, there would be a period after \xe2\x80\x9cdata.\xe2\x80\x9d\nThe third requirement is also illuminating. It emphasizes that a compilation, like any\nother work, is copyrightable only if it satisfies the originality requirement (\xe2\x80\x9can\noriginal work of authorship\xe2\x80\x9d). Although \xc2\xa7 102 states plainly that the originality\nrequirement applies to all works, the point was emphasized with regard to\ncompilations to ensure that courts would not repeat the mistake of the \xe2\x80\x9csweat of the\nbrow\xe2\x80\x9d courts by concluding that fact-based works are treated differently and\nmeasured by some other standard. As Congress explained it, the goal was to \xe2\x80\x9cmake\nplain that the criteria of copyrightable subject matter stated in section 102 apply with\nfull force to works . . . containing preexisting material.\xe2\x80\x9d House Report at 57; Senate\nReport at 55.\nThe key to the statutory definition is the second requirement. It instructs courts that,\nin determining whether a fact-based work is an original work of authorship, they\nshould focus on the manner in which the collected facts have been selected,\ncoordinated, and arranged. This is a straightforward application of the originality\nrequirement. Facts are never original, so the compilation author can claim originality,\nif at all, only in the way the facts are presented. To that end, the statute dictates that\nthe principal focus should be on whether the selection, coordination, and\narrangement are sufficiently original to merit protection.\nNot every selection, coordination, or arrangement will pass muster. This is plain\nfrom the statute. It states that, to merit protection, the facts must be selected,\ncoordinated, or arranged \xe2\x80\x9cin such a way\xe2\x80\x9d as to render the work as a whole original.\nThis implies that some \xe2\x80\x9cways\xe2\x80\x9d will trigger copyright, but that others will not.\nOtherwise, the phrase \xe2\x80\x9cin such a way\xe2\x80\x9d is meaningless and Congress should have\ndefined \xe2\x80\x9ccompilation\xe2\x80\x9d simply as \xe2\x80\x9ca work formed by the collection and assembly of\npreexisting materials or data that are selected, coordinated, or arranged.\xe2\x80\x9d That\nCongress did not do so is dispositive. In accordance with the established principle\nthat a court should give effect, if possible, to every clause and word of a statute, we\nconclude that the statute envisions that there will be some fact-based works in which\nthe selection, coordination, and arrangement are not sufficiently original to trigger\ncopyright protection.\n\n62\n\n\x0cAs discussed earlier, however, the originality requirement is not particularly stringent.\nA compiler may settle upon a selection or arrangement that others have used;\nnovelty is not required. Originality requires only that the author make the selection\nor arrangement independently (i.e., without copying that selection or arrangement\nfrom another work), and that it display some minimal level of creativity. Presumably,\nthe vast majority of compilations will pass this test, but not all will. There remains a\nnarrow category of works in which the creative spark is utterly lacking or so trivial as\nto be virtually nonexistent. See generally Bleistein v. Donaldson Lithographing Co., 188\nU.S. 239, 251 (1903) (referring to \xe2\x80\x9cthe narrowest and most obvious limits\xe2\x80\x9d). Such\nworks are incapable of sustaining a valid copyright.\n\xe2\x80\xa6\nEven if a work qualifies as a copyrightable compilation, it receives only limited\nprotection. This is the point of \xc2\xa7 103 of the Act. Section 103 explains that \xe2\x80\x9c[t]he\nsubject matter of copyright . . . includes compilations,\xe2\x80\x9d \xc2\xa7 103(a), but that copyright\nprotects only the author\xe2\x80\x99s original contributions\xe2\x80\x94not the facts or information\nconveyed:\n\xe2\x80\x9cThe copyright in a compilation . . . extends only to the material contributed by the\nauthor of such work, as distinguished from the preexisting material employed in the\nwork, and does not imply any exclusive right in the preexisting material.\xe2\x80\x9d \xc2\xa7 103(b).\n\nAs \xc2\xa7 103 makes clear, copyright is not a tool by which a compilation author may\nkeep others from using the facts or data he or she has collected. \xe2\x80\x9cThe most\nimportant point here is one that is commonly misunderstood today: copyright. . . has\nno effect one way or the other on the copyright or public domain status of the\npreexisting material.\xe2\x80\x9d H. R. Rep., at 57; S. Rep., at 55. The 1909 Act did not require,\nas \xe2\x80\x9csweat of the brow\xe2\x80\x9d courts mistakenly assumed, that each subsequent compiler\nmust start from scratch and is precluded from relying on research undertaken by\nanother. See, e.g., Jeweler\xe2\x80\x99s Circular Publishing Co., 281 F., at 88-89. Rather, the facts\ncontained in existing works may be freely copied because copyright protects only the\nelements that owe their origin to the compiler\xe2\x80\x94the selection, coordination, and\narrangement of facts.\nIn summary, the 1976 revisions to the Copyright Act leave no doubt that originality,\nnot \xe2\x80\x9csweat of the brow,\xe2\x80\x9d is the touchstone of copyright protection in directories and\nother fact-based works. Nor is there any doubt that the same was true under the\n1909 Act. The 1976 revisions were a direct response to the Copyright Office\xe2\x80\x99s\nconcern that many lower courts had misconstrued this basic principle, and Congress\nemphasized repeatedly that the purpose of the revisions was to clarify, not change,\nexisting law. The revisions explain with painstaking clarity that copyright requires\noriginality, \xc2\xa7 102(a); that facts are never original, \xc2\xa7 102(b); that the copyright in a\ncompilation does not extend to the facts it contains, \xc2\xa7 103(b); and that a compilation\nis copyrightable only to the extent that it features an original selection, coordination,\nor arrangement, \xc2\xa7 101.\nThe 1976 revisions have proven largely successful in steering courts in the right\ndirection. A good example is Miller v. Universal City Studios, Inc., 650 F. 2d, at 13691370: \xe2\x80\x9cA copyright in a directory . . . is properly viewed as resting on the originality\nof the selection and arrangement of the factual material, rather than on the\n\n63\n\n\x0cindustriousness of the efforts to develop the information. Copyright protection does\nnot extend to the facts themselves, and the mere use of information contained in a\ndirectory without a substantial copying of the format does not constitute\ninfringement\xe2\x80\x9d (citation omitted). Additionally, the Second Circuit, which almost 70\nyears ago issued the classic formulation of the \xe2\x80\x9csweat of the brow\xe2\x80\x9d doctrine in\nJeweler\xe2\x80\x99s Circular Publishing Co., has now fully repudiated the reasoning of that decision.\nSee, e.g., Financial Information, Inc. v. Moody\xe2\x80\x99s Investors Service, Inc., 808 F. 2d 204, 207\n(CA2 1986), cert. denied, 484 U. S. 820 (1987); Financial Information, Inc. v. Moody\xe2\x80\x99s\nInvestors Service, Inc., 751 F. 2d 501, 510 (CA2 1984) (Newman, J., concurring);\nHoehling v. Universal City Studios, Inc., 618 F. 2d 972, 979 (CA2 1980). Even those\nscholars who believe that \xe2\x80\x9cindustrious collection\xe2\x80\x9d should be rewarded seem to\nrecognize that this is beyond the scope of existing copyright law.\nIII\nThere is no doubt that Feist took from the white pages of Rural\xe2\x80\x99s directory a\nsubstantial amount of factual information. At a minimum, Feist copied the names,\ntowns, and telephone numbers of 1,309 of Rural\xe2\x80\x99s subscribers. Not all copying,\nhowever, is copyright infringement. To establish infringement, two elements must be\nproven: (1) ownership of a valid copyright, and (2) copying of constituent elements\nof the work that are original. See Harper & Row, 471 U.S., at 548. The first element is\nnot at issue here; Feist appears to concede that Rural\xe2\x80\x99s directory, considered as a\nwhole, is subject to a valid copyright because it contains some foreword text, as well\nas original material in its yellow pages advertisements.\nThe question is whether Rural has proved the second element. In other words, did\nFeist, by taking 1,309 names, towns, and telephone numbers from Rural\xe2\x80\x99s white\npages, copy anything that was \xe2\x80\x9coriginal\xe2\x80\x9d to Rural? Certainly, the raw data does not\nsatisfy the originality requirement. Rural may have been the first to discover and\nreport the names, towns, and telephone numbers of its subscribers, but this data\ndoes not owe its origin to Rural. Rather, these bits of information are\nuncopyrightable facts; they existed before Rural reported them and would have\ncontinued to exist if Rural had never published a telephone directory. The originality\nrequirement rules out protecting names, addresses, and telephone numbers of which\nthe plaintiff by no stretch of the imagination could be called the author.\nRural essentially concedes the point by referring to the names, towns, and telephone\nnumbers as \xe2\x80\x9cpreexisting material.\xe2\x80\x9d Section 103(b) states explicitly that the copyright\nin a compilation does not extend to \xe2\x80\x9cthe preexisting material employed in the work.\xe2\x80\x9d\nThe question that remains is whether Rural selected, coordinated, or arranged these\nuncopyrightable facts in an original way. As mentioned, originality is not a stringent\nstandard; it does not require that facts be presented in an innovative or surprising\nway. It is equally true, however, that the selection and arrangement of facts cannot be\nso mechanical or routine as to require no creativity whatsoever. The standard of\noriginality is low, but it does exist. As this Court has explained, the Constitution\nmandates some minimal degree of creativity, see The Trade-Mark Cases, 100 U.S., at\n94; and an author who claims infringement must prove \xe2\x80\x9cthe existence of . . .\nintellectual production, of thought, and conception.\xe2\x80\x9d Burrow-Giles, supra, at 59-60.\n\n64\n\n\x0cThe selection, coordination, and arrangement of Rural\xe2\x80\x99s white pages do not satisfy\nthe minimum constitutional standards for copyright protection. As mentioned at the\noutset, Rural\xe2\x80\x99s white pages are entirely typical. Persons desiring\xe2\x80\x99 telephone service in\nRural\xe2\x80\x99s service area fill out an application and Rural issues them a telephone number.\nIn preparing its white pages, Rural simply takes the data provided by its subscribers\nand lists it alphabetically by surname. The end product is a garden-variety white\npages directory, devoid of even the slightest trace of creativity.\nRural\xe2\x80\x99s selection of listings could not be more obvious: It publishes the most basic\ninformation\xe2\x80\x94name, town, and telephone number\xe2\x80\x94about each person who applies\nto it for telephone service. This is \xe2\x80\x9cselection\xe2\x80\x9d of a sort, but it lacks the modicum of\ncreativity necessary to transform mere selection into copyrightable expression. Rural\nexpended sufficient effort to make the white pages directory useful, but insufficient\ncreativity to make it original.\nWe note in passing that the selection featured in Rural\xe2\x80\x99s white pages may also fail the\noriginality requirement for another reason. Feist points out that Rural did not truly\n\xe2\x80\x9cselect\xe2\x80\x9d to publish the names and telephone numbers of its subscribers; rather, it was\nrequired to do so by the Kansas Corporation Commission as part of its monopoly\nfranchise. Accordingly, one could plausibly conclude that this selection was dictated\nby state law, not by Rural.\nNor can Rural claim originality in its coordination and arrangement of facts. The\nwhite pages do nothing more than list Rural\xe2\x80\x99s subscribers in alphabetical order. This\narrangement may, technically speaking, owe its origin to Rural; no one disputes that\nRural undertook the task of alphabetizing the names itself. But there is nothing\nremotely creative about arranging names alphabetically in a white pages directory. It\nis an age-old practice, firmly rooted in tradition and so commonplace that it has\ncome to be expected as a matter of course. It is not only unoriginal, it is practically\ninevitable. This time-honored tradition does not possess the minimal creative spark\nrequired by the Copyright Act and the Constitution.\nWe conclude that the names, towns, and telephone numbers copied by Feist were\nnot original to Rural and therefore were not protected by the copyright in Rural\xe2\x80\x99s\ncombined white and yellow pages directory. As a constitutional matter, copyright\nprotects only those constituent elements of a work that possess more than a de\nminimis quantum of creativity. Rural\xe2\x80\x99s white pages, limited to basic subscriber\ninformation and arranged alphabetically, fall short of the mark. As a statutory matter,\n17 U. S. C. \xc2\xa7 101 does not afford protection from copying to a collection of facts\nthat are selected, coordinated, and arranged in a way that utterly lacks originality.\nGiven that some works must fail, we cannot imagine a more likely candidate. Indeed,\nwere we to hold that Rural\xe2\x80\x99s white pages pass muster, it is hard to believe that any\ncollection of facts could fail.\nBecause Rural\xe2\x80\x99s white pages lack the requisite originality, Feist\xe2\x80\x99s use of the listings\ncannot constitute infringement. This decision should not be construed as demeaning\nRural\xe2\x80\x99s efforts in compiling its directory, but rather as making clear that copyright\nrewards originality, not effort. As this Court noted more than a century ago, \xe2\x80\x9cgreat\npraise may be due to the plaintiffs for their industry and enterprise in publishing this\n\n65\n\n\x0cpaper, yet the law does not contemplate their being rewarded in this way.\xe2\x80\x9d Baker v.\nSelden, 101 U. S., at 105.\nThe judgment of the Court of Appeals is Reversed.\nJustice Blackmun concurs in the judgment.\nNotes and questions\n(1) In Feist Publications, Inc. v. Rural Telephone Service Co., 499 US 340 (1991), a unanimous\nSupreme Court held that originality is a Constitutional and statutory prerequisite for\ncopyright protection: indeed, (at 345) \xe2\x80\x9cThe sine qua non of copyright is originality.\xe2\x80\x9d\nOriginality, as the term is used in copyright law, means that the work was independently\ncreated by the author and possesses \xe2\x80\x9cat least some minimal degree of creativity.\xe2\x80\x9d\n(2) Why does the Court reject the labor theory of copyright reflected in \xe2\x80\x9csweat of the brow\ndecisions\xe2\x80\x9d or \xe2\x80\x9cindustrious collection,\xe2\x80\x9d seen in cases such as the Second Circuit\xe2\x80\x99s 1922\ndecision in Jeweler\xe2\x80\x99s Circular v. Keystone Publishing?\n(3) What is creativity? What degree of creativity is required to make a work original?\n(4) What does Feist tell us about the copyrightability of facts and collections of facts?\n(5) Was the alphabetical listing of names and addressed unprotectable because it was not\ncreative, because it was functional, or both?\n(6) How broadly should the courts understand the Constitutional term \xe2\x80\x9cwritings\xe2\x80\x9d? Should\nwe treat writings simply limiting copyright protection to anything fixed in material form, or\ndoes it mean something more than that? Arguably, writing means not just fixed, but also\nsomething that the ability to express. If so, then where do we draw the line between writing\nthat humans can read and instructions to a machine that produce an effect, like the\ninstructions a computer gives to a processor or the instructions that a piano roll gives to a\nplayer piano?\nThe implications of thin copyright after Feist\nEven if Rural Telephone\xe2\x80\x99s white pages had somehow demonstrated the necessary level of\ncreativity to obtain copyright protection, it may have still been possible to copy all of the\nrelevant information in that directory without infringing the copyright.\nJustice O\xe2\x80\x99Connor explained that any resulting copyright in a factual compilation was\ninevitably thin. The facts in a compilation can be recycled and organized with a different\nselection and arrangement with no resulting copyright liability. Justice O\xe2\x80\x99Connor explained\n(at 349)\nThis inevitably means that the copyright in a factual compilation is thin.\nNotwithstanding a valid copyright, a subsequent compiler remains free to use the\nfacts contained in another\xe2\x80\x99s publication to aid in preparing a competing work, so\nlong as the competing work does not feature the same selection and arrangement.\n\nThis is also made clear in the Copyright Act of 1976 itself. The subject matter of copyright\nincludes compilations, but that copyright protects only the author\xe2\x80\x99s original contributions\xe2\x80\x94\nnot the facts or information conveyed.\n\n66\n\n\x0c17 U.S. Code \xc2\xa7 103(b).\nThe copyright in a compilation . . . extends only to the material contributed by the\nauthor of such work, as distinguished from the preexisting material employed in the\nwork, and does not imply any exclusive right in the preexisting material.\nAs Section 103 makes clear, copyright is not a tool by which a compilation author may keep\nothers from using the facts or data he or she has collected.\nThe Monkey Selfie and Computer Generated Works\n[Placeholder]\nOriginality and Derivative Works\n[Placeholder]\n\n67\n\n\x0c3. THE EXCLUSION OF FACTS, IDEAS, FUNCTIONS, AND PROCESSES FROM\nCOPYRIGHT PROTECTION\nIntroduction\nCopyright law draws a distinction between original expression, which is protectable, and\neverything else, which is unprotectable. There are subtle differences of opinion as to what\nexactly belongs in the \xe2\x80\x9ceverything else\xe2\x80\x9d bucket, but there is near universal consensus that\ncopyright does not protect ideas, facts, functions, or processes. The distinction between\ncopyrightable expression and uncopyrightable ideas, facts, functions, or processes is often\nshorthanded to the \xe2\x80\x9cidea-expression dichotomy\xe2\x80\x9d or the \xe2\x80\x9cidea-expression distinction.\xe2\x80\x9d At its\nsimplest, the idea-expression distinction ensures that a copyright owner cannot prevent the\nordinary reader from extracting and reproducing the facts or ideas embodied in the work.\nThe uncopyrightability of ideas, facts, functions, and processes and the parallel exclusion of\nthose elements from the scope of copyright protection in expressive works are core\nprinciples of copyright law.\n\nInternational Context\nGiven that understanding the exclusion of ideas, facts, functions, or processes from the\nambit of copyright protection is fundamental to understanding copyright law, it is somewhat\nsurprising that the Berne Convention has almost nothing to say about it.\nBerne Convention Article 2\n(1) The expression \xe2\x80\x9cliterary and artistic works\xe2\x80\x9d shall include every production in the\nliterary, scientific and artistic domain, whatever may be the mode or form of its\nexpression \xe2\x80\xa6\n(8) The protection of this Convention shall not apply to news of the day or to\nmiscellaneous facts having the character of mere items of press information.\n\nThe Berne Convention makes no reference to the idea-expression distinction, nor to the\nconcept of functionality. However it does define protectable copyright subject matter in\nArticle 2(1) as \xe2\x80\x9cevery production in the literary, scientific and artistic domain, whatever may\nbe the mode or form of its expression.\xe2\x80\x9d Defining the scope of literary and artistic works by\nreference to expression certainly suggests that the object of copyright law is expression and\nnot the information conveyed in that expression, but the implication could be clearer.\nThe argument in favor of an implied idea-expression distinction is further reinforced by\nBerne Article 2(8) which excludes the \xe2\x80\x9cnews of the day\xe2\x80\x9d and \xe2\x80\x9cmiscellaneous facts having the\ncharacter of the item suppress information\xe2\x80\x9d from the scope of copyright protection. But\nmore importantly, whatever ambiguity was left in the Berne Convention was resolved in\n1994 with the adoption of the TRIPs Agreement.\nTRIPs Agreement Article 9(2)\nCopyright protection shall extend to expressions and not to ideas, procedures,\nmethods of operation or mathematical concepts as such.\n\nThis succinct provision constitutes both a mandatory inclusion vis-\xc3\xa0-vis expression and a\nmandatory exclusion vis-\xc3\xa0-vis ideas, procedures, methods of operation and mathematical\n68\n\n\x0cconcepts. TRIPs Article 9(2) reflects the universal near-universal acceptance of the ideaexpression distinction, but it does not follow that every jurisdiction understands where the\nlines should be drawn between protectable and unprotectable subject matter in the same way.\n\nThe idea-expression distinction and levels of generality\nOne important aspect of the idea-expression distinction to be aware of is the level of\ngenerality at which allegations of unauthorized copying should be assessed.\nCopyright protection does not extend to general themes, basic plot devices, conventions of\nthe genre etc. So, for example, the copyright in the James Bond novels and movies does not\npreempt the entire genre of a spy thriller. Other movie studios are perfectly entitled to\nrecount the exploits of a thrill-seeking, womanizing spy with expensive tastes who rarely\nfollows orders. However, you don\xe2\x80\x99t need to copy every line of the James Bond screenplay to\ninfringe the copyright in that work. A lot of copyright litigation boils down to the question\nof exactly where on the continuum between ideas and expression the line should be drawn.\nThe classic statement on the idea expression distinction and the difficulty of focusing on the\ncorrect level of generality appears in Nichols v. Universal Pictures, a decision by the influential\nAmerican jurist, Judge Learned Hand in 1930.\nIn a perceptive article about copyright cases from the silent film era, Silent Similarity (2014),\nJessica Litman recounts some of the background to the Nichols case. Anne Nichols was the\nauthor of hit Broadway play, Abie\xe2\x80\x99s Irish Rose. In 1925, Universal Pictures offered to buy the\nfilm rights to Abie\xe2\x80\x99s Irish Rose, but Nichols refused. Two years later she sold the film rights\nto the company that would become Paramount Pictures in a deal that could have been worth\nas much as $1 million (in 1927 dollars!). The resulting film was a commercial success. Not to\nbe dissuaded, Universal acquired the rights to another play and purported to use it as the\nbasis for \xe2\x80\x9cThe Cohens and Kellys.\xe2\x80\x9d Perhaps tellingly, Universal advertised and advertised The\nCohens and Kellys as an \xe2\x80\x9cAbie\xe2\x80\x99s Irish Rose for the screen.\xe2\x80\x9d21\nLitman points out that it is easy to miss that fact that The Cohens and Kellys was a silent movie.\nThe judgment does not mention it, presumably because all films were silent in the 1920s, but\nthe fact is important because a silent film are mostly comprised of pictures and stage plays\nare entirely comprised of words. Thus, the only way a silent film could ever infringe the\ncopyrighted script for a stage play is by virtue of similarities at a certain level of abstraction.\nLitman explains why this made the plaintiff\xe2\x80\x99s case so difficult: \xe2\x80\x9cBy casting Nichols\xe2\x80\x99s case as\none proved by similarities in the distilled essence of the two works, rather than in particular\nexpressive details, Nichols\xe2\x80\x99s lawyers invited the conclusion that the works were similar only\nat too high a level of abstraction.\xe2\x80\x9d22\nNichols v. Universal Pictures 45 F.2d 119 (2d Cir. 1930)\nCircuit Judge Learned Hand.\n\nMark Rose, Criticism in the Courtroom: Nichols v Universal (1930) and the Determination of Infringement, 5 W.I.P.O J.\n65, 67 (2013).\n21\n\n22\n\nJessica Litman, Silent Similarity, 14 CHI.-KENT J. INTELL. PROP. 11, 40 (2014).\n\n69\n\n\x0cThe plaintiff is the author of a play, \xe2\x80\x9cAbie\xe2\x80\x99s Irish Rose,\xe2\x80\x9d which it may be assumed\nwas properly copyrighted under section five, subdivision (d), of the Copyright Act.\nThe defendant produced publicly a motion picture play, \xe2\x80\x9cThe Cohens and The\nKellys,\xe2\x80\x9d which the plaintiff alleges was taken from it. As we think the defendant\xe2\x80\x99s\nplay too unlike the plaintiff\xe2\x80\x99s to be an infringement, we may assume, arguendo, that\nin some details the defendant used the plaintiff\xe2\x80\x99s play, as will subsequently appear,\nthough we do not so decide. It therefore becomes necessary to give an outline of the\ntwo plays.\n\xe2\x80\x9cAbie\xe2\x80\x99s Irish Rose\xe2\x80\x9d presents a Jewish family living in prosperous circumstances in\nNew York. The father, a widower, is in business as a merchant, in which his son and\nonly child helps him. The boy has philandered with young women, who to his\nfather\xe2\x80\x99s great disgust have always been Gentiles, for he is obsessed with a passion\nthat his daughter-in-law shall be an orthodox Jewess. When the play opens the son,\nwho has been courting a young Irish Catholic girl, has already married her secretly\nbefore a Protestant minister, and is concerned to soften the blow for his father, by\nsecuring a favorable impression of his bride, while concealing her faith and race. To\naccomplish this he introduces her to his father at his home as a Jewess, and lets it\nappear that he is interested in her, though he conceals the marriage. The girl\nsomewhat reluctantly falls in with the plan; the father takes the bait, becomes\ninfatuated with the girl, concludes that they must marry, and assumes that of course\nthey will, if he so decides. He calls in a rabbi, and prepares for the wedding according\nto the Jewish rite.\nMeanwhile the girl\xe2\x80\x99s father, also a widower, who lives in California, and is as intense\nin his own religious antagonism as the Jew, has been called to New York, supposing\nthat his daughter is to marry an Irishman and a Catholic. Accompanied by a priest,\nhe arrives at the house at the moment when the marriage is being celebrated, but too\nlate to prevent it, and the two fathers, each infuriated by the proposed union of his\nchild to a heretic, fall into unseemly and grotesque antics. The priest and the rabbi\nbecome friendly, exchange trite sentiments about religion, and agree that the match\nis good. Apparently out of abundant caution, the priest celebrates the marriage for a\nthird time, while the girl\xe2\x80\x99s father is inveigled away. The second act closes with each\nfather, still outraged, seeking to find some way by which the union, thus trebly\ninsured, may be dissolved.\nThe last act takes place about a year later, the young couple having meanwhile been\nabjured by each father, and left to their own resources. They have had twins, a boy\nand a girl, but their fathers know no more than that a child has been born. At\nChristmas each, led by his craving to see his grandchild, goes separately to the young\nfolks\xe2\x80\x99 home, where they encounter each other, each laden with gifts, one for a boy,\nthe other for a girl. After some slapstick comedy, depending upon the insistence of\neach that he is right about the sex of the grandchild, they become reconciled when\nthey learn the truth, and that each child is to bear the given name of a grandparent.\nThe curtain falls as the fathers are exchanging amenities, and the Jew giving evidence\nof an abatement in the strictness of his orthodoxy.\n\xe2\x80\x9cThe Cohens and The Kellys\xe2\x80\x9d presents two families, Jewish and Irish, living side by\nside in the poorer quarters of New York in a state of perpetual enmity. The wives in\nboth cases are still living, and share in the mutual animosity, as do two small sons,\n70\n\n\x0cand even the respective dogs. The Jews have a daughter, the Irish a son; the Jewish\nfather is in the clothing business; the Irishman is a policeman. The children are in\nlove with each other, and secretly marry, apparently after the play opens. The Jew,\nbeing in great financial straits, learns from a lawyer that he has fallen heir to a large\nfortune from a great-aunt, and moves into a great house, fitted luxuriously. Here he\nand his family live in vulgar ostentation, and here the Irish boy seeks out his Jewish\nbride, and is chased away by the angry father. The Jew then abuses the Irishman over\nthe telephone, and both become hysterically excited. The extremity of his feelings\nmakes the Jew sick, so that he must go to Florida for a rest, just before which the\ndaughter discloses her marriage to her mother.\nOn his return the Jew finds that his daughter has borne a child; at first he suspects\nthe lawyer, but eventually learns the truth and is overcome with anger at such a low\nalliance. Meanwhile, the Irish family who have been forbidden to see the grandchild,\ngo to the Jew\xe2\x80\x99s house, and after a violent scene between the two fathers in which the\nJew disowns his daughter, who decides to go back with her husband, the Irishman\ntakes her back with her baby to his own poor lodgings. The lawyer, who had hoped\nto marry the Jew\xe2\x80\x99s daughter, seeing his plan foiled, tells the Jew that his fortune really\nbelongs to the Irishman, who was also related to the dead woman, but offers to\nconceal his knowledge, if the Jew will share the loot. This the Jew repudiates, and,\nleaving the astonished lawyer, walks through the rain to his enemy\xe2\x80\x99s house to\nsurrender the property. He arrives in great dejection, tells the truth, and abjectly\nturns to leave. A reconciliation ensues, the Irishman agreeing to share with him\nequally. The Jew shows some interest in his grandchild, though this is at most a\nminor motive in the reconciliation, and the curtain falls while the two are in their\ncups, the Jew insisting that in the firm name for the business, which they are to carry\non jointly, his name shall stand first.\nIt is of course essential to any protection of literary property, whether at commonlaw or under the statute, that the right cannot be limited literally to the text, else a\nplagiarist would escape by immaterial variations. That has never been the law, but, as\nsoon as literal appropriation ceases to be the test, the whole matter is necessarily at\nlarge, so that, as was recently well said by a distinguished judge, the decisions cannot\nhelp much in a new case. When plays are concerned, the plagiarist may excise a\nseparate scene; or he may appropriate part of the dialogue. Then the question is\nwhether the part so taken is \xe2\x80\x9csubstantial,\xe2\x80\x9d and therefore not a \xe2\x80\x9cfair use\xe2\x80\x9d of the\ncopyrighted work; it is the same question as arises in the case of any other\ncopyrighted work. But when the plagiarist does not take out a block in situ, but an\nabstract of the whole, decision is more troublesome. Upon any work, and especially\nupon a play, a great number of patterns of increasing generality will fit equally well,\nas more and more of the incident is left out. The last may perhaps be no more than\nthe most general statement of what the play is about, and at times might consist only\nof its title; but there is a point in this series of abstractions where they are no longer\nprotected, since otherwise the playwright could prevent the use of his \xe2\x80\x9cideas,\xe2\x80\x9d to\nwhich, apart from their expression, his property is never extended. Nobody has ever\nbeen able to fix that boundary, and nobody ever can. In some cases the question has\nbeen treated as though it were analogous to lifting a portion out of the copyrighted\nwork; but the analogy is not a good one, because, though the skeleton is a part of the\nbody, it pervades and supports the whole. In such cases we are rather concerned\n71\n\n\x0cwith the line between expression and what is expressed. As respects plays, the\ncontroversy chiefly centers upon the characters and sequence of incident, these being\nthe substance.\nWe did not in Dymow v. Bolton, 11 F. (2d) 690, hold that a plagiarist was never liable\nfor stealing a plot; that would have been flatly against our rulings in Dam v. Kirk La\nShelle Co., 175 F. 902, and Stodart v. Mutual Film Co., 249 F. 513, affirming my decision\nin (D.C.) 249 F. 507; neither of which we meant to overrule. We found the plot of\nthe second play was too different to infringe, because the most detailed pattern,\ncommon to both, eliminated so much from each that its content went into the public\ndomain; and for this reason we said, \xe2\x80\x9cthis mere subsection of a plot was not\nsusceptible of copyright.\xe2\x80\x9d But we do not doubt that two plays may correspond in\nplot closely enough for infringement. How far that correspondence must go is\nanother matter. Nor need we hold that the same may not be true as to the characters,\nquite independently of the \xe2\x80\x9cplot\xe2\x80\x9d proper, though, as far as we know, such a case has\nnever arisen. If Twelfth Night were copyrighted, it is quite possible that a second\ncomer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it\nwould not be enough that for one of his characters he cast a riotous knight who kept\nwassail to the discomfort of the household, or a vain and foppish steward who\nbecame amorous of his mistress. These would be no more than Shakespeare\xe2\x80\x99s \xe2\x80\x9cideas\xe2\x80\x9d\nin the play, as little capable of monopoly as Einstein\xe2\x80\x99s Doctrine of Relativity, or\nDarwin\xe2\x80\x99s theory of the Origin of Species. It follows that the less developed the\ncharacters, the less they can be copyrighted; that is the penalty an author must bear\nfor marking them too indistinctly.\nIn the two plays at bar we think both as to incident and character, the defendant\ntook no more \xe2\x80\x94 assuming that it took anything at all \xe2\x80\x94 than the law allowed. The\nstories are quite different. One is of a religious zealot who insists upon his child\xe2\x80\x99s\nmarrying no one outside his faith; opposed by another who is in this respect just like\nhim, and is his foil. Their difference in race is merely an obbligato to the main theme,\nreligion. They sink their differences through grandparental pride and affection. In the\nother, zealotry is wholly absent; religion does not even appear. It is true that the\nparents are hostile to each other in part because they differ in race; but the marriage\nof their son to a Jew does not apparently offend the Irish family at all, and it\nexacerbates the existing animosity of the Jew, principally because he has become rich,\nwhen he learns it. They are reconciled through the honesty of the Jew and the\ngenerosity of the Irishman; the grandchild has nothing whatever to do with it. The\nonly matter common to the two is a quarrel between a Jewish and an Irish father, the\nmarriage of their children, the birth of grandchildren and a reconciliation.\nIf the defendant took so much from the plaintiff, it may well have been because her\namazing success seemed to prove that this was a subject of enduring popularity.\nEven so, granting that the plaintiff\xe2\x80\x99s play was wholly original, and assuming that\nnovelty is not essential to a copyright, there is no monopoly in such a background.\nThough the plaintiff discovered the vein, she could not keep it to herself; so defined,\nthe theme was too generalized an abstraction from what she wrote. It was only a part\nof her \xe2\x80\x9cideas.\xe2\x80\x9d\nNor does she fare better as to her characters. It is indeed scarcely credible that she\nshould not have been aware of those stock figures, the low comedy Jew and\n72\n\n\x0cIrishman. The defendant has not taken from her more than their prototypes have\ncontained for many decades. If so, obviously so to generalize her copyright, would\nallow her to cover what was not original with her. But we need not hold this as\nmatter of fact, much as we might be justified. Even though we take it that she\ndevised her figures out of her brain de novo, still the defendant was within its rights.\nThere are but four characters common to both plays, the lovers and the fathers. The\nlovers are so faintly indicated as to be no more than stage properties. They are loving\nand fertile; that is really all that can be said of them, and anyone else is quite within\nhis rights if he puts loving and fertile lovers in a play of his own, wherever he gets\nthe cue. The plaintiff\xe2\x80\x99s Jew is quite unlike the defendant\xe2\x80\x99s. His obsession is his\nreligion, on which depends such racial animosity as he has. He is affectionate, warm\nand patriarchal. None of these fit the defendant\xe2\x80\x99s Jew, who shows affection for his\ndaughter only once, and who has none but the most superficial interest in his\ngrandchild. He is tricky, ostentatious and vulgar, only by misfortune redeemed into\nhonesty. Both are grotesque, extravagant and quarrelsome; both are fond of display;\nbut these common qualities make up only a small part of their simple pictures, no\nmore than any one might lift if he chose. The Irish fathers are even more unlike; the\nplaintiff\xe2\x80\x99s a mere symbol for religious fanaticism and patriarchal pride, scarcely a\ncharacter at all. Neither quality appears in the defendant\xe2\x80\x99s, for while he goes to get\nhis grandchild, it is rather out of a truculent determination not to be forbidden, than\nfrom pride in his progeny. For the rest he is only a grotesque hobbledehoy, used for\nlow comedy of the most conventional sort, which any one might borrow, if he\nchanced not to know the exemplar.\nThe defendant argues that the case is controlled by my decision in Fisher v. Dillingham\n(D.C.) 298 F. 145. Neither my brothers nor I wish to throw doubt upon the doctrine\nof that case, but it is not applicable here. We assume that the plaintiff\xe2\x80\x99s play is\naltogether original, even to an extent that in fact it is hard to believe. We assume\nfurther that, so far as it has been anticipated by earlier plays of which she knew\nnothing, that fact is immaterial. Still, as we have already said, her copyright did not\ncover everything that might be drawn from her play; its content went to some extent\ninto the public domain. We have to decide how much, and while we are as aware as\nany one that the line, whereever it is drawn, will seem arbitrary, that is no excuse for\nnot drawing it; it is a question such as courts must answer in nearly all cases.\nWhatever may be the difficulties a priori, we have no question on which side of the\nline this case falls. A comedy based upon conflicts between Irish and Jews, into\nwhich the marriage of their children enters, is no more susceptible of copyright than\nthe outline of Romeo and Juliet.\nThe plaintiff has prepared an elaborate analysis of the two plays, showing a\n\xe2\x80\x9cquadrangle\xe2\x80\x9d of the common characters, in which each is represented by the\nemotions which he discovers. She presents the resulting parallelism as proof of\ninfringement, but the adjectives employed are so general as to be quite useless. Take\nfor example the attribute of \xe2\x80\x9clove\xe2\x80\x9d ascribed to both Jews. The plaintiff has depicted\nher father as deeply attached to his son, who is his hope and joy; not so, the\ndefendant, whose father\xe2\x80\x99s conduct is throughout not actuated by any affection for\nhis daughter, and who is merely once overcome for the moment by her distress\nwhen he has violently dismissed her lover. \xe2\x80\x9cAnger\xe2\x80\x9d covers emotions aroused by\n\n73\n\n\x0cquite different occasions in each case; so do \xe2\x80\x9canxiety,\xe2\x80\x9d \xe2\x80\x9cdespondency\xe2\x80\x9d and \xe2\x80\x9cdisgust.\xe2\x80\x9d\nIt is unnecessary to go through the catalogue for emotions are too much colored by\ntheir causes to be a test when used so broadly. This is not the proper approach to a\nsolution; it must be more ingenuous, more like that of a spectator, who would rely\nupon the complex of his impressions of each character.\nWe cannot approve the length of the record, which was due chiefly to the use of\nexpert witnesses. Argument is argument whether in the box or at the bar, and its\nproper place is the last. The testimony of an expert upon such issues, especially his\ncross-examination, greatly extends the trial and contributes nothing which cannot be\nbetter heard after the evidence is all submitted. It ought not to be allowed at all; and\nwhile its admission is not a ground for reversal, it cumbers the case and tends to\nconfusion, for the more the court is led into the intricacies of dramatic craftsmanship,\nthe less likely it is to stand upon the firmer, if more na\xc3\xafve, ground of its considered\nimpressions upon its own perusal. We hope that in this class of cases such evidence\nmay in the future be entirely excluded, and the case confined to the actual issues; that\nis, whether the copyrighted work was original, and whether the defendant copied it,\nso far as the supposed infringement is identical.\nDecree affirmed.\nNotes and questions\n(1) Nichols v. Universal Pictures 45 F.2d 119 (2d Cir. 1930) provides a canonical explanation of\nwhy the scope of copyright goes beyond literal cut-and-paste infringement and of the\nproblems courts will face in drawing a line between ideas and their expression in cases of\nnon-literal infringement. Judge Hand says (at 121):\nIt is of course essential to any protection of literary property, whether at commonlaw or under the statute, that the right cannot be limited literally to the text, else a\nplagiarist would escape by immaterial variations. That has never been the law, but, as\nsoon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that,\nas was recently well said by a distinguished judge, the decisions cannot help much in\na new case. (emphasis added)\n\n(2) Hand continues (at 121) with the classic statement of the abstraction problem in\ncopyright law:\nUpon any work, and especially upon a play, a great number of patterns of increasing\ngenerality will fit equally well, as more and more of the incident is left out. The last\nmay perhaps be no more than the most general statement of what the play is about,\nand at times might consist only of its title; but there is a point in this series of\nabstractions where they are no longer protected, since otherwise the playwright\ncould prevent the use of his \xe2\x80\x9cideas,\xe2\x80\x9d to which, apart from their expression, his\nproperty is never extended. Nobody has ever been able to fix that boundary, and\nnobody ever can.\n\n(3) Is Hand really suggesting that drawing a line between ideas and their expression is a\npointless endeavor when he says: \xe2\x80\x9cNobody has ever been able to fix that boundary [between\nidea and expression], and nobody ever can\xe2\x80\x9d? If so, how do we reconcile that with his\ncomment later in the case (at 122):\n\n74\n\n\x0cWe have to decide how much, and while we are as aware as any one that the line,\nwhereever it is drawn, will seem arbitrary, that is no excuse for not drawing it; it is a\nquestion such as courts must answer in nearly all cases. Whatever may be the\ndifficulties a priori, we have no question on which side of the line this case falls.\n(emphasis added)\n\nThe exclusion of facts, ideas, functions, and processes in the United\nStates\nBaker v. Selden, 101 US 99 (1880)\nMr. Justice Bradley delivered the opinion of the court.\nCharles Selden, the testator of the complainant in this case, in the year 1859 took the\nrequisite steps for obtaining the copyright of a book, entitled \xe2\x80\x9cSelden\xe2\x80\x99s Condensed\nLedger, or Book-keeping Simplified,\xe2\x80\x9d the object of which was to exhibit and explain\na peculiar system of book-keeping. In 1860 and 1861, he took the copyright of\nseveral other books, containing additions to and improvements upon the said system.\nThe bill of complaint was filed against the defendant, Baker, for an alleged\ninfringement of these copyrights. The latter, in his answer, denied that Selden was\nthe author or designer of the books, and denied the infringement charged, and\ncontends on the argument that the matter alleged to be infringed is not a lawful\nsubject of copyright.\nThe parties went into proofs, and the various books of the complainant, as well as\nthose sold and used by the defendant, were exhibited before the examiner, and\nwitnesses were examined on both sides. A decree was rendered for the complainant,\nand the defendant appealed.\nThe book or series of books of which the complainant claims the copyright consists\nof an introductory essay explaining the system of book-keeping referred to, to which\nare annexed certain forms or blanks, consisting of ruled lines, and headings,\nillustrating the system and showing how it is to be used and carried out in practice.\nThis system effects the same results as book-keeping by double entry; but, by a\npeculiar arrangement of columns and headings, presents the entire operation, of a\nday, a week, or a month, on a single page, or on two pages facing each other, in an\naccount-book.\n\n75\n\n\x0cFigure 1. Baker\xe2\x80\x99s Form\n\nFigure 2. Selden\xe2\x80\x99s Form\n\nThe defendant uses a similar plan so far as results are concerned; but makes a\ndifferent arrangement of the columns, and uses different headings. If the\ncomplainant\xe2\x80\x99s testator had the exclusive right to the use of the system explained in\nhis book, it would be difficult to contend that the defendant does not infringe it,\nnotwithstanding the difference in his form of arrangement; but if it be assumed that\nthe system is open to public use, it seems to be equally difficult to contend that the\n\n76\n\n\x0cbooks made and sold by the defendant are a violation of the copyright of the\ncomplainant\xe2\x80\x99s book considered merely as a book explanatory of the system. Where\nthe truths of a science or the methods of an art are the common property of the\nwhole world, any author has the right to express the one, or explain and use the\nother, in his own way. As an author, Selden explained the system in a particular way.\nIt may be conceded that Baker makes and uses account-books arranged on\nsubstantially the same system; but the proof fails to show that he has violated the\ncopyright of Selden\xe2\x80\x99s book, regarding the latter merely as an explanatory work; or\nthat he has infringed Selden\xe2\x80\x99s right in any way, unless the latter became entitled to an\nexclusive right in the system.\nThe evidence of the complainant is principally directed to the object of showing that\nBaker uses the same system as that which is explained and illustrated in Selden\xe2\x80\x99s\nbooks. It becomes important, therefore, to determine whether, in obtaining the\ncopyright of his books, he secured the exclusive right to the use of the system or\nmethod of book-keeping which the said books are intended to illustrate and explain.\nIt is contended that he has secured such exclusive right, because no one can use the\nsystem without using substantially the same ruled lines and headings which he has\nappended to his books in illustration of it. In other words, it is contended that the\nruled lines and headings, given to illustrate the system, are a part of the book, and, as\nsuch, are secured by the copyright; and that no one can make or use similar ruled\nlines and headings, or ruled lines and headings made and arranged on substantially\nthe same system, without violating the copyright. And this is really the question to be\ndecided in this case. Stated in another form, the question is, whether the exclusive\nproperty in a system of book-keeping can be claimed, under the law of copyright, by\nmeans of a book in which that system is explained? The complainant\xe2\x80\x99s bill, and the\ncase made under it, are based on the hypothesis that it can be.\nIt cannot be pretended, and indeed it is not seriously urged, that the ruled lines of the\ncomplainant\xe2\x80\x99s account-book can be claimed under any special class of objects, other\nthan books, named in the law of copyright existing in 1859. The law then in force\nwas that of 1831, and specified only books, maps, charts, musical compositions,\nprints, and engravings. An account-book, consisting of ruled lines and blank columns,\ncannot be called by any of these names unless by that of a book.\nThere is no doubt that a work on the subject of book-keeping, though only\nexplanatory of well-known systems, may be the subject of a copyright; but, then, it is\nclaimed only as a book. Such a book may be explanatory either of old systems, or of\nan entirely new system; and, considered as a book, as the work of an author,\nconveying information on the subject of book-keeping, and containing detailed\nexplanations of the art, it may be a very valuable acquisition to the practical\nknowledge of the community. But there is a clear distinction between the book, as\nsuch, and the art which it is intended to illustrate. The mere statement of the\nproposition is so evident, that it requires hardly any argument to support it. The\nsame distinction may be predicated of every other art as well as that of book-keeping.\nA treatise on the composition and use of medicines, be they old or new; on the\nconstruction and use of ploughs, or watches, or churns; or on the mixture and\napplication of colors for painting or dyeing; or on the mode of drawing lines to\nproduce the effect of perspective, \xe2\x80\x94 would be the subject of copyright; but no one\n\n77\n\n\x0cwould contend that the copyright of the treatise would give the exclusive right to the\nart or manufacture described therein. The copyright of the book, if not pirated from\nother works, would be valid without regard to the novelty, or want of novelty, of its\nsubject-matter. The novelty of the art or thing described or explained has nothing to\ndo with the validity of the copyright. To give to the author of the book an exclusive\nproperty in the art described therein, when no examination of its novelty has ever\nbeen officially made, would be a surprise and a fraud upon the public. That is the\nprovince of letters-patent, not of copyright. The claim to an invention or discovery\nof an art or manufacture must be subjected to the examination of the Patent Office\nbefore an exclusive right therein can be obtained; and it can only be secured by a\npatent from the government.\nThe difference between the two things, letters-patent and copyright, may be\nillustrated by reference to the subjects just enumerated. Take the case of medicines.\nCertain mixtures are found to be of great value in the healing art. If the discoverer\nwrites and publishes a book on the subject (as regular physicians generally do), he\ngains no exclusive right to the manufacture and sale of the medicine; he gives that to\nthe public. If he desires to acquire such exclusive right, he must obtain a patent for\nthe mixture as a new art, manufacture, or composition of matter. He may copyright\nhis book, if he pleases; but that only secures to him the exclusive right of printing\nand publishing his book. So of all other inventions or discoveries.\nThe copyright of a book on perspective, no matter how many drawings and\nillustrations it may contain, gives no exclusive right to the modes of drawing\ndescribed, though they may never have been known or used before. By publishing\nthe book, without getting a patent for the art, the latter is given to the public. The\nfact that the art described in the book by illustrations of lines and figures which are\nreproduced in practice in the application of the art, makes no difference. Those\nillustrations are the mere language employed by the author to convey his ideas more\nclearly. Had he used words of description instead of diagrams (which merely stand in\nthe place of words), there could not be the slightest doubt that others, applying the\nart to practical use, might lawfully draw the lines and diagrams which were in the\nauthor\xe2\x80\x99s mind, and which he thus described by words in his book.\nThe copyright of a work on mathematical science cannot give to the author an\nexclusive right to the methods of operation which he propounds, or to the diagrams\nwhich he employs to explain them, so as to prevent an engineer from using them\nwhenever occasion requires. The very object of publishing a book on science or the\nuseful arts is to communicate to the world the useful knowledge which it contains.\nBut this object would be frustrated if the knowledge could not be used without\nincurring the guilt of piracy of the book. And where the art it teaches cannot be used\nwithout employing the methods and diagrams used to illustrate the book, or such as\nare similar to them, such methods and diagrams are to be considered as necessary\nincidents to the art, and given therewith to the public; not given for the purpose of\npublication in other works explanatory of the art, but for the purpose of practical\napplication.\nOf course, these observations are not intended to apply to ornamental designs, or\npictorial illustrations addressed to the taste. Of these it may be said, that their form is\ntheir essence, and their object, the production of pleasure in their contemplation.\n78\n\n\x0cThis is their final end. They are as much the product of genius and the result of\ncomposition, as are the lines of the poet or the historian\xe2\x80\x99s periods. On the other\nhand, the teachings of science and the rules and methods of useful art have their\nfinal end in application and use; and this application and use are what the public\nderive from the publication of a book which teaches them. But as embodied and\ntaught in a literary composition or book, their essence consists only in their\nstatement. This alone is what is secured by the copyright. The use by another of the\nsame methods of statement, whether in words or illustrations, in a book published\nfor teaching the art, would undoubtedly be an infringement of the copyright.\nRecurring to the case before us, we observe that Charles Selden, by his books,\nexplained and described a peculiar system of book-keeping, and illustrated his\nmethod by means of ruled lines and blank columns, with proper headings on a page,\nor on successive pages. Now, whilst no one has a right to print or publish his book,\nor any material part thereof, as a book intended to convey instruction in the art, any\nperson may practise and use the art itself which he has described and illustrated\ntherein. The use of the art is a totally different thing from a publication of the book\nexplaining it. The copyright of a book on book-keeping cannot secure the exclusive\nright to make, sell, and use account-books prepared upon the plan set forth in such\nbook. Whether the art might or might not have been patented, is a question which is\nnot before us. It was not patented, and is open and free to the use of the public. And,\nof course, in using the art, the ruled lines and headings of accounts must necessarily\nbe used as incident to it.\nThe plausibility of the claim put forward by the complainant in this case arises from\na confusion of ideas produced by the peculiar nature of the art described in the\nbooks which have been made the subject of copyright. In describing the art, the\nillustrations and diagrams employed happen to correspond more closely than usual\nwith the actual work performed by the operator who uses the art. Those illustrations\nand diagrams consist of ruled lines and headings of accounts; and it is similar ruled\nlines and headings of accounts which, in the application of the art, the book-keeper\nmakes with his pen, or the stationer with his press; whilst in most other cases the\ndiagrams and illustrations can only be represented in concrete forms of wood, metal,\nstone, or some other physical embodiment. But the principle is the same in all. The\ndescription of the art in a book, though entitled to the benefit of copyright, lays no\nfoundation for an exclusive claim to the art itself. The object of the one is\nexplanation; the object of the other is use. The former may be secured by copyright.\nThe latter can only be secured, if it can be secured at all, by letters-patent.\nThe case of Cobbett v. Woodward (Law Rep. 14 Eq. 407) was a claim to copyright in a\ncatalogue of furniture which the publisher had on sale in his establishment,\nillustrated with many drawings of furniture and decorations. The defendants, being\ndealers in the same business, published a similar book, and copied many of the\nplaintiff\xe2\x80\x99s drawings, though it was shown that they had for sale the articles\nrepresented thereby. The court held that these drawings were not subjects of\ncopyright. Lord Romilly, M.R., said:\n\xe2\x80\x9cThis is a mere advertisement for the sale of particular articles which any one might\nimitate, and any one might advertise for sale. If a man not being a vendor of any of\nthe articles in question were to publish a work for the purpose of informing the\n\n79\n\n\x0cpublic of what was the most convenient species of articles for household furniture,\nor the most graceful species of decorations for articles of home furniture, what they\nought to cost, and where they might be bought, and were to illustrate his work with\ndesigns of each article he described, \xe2\x80\x94 such a work as this could not be pirated with\nimpunity, and the attempt to do so would be stopped by the injunction of the Court\nof Chancery; yet if it were done with no such object, but solely for the purpose of\nadvertising particular articles for sale, and promoting the private trade of the\npublisher by the sale of articles which any other person might sell as well as the first\nadvertiser, and if in fact it contained little more than an illustrated inventory of the\ncontents of a warehouse, I know of no law which, while it would not prevent the\nsecond advertiser from selling the same articles, would prevent him from using the\nsame advertisement; provided he did not in such advertisement by any device\nsuggest that he was selling the works and designs of the first advertiser.\xe2\x80\x9d\n\nAnother case, that of Page v. Wisden (20 L.T.N.S. 435), which came before ViceChancellor Malins in 1869, has some resemblance to the present. There a copyright\nwas claimed in a cricket scoring-sheet, and the Vice-Chancellor held that it was not a\nfit subject for copyright, partly because it was not new, but also because \xe2\x80\x9cto say that\na particular mode of ruling a book constituted an object for a copyright is absurd.\xe2\x80\x9d\nThese cases, if not precisely in point, come near to the matter in hand, and, in our\nview, corroborate the general proposition which we have laid down.\nIn Drury v. Ewing (1 Bond, 540), which is much relied on by the complainant, a\ncopyright was claimed in a chart of patterns for cutting dresses and basques for\nladies, and coats, jackets, &c., for boys. It is obvious that such designs could only be\nprinted and published for information, and not for use in themselves. Their practical\nuse could only be exemplified in cloth on the tailor\xe2\x80\x99s board and under his shears; in\nother words, by the application of a mechanical operation to the cutting of cloth in\ncertain patterns and forms. Surely the exclusive right to this practical use was not\nreserved to the publisher by his copyright of the chart. Without undertaking to say\nwhether we should or should not concur in the decision in that case, we think it\ncannot control the present.\nThe conclusion to which we have come is, that blank account-books are not the\nsubject of copyright; and that the mere copyright of Selden\xe2\x80\x99s book did not confer\nupon him the exclusive right to make and use account-books, ruled and arranged as\ndesignated by him and described and illustrated in said book.\nThe decree of the Circuit Court must be reversed, and the cause remanded with\ninstructions to dismiss the complainant\xe2\x80\x99s bill; and it is\nSo ordered.\nNotes and questions\n(1) In Baker v. Selden 101 U.S. 99 (1879), the Supreme Court famously held that copyright in\nan explanatory text on bookkeeping gave the author no exclusive rights to the novel system\nof accounting disclosed therein. As the Court explained at (105):\nThe description of the art in a book, though entitled to the benefit of copyright, lays\nno foundation for an exclusive claim to the art itself.\n\n80\n\n\x0c(2) Baker v. Selden is often thought of as an illustration of the line between idea and\nexpression, but the forms at the back of Selden\xe2\x80\x99s book were not uncopyrightable because\nthey were too abstract or generic; they were uncopyrightable because they embodied a\nfunctional system. Read in this light, Baker is a case about merger, specifically the merger of\nfunction and expression. The merger doctrine is discussed in more detail below.\n(3) The principle that copyright in an expressive work does not give the author any rights in\nthe facts, ideas, or methods of operation communicated in that work is longstanding at\ncommon law and was expressly incorporated into the 1976 revision of the Copyright Act.\n17 U.S. Code \xc2\xa7 102(b)\nIn no case does copyright protection for an original work of authorship extend to\nany idea, procedure, process, system, method of operation, concept, principle, or\ndiscovery, regardless of the form in which it is described, explained, illustrated, or\nembodied in such a work.\n\nHow much of Section 102(b) can be traced directly back to Baker v. Selden?\n(4) Copyright law clearly distinguishes between facts and the expression of facts, providing\nno protection for the former and only limited protection for the latter. Recall that in Feist v.\nRural Telephone, the Supreme Court ruled that copying listings from a telephone directory did\nnot infringe the copyright in that directory because the information itself was not\ncopyrightable. In Feist, the Court described the uncopyrightability of facts as \xe2\x80\x9cuniversally\nunderstood\xe2\x80\x9d and the \xe2\x80\x9cmost fundamental axiom of copyright law.\xe2\x80\x9d It explained this feature\nof copyright law in terms of the requirement of originality (at 345, 347):\nThe sine qua non of copyright is originality. To qualify for copyright protection, a\nwork must be original to the author. \xe2\x80\xa6\nIt is this bedrock principle of copyright that mandates the law\xe2\x80\x99s seemingly disparate\ntreatment of facts and factual compilations. No one may claim originality as to facts.\nThis is because facts do not owe their origin to an act of authorship. The distinction\nis one between creation and discovery: The first person to find and report a\nparticular fact has not created the fact; he or she has merely discovered its\nexistence.\n\nDoes the idea-expression distinction apply the same way to facts as it does to ideas? How\nshould we treat false facts? Is the fact that someone\xe2\x80\x99s opinion is X the same as fact X for\ncopyright law purposes?\nRationales for the idea-expression distinction\nWhy does copyright law draw a distinction between protectable expression and\nunprotectable ideas, facts, functions, and processes? The longstanding distinction between\nprotectable expression and unprotectable facts and ideas is an essential part of the balance of\ncopyright law. The distinction ensures that protection of the expressive elements of the\nauthor\xe2\x80\x99s work does not deny subsequent authors the ability to make their own contributions\nby adding to, reusing, or reinterpreting the facts and ideas embodied in the original work.\nThe essential idea behind copyright is that subsequent authors may not compete with the\ncopyright owner by offering her original expression to the public as a substitute for the\ncopyright owner\xe2\x80\x99s work, but they are free to compete with their own expression of the same\nfacts, concepts, and ideas.\n\n81\n\n\x0cThe idea-expression distinction is essential for any copyright system that aims to foster a\nvibrant and creative intellectual ecosystem. In the United States, it is also constitutionally\nrequired. As the Supreme Court explained in Harper & Row, \xe2\x80\x9ccopyright\xe2\x80\x99s idea/expression\ndichotomy strikes a definitional balance between the First Amendment and the Copyright\nAct by permitting free communication of facts while still protecting an author\xe2\x80\x99s\nexpression.\xe2\x80\x9d23 The Court later added, in Eldred v. Ashcroft, that the idea-expression distinction\nis one of copyright\xe2\x80\x99s \xe2\x80\x9cbuilt-in First Amendment accommodations\xe2\x80\x9d and that as a result of the\nidea-expression distinction \xe2\x80\x9cevery idea, theory, and fact in a copyrighted work becomes\ninstantly available for public exploitation at the moment of publication.\xe2\x80\x9d24\nRationales for the Exclusion of Functionality from Copyright Protection\nThere are different fields of intellectual property law, each of which is directed to protecting\nparticular interests and addressing particular problems. Briefly, copyright protects original\nexpression, utility patents grant rights in relation to useful inventions, design patents protect\nthe ornamental features of useful objects or articles of manufacture, and trademark law\nprotects marks or signs that convey the source of goods or services.\nTo illustrate more concretely, consider a new bottle designed to pour specific liquids more\nevenly and also to look more attractive. The pouring function of the bottle design could\nconceivably be a new and useful invention (utility patent), the graceful shape of the bottle\ncould be aesthetically appealing (design patent, copyright sculpture), and the shape could be\ndistinctive, such that consumers understand that bottles of this shape are associated with a\nparticular beverage seller (trademark). In addition, the way the bottle is made could be\nvaluable trade secret.\nThe most problematic area of overlap relates to functionality. Utility patents confer the\nbroadest possible set of exclusive rights (the exclusive right to make, use, and sell the\nclaimed invention), but they are difficult to obtain, short in duration, and usually narrow in\nscope. Patents must be novel and non-obvious compared to the prior art. Utility patents last\nfor 20 years from the date of application and they are only infringed if the \xe2\x80\x9caccused device\xe2\x80\x9d\nfeatures every single element of the relevant patent claim. In contrast to utility patents,\ncopyright protects a work of authorship from the moment of its creation.\nMoreover patents are subject to examination to ensure they meet demanding standards with\nrespect to novelty, inventiveness, utility, written description, and enablement. In contrast,\nalthough certain additional rights come with registration, trademark law protects distinctive\nsigns from the moment of adoption and it protects trade dress (and descriptive signs) from\nthe moment it comes to be understood by the public as a sign of origin. Trademark rights\ncontinue as long as the trademark is being used to signify a source of origin. Copyright lasts\nfor the life of the author plus 70 years.\nDesign patents are a peculiar hybrid of copyright, trademark, and patent law. Design patents\nrequire examination, but the examination threshold is so low in practice as to resemble a\nregistration system. In theory, design patents only protect the ornamental features of a\nproduct and not its functional attributes. This is similar to the way trademark law protects\ntrade dress\xe2\x80\x94the design of a product can amount to protectable trade dress, but that\n23\n\nHarper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985).\n\n24\n\nEldred v. Ashcroft, 537 US 186, 291 (2003)\n\n82\n\n\x0cprotection covers only those aspects of a design that signal source to consumers, and the law\nrefuses protection for functional design features even if they signal source.\nShould the law allow overlapping protection?\nIt would be going to far to suggest that the law should never allow any overlaps between the\ndifferent regimes of IP but we should begin with the assumption that the different fields of\nIP are different for a reason\xe2\x80\x94each reflects a different set of policies and trade-offs. In\ngeneral, patent-like protection of function should come from patent law; trademark-like\nprotection of brand, reputation, and signaling to consumers should come from trademark\nlaw; etc. Even if occasionally different aspects of a single object cross boundaries from one\nfield to the next, that does not mean that trademark law should give copyright-like\nprotection of expression, that design patents should be used to police consumer confusion,\nor that copyright law should be used to confer patent-like rights of exclusion with respect to\nfunction and utility.\nUtility patents are a significant exception to the norm of free competition. Although IP\nregimes can and do sometimes overlap, it is vital that regimes in which rights are easier to\nobtain and/or longer lasting are not used to achieve a kind of backdoor patent protection.25\nTo this end, every other regime has doctrines designed to deny protection of functionality.26\nThe barriers between utility patents and other regimes need to carefully maintained, whereas\noverlaps between non-utility regimes present less fundamental concerns.\nThe Supreme Court made a particularly strong statement in this regard in Baker v. Selden, 101\nU.S. 99 (1879) (at 102):\nThe novelty of the art or thing described or explained has nothing to do with the\nvalidity of the copyright. To give to the author of the book an exclusive property in\nthe art described therein, when no examination of its novelty has ever been officially\nmade, would be a surprise and a fraud upon the public. That is the province of letterspatent, not of copyright. The claim to an invention or discovery of an art or manufacture\nmust be subjected to the examination of the Patent Office before an exclusive right\ntherein can be obtained; and it can only be secured by a patent from the government.\n(emphasis added)\n\nSection 102(b) of the Copyright Act\n17 U.S. Code \xc2\xa7 102\n(a) Copyright protection subsists, in accordance with this title, in original works of\nauthorship fixed in any tangible medium of expression, now known or later\ndeveloped, from which they can be perceived, reproduced, or otherwise\nSee generally, Viva R. Moffat, Mutant Copyrights and Backdoor Patents: The Problem of Overlapping Intellectual\nProperty Protection, 19 BERKELEY TECH. L.J. 1473 (2004)\n25\n\nThe most prominent case differentiating patents from trademarks is TrafFix Devices, Inc. v. Marketing Displays,\nInc., 532 U.S. 23, 28-35 (2001) (elaborating on trademark law\xe2\x80\x99s statutory prohibition on protecting functional\nmatter, and the existence of a utility patent on that matter being strong evidence of such functionality);\nBuccafusco and Lemley call these \xe2\x80\x9cfunctionality screens\xe2\x80\x9d. Note also that patent law preempts state laws that\nseek to protect unpatentable inventions. Sears, Roebuck & Co. v. Sears Fin. Network, 576 F. Supp. 857 (D.D.C.\n1983); Tiffany & Co. v. Costco Wholesale Corp., 127 F. Supp. 3d 241 (S.D.N.Y. 2015); Bonito Boats, Inc. v.\nThunder Craft Boats, Inc., 489 U.S. 141 (1989)\n26\n\n83\n\n\x0ccommunicated, either directly or with the aid of a machine or device. Works of\nauthorship include the following categories:\n(1) literary works;\n(2) musical works, including any accompanying words;\n(3) dramatic works, including any accompanying music;\n(4) pantomimes and choreographic works;\n(5) pictorial, graphic, and sculptural works;\n(6) motion pictures and other audiovisual works;\n(7) sound recordings; and\n(8) architectural works.\n(b) In no case does copyright protection for an original work of authorship extend\nto any idea, procedure, process, system, method of operation, concept, principle, or\ndiscovery, regardless of the form in which it is described, explained, illustrated, or\nembodied in such work.\n\nSection 102(a) of the US copyright act provides the copyright subsists in original works of\nauthorship fixed in any tangible medium of expression, and then proceeds to list eight\ncategories of works of authorship. Section 102(b) of the Copyright Act of 1976 embodies\nthe approach that the Supreme Court took in Baker v. Selden. Section 102(b) provides that in\nno case does copyright protection \xe2\x80\x9cextend to any idea, procedure, process, system, method of\noperation, concept, principle, or discovery.\xe2\x80\x9d\nHow to Read Section 102(b)\nSome commentators treat Baker v. Selden as confined to the idea-expression distinction, but a\nmore careful reading shows that the case was as much to do with the exclusion of\nfunctionality from copyright subject matter and copyright protection as it was the distinction\nbetween ideas and their expression.27 Likewise, some courts and commentators have treated\nSection 102(b) as synonymous with the idea-expression distinction, and no more. A fair\nreading of Baker v. Selden, and even a cursory reading of Section 102(b) show these courts\nand commentators to be in error.28\nBaker v. Selden is obviously not just about the exclusion of ideas from copyright subject\nmatter and Section 102(b) contains many words that are not easily equated with ideas.\nSection 102(b) applies to ideas as a general category, as well as the more specific\nsubcategories of concepts and principles. The reference in 102(b) to \xe2\x80\x9cdiscovery\xe2\x80\x9d includes\nfacts, but it could also be a subset of ideas in the sense of the discovery of principles or\nphilosophical and scientific concepts. But there are key words in the statute that don\xe2\x80\x99t have\nmuch to do with facts or ideas. Section 102(b) also excludes procedures, processes, systems, and\nmethods of operation\xe2\x80\x94these words must mean something.\n\nPamela Samuelson, The Story of Baker v. Selden: Sharpening the Distinction Between Authorship and Invention at 18092 in INTELLECTUAL PROPERTY STORIES (Jane C. Ginsburg & Rochelle Cooper Dreyfuss, eds. 2006).\n27\n\n28\n\nProfessor Pamela Samuelson has made this point in a number of articles.\n\n84\n\n\x0cSection 102(b) is not merely a restatement of the common law distinction between ideas and\ntheir expression; it is also a restatement of the common law or exclusion of procedures and\nmethods of operation from the scope of copyright protection.29\nHow to Apply Section 102(b)\nApplying Section 102(b) faithfully while preserving meaningful copyright protection can be\nquite challenging certain contexts.\nFor literary works, the non-protection of ideas is mostly just a feature of the level of\nsimilarity required to establish infringement. If B is similar to A in terms of ideas, but not in\nthe expression or manifestation of those ideas, then we say that B is not an infringing copy\nof A. In other words, B might be similar to A on one level, but it is not substantially similar to\nA in any relevant sense.\nHowever, sometimes idea and expression closely intertwined. In rare cases in which there is\nvirtually complete overlap between original expression and unprotectable facts, ideas, or\nmethods, courts must choose between protecting original expression and constraining\nimportant freedoms. The merger doctrine holds that the freedom of facts, ideas, functions, and\nmethods wins out.\nAlso, copyright extends far beyond classic literary works. The first United States Copyright\nAct, in 1790, protected only \xe2\x80\x9cmaps, charts, and books.\xe2\x80\x9d30 But even then, maps were clearly\nboth ornamental and functional. Copyright today protects computer software, architecture,\nsculptures, and certain compilations of data; many of these works raise difficult issues about\nseparating idea and function from expression. Many of these works do something, as well as\nsay something.\nBikram\xe2\x80\x99s Yoga College of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir.\n2015)\nCircuit Judge Wardlaw\nWe must decide whether a sequence of twenty-six yoga poses and two breathing\nexercises developed by Bikram Choudhury and described in his 1979 book, Bikram\xe2\x80\x99s\nBeginning Yoga Class, is entitled to copyright protection. This question implicates a\nfundamental principle underlying constitutional and statutory copyright protection\n\xe2\x80\x94 the idea/expression dichotomy. Because copyright protection is limited to the\nexpression of ideas, and does not extend to the ideas themselves, the Bikram Yoga\nSequence is not a proper subject of copyright protection.\nI. Factual and Procedural History\nThe Indian practice and philosophy of yoga date back thousands of years. See Linda\nSparrowe, Yoga 9 (2002). Derived from ancient Hindu scriptures, including the\nBhagavad Gita, the practice of yoga teaches students to attain spiritual fulfillment\nthrough control of the mind and body. See Stefanie Syman, The Subtle Body: The\nPamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection, 85 TEX. L.\nREV. 1921 (2007).\n29\n\nSee Act of May 31, 1790, ch. 15, 1 Stat. 124 (entitled \xe2\x80\x9cAn Act for the encouragement of learning\xe2\x80\x9d) (repealed\n1802).\n30\n\n85\n\n\x0cStory of Yoga in America 4 (2010). Yoga has evolved into a diverse set of spiritual,\nphilosophical, and physical disciplines. Some students practice yoga to transcend the\nphysical body and unite with divine powers; others focus on improving strength,\nflexibility, and overall physical fitness.\nThe history of yoga in the United States reflects its wide-ranging appeal. Some of\nyoga\xe2\x80\x99s first American adherents included nineteenth-century transcendentalists, such\nas Henry David Thoreau and Ralph Waldo Emerson, who were fascinated by yoga\xe2\x80\x99s\napproach to achieving enlightenment. In the early twentieth century, yoga grew more\npopular as scientists and physicians began to study the physical benefits of the\npractice.\nIn 1971, Bikram Choudhury, the self-proclaimed \xe2\x80\x98Yogi to the stars,\xe2\x80\x9d arrived in\nBeverly Hills, California. He soon became a central figure in the growing popularity\nof yoga in the United States. Born and raised in Calcutta, India, Choudhury began\nstudying yoga at age four and learned hundreds of traditional Hatha yoga \xe2\x80\x9casanas,\xe2\x80\x9d\nor individual poses. Hatha yoga places particular emphasis on the physical\ncomponents of yoga. Choudhury developed a sequence of twenty-six asanas and two\nbreathing exercises, arranged in a particular order, which he calls the \xe2\x80\x9cSequence.\xe2\x80\x9d See\nBikram Choudhury, Bikram\xe2\x80\x99s Beginning Yoga Class (1979). Choudhury opened his\nown studio, where he began offering \xe2\x80\x9cBikram Yoga\xe2\x80\x9d classes. In a Bikram Yoga class,\nthe Sequence is practiced over the course of ninety minutes, to a series of\ninstructions (the \xe2\x80\x9cDialogue\xe2\x80\x9d), in a room heated to 105 degrees Fahrenheit to\nsimulate Choudhury\xe2\x80\x99s native Indian climate.\nChoudhury popularized the Sequence by marketing the many health and fitness\nbenefits it provides. Choudhury informs prospective students that his \xe2\x80\x9csystem of\nHatha Yoga is capable of helping you avoid, correct, cure, heal, or at least alleviate\nthe symptoms of almost any illness or injury.\xe2\x80\x9d He claims that he developed the\nSequence after \xe2\x80\x9cmany of years of research and verification ... using modern medical\nmeasurement techniques.\xe2\x80\x9d He tells reporters that he extended the careers of\nprofessional athletes, including Kareem Abdul-Jabbar and John McEnroe. This\nmessage has resonated with an American audience: as the complaint in this action\nexplains, \xe2\x80\x9c[p]ublic demand for Bikram Yoga classes grew steadily once Bikram Yoga\nparticipants realized that Bikram\xe2\x80\x99s unique yoga style and method offered them\ntremendous physical, mental and other benefits.\xe2\x80\x9d\nIn 1979, Choudhury published the book Bikram\xe2\x80\x99s Beginning Yoga Class, which\nincludes descriptions, photographs, and drawings of the Sequence\xe2\x80\x99s twenty-six poses\nand two breathing exercises. Choudhury registered the book with the U.S. Copyright\nOffice in 1979. In 2002, he also registered the \xe2\x80\x9ccompilation of exercises\xe2\x80\x9d contained\nin the book, using a supplementary registration form that referenced back to the\n1979 book.\nIn 1994, Choudhury introduced the \xe2\x80\x9cBikram Yoga Teacher Training Course.\xe2\x80\x9d In\n2002 and 2005, respectively, Mark Drost and Zefea Samson enrolled in and\nsuccessfully completed the three-month Bikram Yoga Teacher Training course. In\n2009, Drost and Samson founded Evolation Yoga, LLC. Evolation Yoga offers\nseveral types and styles of yoga, including \xe2\x80\x9chot yoga,\xe2\x80\x9d which is similar to \xe2\x80\x9cBikram\xe2\x80\x99s\nBasic Yoga System.\xe2\x80\x9d Evolation acknowledges that hot yoga \xe2\x80\x9cincludes 26 postures\n\n86\n\n\x0cand two breathing exercises and is done for 90 minutes, accompanied by a series of\noral instructions, in a room heated to approximately 105 degrees Fahrenheit.\xe2\x80\x9d\nOn July 1, 2011, Choudhury and Bikram\xe2\x80\x99s Yoga College of India, L.P.\n(\xe2\x80\x9cChoudhury\xe2\x80\x9d) filed a complaint in the Central District of California alleging, inter\nalia, that defendants Evolation Yoga, LLC, Mark Drost, and Zefea Samson\n(\xe2\x80\x9cEvolation\xe2\x80\x9d) infringed \xe2\x80\x9cBikram\xe2\x80\x99s Copyrighted Works through substantial use of\nBikram\xe2\x80\x99s Copyrighted Works in and as part of Defendants\xe2\x80\x99 offering of yoga classes.\xe2\x80\x9d\nOn November 12, 2012, Evolation moved for partial summary judgment as to\nChoudhury\xe2\x80\x99s claim of copyright infringement of the \xe2\x80\x9cSequence.\xe2\x80\x9d The district court\ngranted Evolation\xe2\x80\x99s motion, ruling that the \xe2\x80\x9cSequence is a collection of facts and\nideas\xe2\x80\x9d that is not entitled to copyright protection. The parties settled all remaining\nclaims against each other, and Choudhury timely appealed as to the \xe2\x80\x9cSequence.\xe2\x80\x9d\nIII. Discussion\nThough Choudhury emphasizes the aesthetic attributes of the Sequence\xe2\x80\x99s \xe2\x80\x9cgraceful\nflow,\xe2\x80\x9d at bottom, the Sequence is an idea, process, or system designed to improve\nhealth. Copyright protects only the expression of this idea \xe2\x80\x94 the words and pictures\nused to describe the Sequence \xe2\x80\x94 and not the idea of the Sequence itself. Because the\nSequence is an unprotectable idea, it is also ineligible for copyright protection as a\n\xe2\x80\x9ccompilation\xe2\x80\x9d or \xe2\x80\x9cchoreographic work.\xe2\x80\x9d The district court properly granted partial\nsummary judgment in favor of Evolation because the Sequence is not a proper\nsubject of copyright.\nA. The Sequence Is an Unprotectable Idea.\nSection 102(a) of the Copyright Act of 1976 sets forth the proper subjects of\ncopyright protection. Section 102(b) expressly excludes protection for \xe2\x80\x9cany idea,\nprocedure, process, system, method of operation, concept, principle, or discovery,\nregardless of the form in which it is described, explained, illustrated, or embodied in\nsuch work.\xe2\x80\x9d Section 102(b) codifies the \xe2\x80\x9cidea/expression dichotomy,\xe2\x80\x9d under which\n\xe2\x80\x9cevery idea, theory, and fact in a copyrighted work becomes instantly available for\npublic exploitation at the moment of publication.\xe2\x80\x9d Golan v. Holder, 132 S.Ct. 873, 890\n(2012).\nThe idea/expression dichotomy has two constitutional foundations: the Copyright\nClause and the First Amendment. Under the Copyright Clause, \xe2\x80\x9cthe primary\nobjective of copyright is not to reward the labor of authors, but to promote the\nProgress of Science and useful Arts.\xe2\x80\x9d Feist Publications, Inc. v. Rural Tel. Serv. Co., 499\nU.S. 340, 349 (1991) (quoting U.S. Const. art. I, \xc2\xa7 8, cl. 8). \xe2\x80\x9cTo this end, copyright\nassures authors the right to their original expression, but encourages others to build\nfreely upon the ideas and information conveyed by a work.\xe2\x80\x9d Feist, 499 U.S. at 349-50.\nAt the same time, the idea/expression dichotomy \xe2\x80\x9cstrikes a definitional balance\nbetween the First Amendment and the Copyright Act by permitting free\ncommunication of facts while still protecting an author\xe2\x80\x99s expression.\xe2\x80\x9d Harper & Row\nPublishers v. Nation Enters., 471 U.S. 539, 556 (1985); see also Eldred, 537 U.S. at 219\n(describing the idea/expression dichotomy as a \xe2\x80\x9cbuilt-in First Amendment\naccommodation\xe2\x80\x9d); L.A. News Serv. v. Tullo, 973 F.2d 791, 795 (9th Cir.1992)\n(\xe2\x80\x9cCopyright law incorporates First Amendment goals by ensuring that copyright\n\n87\n\n\x0cprotection extends only to the forms in which ideas and information are expressed\nand not to the ideas and information themselves.\xe2\x80\x9d).\nIn Baker v. Selden, 101 U.S. 99 (1879), the Supreme Court addressed the protection\ncopyright law provided to a book, a classic subject of copyright protection,\nexplaining a system of book-keeping. The Court held that the book\xe2\x80\x99s expression of\nthe book-keeping system was protected, but the system of book-keeping itself was\nnot entitled to copyright protection. The Court explained:\nThe description of the art in a book, though entitled to the benefit of copyright, lays\nno foundation for an exclusive claim to the art itself. The object of the one is\nexplanation; the object of the other is use. The former may be secured by copyright.\nThe latter can only be secured, if it can be secured at all, by letters-patent.\n\nId. at 105.\nFollowing Baker, and recognizing this vital distinction between ideas and expression,\ncourts have routinely held that the copyright for a work describing how to perform a\nprocess does not extend to the process itself. In Palmer v. Braun, 287 F.3d 1325 (11th\nCir.2002), for example, the Eleventh Circuit held that meditation exercises described\nin a copyrighted manual on exploring the consciousness were \xe2\x80\x9ca process\xe2\x80\x9d unentitled\nto copyright protection. The court explained that the \xe2\x80\x9cexercises, while undoubtedly\nthe product of much time and effort, are, at bottom, simply a process for achieving\nincreased consciousness. Such processes, even if original, cannot be protected by\ncopyright.\xe2\x80\x9d Similarly, in Publications International, Ltd. v. Meredith Corp., 88 F.3d 473\n(7th Cir.1996), the Seventh Circuit held that recipes contained in a copyrighted\ncookbook are not entitled to copyright protection, for they merely \xe2\x80\x9cdescribe a\nprocedure by which the reader may produce many dishes,\xe2\x80\x9d and \xe2\x80\x9cthere can be no\nmonopoly in the copyright sense in the ideas for producing certain foodstuffs.\xe2\x80\x9d\nFinally, in Seltzer v. Sunbrock, 22 F.Supp. 621 (S.D.Cal.1938), which predates the\nCopyright Act of 1976 but applies Baker, the court held that the copyright in a\nmanual describing how to organize roller-skating races does not extend to the rules\nfor the races themselves. The court explained, \xe2\x80\x9c[w]hat [the author] really composed\nwas a description of a system for conducting races on roller skates. A system, as such,\ncan never be copyrighted. If it finds any protection, it must come from the patent\nlaws.\xe2\x80\x9d\nHere, we must similarly determine not the validity of a copyright but rather its scope.\nFootnote 5: As noted above, Choudhury obtained a copyright for a \xe2\x80\x9ccompilation of exercises\xe2\x80\x9d through his 2002\nsupplementary registration to Bikram\xe2\x80\x99s Beginning Yoga Class, which was first published in 1979. Choudhury\nclaims that the 2002 supplementary registration relates back to the 1979 registration. In Choudhury\xe2\x80\x99s view, the\nsupplementary registration thus issued within five years of first publication and therefore serves as \xe2\x80\x9cprima facie\nevidence of the validity of the copyright.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 410(c). Here, however, we need not decide whether\nChoudhury\xe2\x80\x99s supplementary registration is prima facie evidence of the validity of the copyright, for even if it were,\nthe undisputed facts are sufficient to overcome any presumption of validity.\n\nDoes Choudhury\xe2\x80\x99s copyright protection for his 1979 book extend to the Sequence\nitself? Under the fundamental tenets of copyright law and consistent with the\nprecedents discussed above, the answer is no.\nAs Choudhury describes it, the Sequence is a \xe2\x80\x9csystem\xe2\x80\x9d or a \xe2\x80\x9cmethod\xe2\x80\x9d designed to\n\xe2\x80\x9csystematically work every part of the body, to give all internal organs, all the veins,\nall the ligaments, and all the muscles everything they need to maintain optimum\n88\n\n\x0chealth and maximum function.\xe2\x80\x9d In Bikram\xe2\x80\x99s Beginning Yoga Class, Choudhury\nexplains that he \xe2\x80\x9carrived at the sequence of postures\xe2\x80\x9d after \xe2\x80\x9c[researching] the\ndiseases and the postures and after many years of research and verification... using\nmodern medical measurement techniques.\xe2\x80\x9d The book tells readers that \xe2\x80\x9cBikram\xe2\x80\x99s\ntwenty-six exercises systematically move fresh, oxygenated blood to one hundred\npercent of your body, to each organ and fiber, restoring all systems to healthy\nworking order, just as Nature intended.\xe2\x80\x9d Bonnie Jones Reynolds, Introduction to\nBikram\xe2\x80\x99s Beginning Yoga Class, at xi (1979). This text promises readers that\nChoudhury\xe2\x80\x99s \xe2\x80\x9csystem of Hatha Yoga is capable of helping you avoid, correct, cure,\nheal, or at least alleviate the symptoms of almost any illness or injury.\xe2\x80\x9d\nAlso illuminating is Choudhury\xe2\x80\x99s spoken Dialogue, which accompanies the Sequence.\nBefore the Sequence\xe2\x80\x99s first breathing exercise, for example, the instructor tells\nstudents, \xe2\x80\x9c[The exercise] is good for the lungs and respiratory system. This exercise\nexpands your lungs to their maximum expansion capacity. And it improves the\nelasticity of your lungs.\xe2\x80\x9d Before the twelfth pose, the instructor explains:\nEvery exercise in the world you do, you burn energy/calories like driving a car burns\ngas. The tank is empty, you need to fill it up again. Hatha Yoga class is a gas station,\nit is the only place in the world where you gain energy instead of burning energy.\nAsana is the only natural physical activity in the world because it is scientific [and]\nwith the help of science, we can explain nature.\n\nAn essential element of this \xe2\x80\x9csystem\xe2\x80\x9d is the order in which the yoga poses and\nbreathing exercises are arranged. Bikram\xe2\x80\x99s Beginning Yoga Class instructs readers,\n\xe2\x80\x9cDo the poses in the strict order given in this book. Nothing about Bikram\xe2\x80\x99s\nBeginning Yoga Class is haphazard. It is designed to scientifically warm and stretch\nmuscles, ligaments, and tendons in the order in which they should be stretched.\xe2\x80\x9d\nBikram\xe2\x80\x99s Beginning Yoga Class, supra, at xi. For instance, Choudhury explains, \xe2\x80\x9cCamel\nPose (Ustrasana) stretches the abdomen and compresses the spine; so for the next\nposture, I chose the Rabbit Pose (Sasangasana), which does the converse: stretches\nthe back and compresses the abdomen.\xe2\x80\x9d One Yoga Journal article explains that\n\xe2\x80\x9c[a]ccording to Bikram, each posture in his series forms the perfect basis for the next,\nwarming and stretching the appropriate muscles, ligaments and tendons.\xe2\x80\x9d\nChoudhury thus attempts to secure copyright protection for a healing art: a system\ndesigned to yield physical benefits and a sense of well-being. Simply put, this attempt\nis precluded by copyright\xe2\x80\x99s idea/expression dichotomy, codified by Section 102(b).\nAs the Supreme Court explained in Baker, \xe2\x80\x9cCertain mixtures are found to be of great\nvalue in the healing art. If the discoverer writes and publishes a book on the subject\n(as regular physicians generally do), he gains no exclusive right to the manufacture\nand sale of the medicine; he gives that to the public.\xe2\x80\x9d 101 U.S. at 102-03. Thus, for\nexample, the copyright for a book describing how to perform a complicated surgery\ndoes not give the holder the exclusive right to perform the surgery. Like the series of\nmovements a surgeon makes, the Sequence is, as Choudhury tells readers, a method\ndesigned to \xe2\x80\x9ccure, heal, or at least alleviate\xe2\x80\x9d physical injuries and illness. Monopoly\nprotection for such a method \xe2\x80\x9ccan only be secured, if it can be secured at all, by\nletters-patent.\xe2\x80\x9d Id. at 105; see also Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510,\n1526 (9th Cir.1992), as amended (Jan. 6, 1993) (\xe2\x80\x9cIn order to enjoy a lawful monopoly\nover the idea or functional principle underlying a work, the creator of the work must\n\n89\n\n\x0csatisfy the more stringent standards imposed by the patent laws.\xe2\x80\x9d). In light of Baker\nand its progeny, Choudhury\xe2\x80\x99s healing methodology is not eligible for protection by\ncopyright. Indeed, if it is entitled to protection at all, that protection is more properly\nsought through the patent process.8\nFootnote 8: We do not opine on whether the Sequence is, in fact, patentable.\n\nThat the Sequence may produce spiritual and psychological benefits makes it no less\nan idea, system, or process and no more amenable to copyright protection.\nChoudhury\xe2\x80\x99s personal declaration explains that the Sequence offers \xe2\x80\x9cspiritual\nbenefits\xe2\x80\x9d to his students and \xe2\x80\x9cleads to a general sense of peace and well-being that is\nundoubtedly of benefit to all of us.\xe2\x80\x9d Like the meditation exercises designed to\nachieve greater consciousness in Braun, 287 F.3d at 1334, the Sequence sets forth a\nmethod to attain identifiable, if spiritual and psychological, results: a \xe2\x80\x9csense of wellbeing\xe2\x80\x9d and \xe2\x80\x9cboundless energy.\xe2\x80\x9d Bikram\xe2\x80\x99s Beginning Yoga Class, supra, at xi. As such, it\nfalls within the Copyright Act\xe2\x80\x99s definition of an idea, process, or system excluded\nfrom copyright protection. See 17 U.S.C. \xc2\xa7 102(b).\nChoudhury contends that the Sequence\xe2\x80\x99s arrangement of postures is \xe2\x80\x9cparticularly\nbeautiful and graceful.\xe2\x80\x9d But beauty is not a basis for copyright protection. The\nperformance of many ideas, systems, or processes may be beautiful: a surgeon\xe2\x80\x99s\nintricate movements, a book-keeper\xe2\x80\x99s careful notations, or a baker\xe2\x80\x99s kneading might\neach possess a certain grace for at least some viewers. Indeed, from Vermeer\xe2\x80\x99s\nmilkmaid to Lewis Hine\xe2\x80\x99s power house mechanic, the individual engrossed in a\nprocess has long attracted artistic attention. But the beauty of the process does not\npermit one who describes it to gain, through copyright, the monopolistic power to\nexclude all others from practicing it. This is true even where, as here, the process was\nconceived with at least some aesthetic considerations in mind. Just as some steps in a\nrecipe may reflect no more than the author\xe2\x80\x99s belief that a particular ingredient is\nbeautiful or that a particular cooking technique is impressive to watch and\nempowering to practice, some elements in Choudhury\xe2\x80\x99s Sequence may reflect his\naesthetic preferences. Yet just like the recipe, the Sequence remains unprotectable as\na process the design of which primarily reflects function, not expression.\nIn drawing the \xe2\x80\x9cdifficult\xe2\x80\x9d line between idea and expression in this case, we are\nmindful of the \xe2\x80\x9cguiding consideration\xe2\x80\x9d of the idea/expression dichotomy: \xe2\x80\x9cthe\npreservation of the balance between competition and protection reflected in the\npatent and copyright laws.\xe2\x80\x9d CDN Inc. v. Kapes, 197 F.3d 1256, 1262 (9th Cir.1999)\n(quoting Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971)).\nAs in Baker, the \xe2\x80\x9cobject\xe2\x80\x9d of the book Bikram\xe2\x80\x99s Beginning Yoga Class is\n\xe2\x80\x9cexplanation\xe2\x80\x9d: it tells readers how to perform the Sequence and encourages them to\ntry it. Baker, 101 U.S. at 105. The introduction to Bikram\xe2\x80\x99s Beginning Yoga Class, for\nexample, urges the audience to: (i) \xe2\x80\x9cturn to the Contents page,\xe2\x80\x9d (ii) \xe2\x80\x9cread through\nthe book,\xe2\x80\x9d (iii) \xe2\x80\x9cbuild gradually,\xe2\x80\x9d and (iv) \xe2\x80\x9cdo the poses in the strict order given in\nthis book.\xe2\x80\x9d Like a book explaining \xe2\x80\x9cBook-keeping Simplified,\xe2\x80\x9d 101 U.S. at 100,\nBikram\xe2\x80\x99s Beginning Yoga Class sets out to \xe2\x80\x9ccommunicate to the world the useful\nknowledge which it contains.\xe2\x80\x9d Id. at 103. It invites readers to practice the method it\ndescribes. \xe2\x80\x9cBut this object would be frustrated if the knowledge could not be used\nwithout incurring the guilt of piracy of the book.\xe2\x80\x9d Id. Consumers would have little\nreason to buy Choudhury\xe2\x80\x99s book if Choudhury held a monopoly on the practice of\n90\n\n\x0cthe very activity he sought to popularize. Rather than \xe2\x80\x9cstimulat[ing] artistic creativity\nfor the general public good,\xe2\x80\x9d copyright protection for the Sequence would prevent\nthe public from engaging with Choudhury\xe2\x80\x99s idea and building upon it.\nB. The Sequence Is Not a Copyrightable Compilation.\nChoudhury contends that the Sequence is entitled to copyright protection as a\n\xe2\x80\x9ccompilation.\xe2\x80\x9d Specifically, Choudhury claims that the Sequence qualifies for\ncopyright protection because his \xe2\x80\x9cselection, coordination, and arrangement\xe2\x80\x9d of\ntwenty-six poses and two breathing exercises create a coherent and expressive\ncomposition. The district court correctly rejected this argument.\nThe Copyright Act identifies compilations as a proper subject of copyright. Section\n103 of the Copyright Act provides that \xe2\x80\x9c[t]he subject matter of copyright as specified\nin section 102 includes compilations.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 103(a). A \xe2\x80\x9ccompilation\xe2\x80\x9d is \xe2\x80\x9ca\nwork formed by the collection and assembling of preexisting materials or of data that\nare selected, coordinated, or arranged in such a way that the resulting work as a\nwhole constitutes an original work of authorship.\xe2\x80\x9d Id. \xc2\xa7 101. It essential to recognize,\nhowever, that Section 103 complements Section 102. Thus, while a compilation may\nbe eligible for copyright protection, it must nevertheless satisfy the requirements of\nSection 102. A compilation must, in other words, represent an \xe2\x80\x9coriginal work[] of\nauthorship,\xe2\x80\x9d and \xe2\x80\x9c[i]n no case\xe2\x80\x9d may copyright protection \xe2\x80\x9cextend to any idea,\nprocedure, process, [or] system.\xe2\x80\x9d Id. \xc2\xa7 102. The availability of copyright protection\nfor compilations, therefore, does not eliminate Section 102\xe2\x80\x99s categorical bar on\ncopyright protection for ideas.\nThe Supreme Court addressed the relationship between these \xe2\x80\x9ctwo well-established\npropositions\xe2\x80\x9d \xe2\x80\x94 that compilations are eligible for copyright but facts and ideas are\nnot \xe2\x80\x94 in Feist, 499 U.S. 340. In Feist, the Court considered whether the collection of\nnames, towns, and telephone numbers in a telephone directory is eligible for\ncopyright protection as a compilation. The Court held that \xe2\x80\x9c[a] factual compilation is\neligible for copyright if it features an original selection or arrangement of facts, but\nthe copyright is limited to the particular selection or arrangement. In no event may\ncopyright extend to the facts themselves.\xe2\x80\x9d Id. at 350-51.\nBy claiming copyright protection for the Sequence as a compilation, Choudhury\nmisconstrues the scope of copyright protection for compilations. As we have\nexplained, the Sequence is an idea, process, or system; therefore, it is not eligible for\ncopyright protection. That the Sequence may possess many constituent parts does\nnot transform it into a proper subject of copyright protection. Virtually any process\nor system could be dissected in a similar fashion. Baker\xe2\x80\x99s examples of \xe2\x80\x9chow-to\xe2\x80\x9d\ntreatises are instructive: \xe2\x80\x9cA treatise on the construction and use of ploughs, or\nwatches, or churns, or on the mode of drawing lines to produce the effect of\nperspective\xe2\x80\x9d would likely list the steps necessary to perform the process it describes.\n101 U.S. at 102. The watchmaking treatise\xe2\x80\x99s author could not claim a copyright in the\nprocess of making a watch, however, by breaking down the process into multiple\nsteps and labeling it a \xe2\x80\x9ccompilation.\xe2\x80\x9d Recipes further illustrate the point: a cake\nrecipe could be viewed as a \xe2\x80\x9ccompilation\xe2\x80\x9d of carefully arranged and selected steps \xe2\x80\x94\nwhich may, of course, reflect the personal preferences and tastes of the recipe\xe2\x80\x99s\nauthor \xe2\x80\x94 yet the recipe would remain, in most instances, a process that is not\n\n91\n\n\x0celigible for copyright protection. See Meredith, 88 F.3d at 480-81. Likewise,\nChoudhury cannot obtain copyright protection for the Sequence as a compilation by\nseparately identifying the poses and breathing exercises it contains.\nMoreover, according to Choudhury himself, the medical and functional\nconsiderations at the heart of the Sequence compel the very selection and\narrangement of poses and breathing exercises for which he claims copyright\nprotection. According to Bikram\xe2\x80\x99s Beginning Yoga Class, the \xe2\x80\x9cstrict order\xe2\x80\x9d of the\nposes \xe2\x80\x9cis designed to scientifically warm and stretch muscles, ligaments, and tendons\nin the order in which they should be stretched.\xe2\x80\x9d Bikram\xe2\x80\x99s Beginning Yoga Class,\nsupra, at xi. Read in the light most favorable to Choudhury, the record demonstrates\nthat the overarching reason for the organization of the poses and breathing exercises\nin the Sequence is to further the basic goals of the method: to attain \xe2\x80\x9c[p]roper weight,\nmuscle tone, glowing complexion, boundless energy, vibrant good health, and a\nsense of well-being.\xe2\x80\x9d Id. The Sequence\xe2\x80\x99s composition renders it more effective as a\nprocess or system, but not any more suitable for copyright protection as an original\nwork of authorship.\nIt makes no difference that similar results could be achieved through a different\norganization of yoga poses and breathing exercises. Choudhury argues that he could\nhave chosen from \xe2\x80\x9chundreds of postures\xe2\x80\x9d and \xe2\x80\x9ccountless arrangements of these\npostures\xe2\x80\x9d in developing the Sequence. But the possibility of attaining a particular end\nthrough multiple different methods does not render the uncopyrightable a proper\nsubject of copyright. See BellSouth Advert. & Publ\xe2\x80\x99g Corp. v. Donnelley Info. Publ\xe2\x80\x99g, Inc.,\n999 F.2d 1436, 1443 (11th Cir.1993) (\xe2\x80\x9cThe relevant inquiry [under Feist] is not\nwhether there is some imaginable, although manifestly less useful, method of\narranging business telephone listings.\xe2\x80\x9d); see also ATC Distrib. Grp., Inc. v. Whatever It\nTakes Transmissions & Parts, Inc., 402 F.3d 700, 711-12 (6th Cir.2005) (\xe2\x80\x9cTo be sure,\n[the publisher of a catalog describing a transmission parts numbering system] could\nhave arranged the parts information in other ways that were potentially less clear or\nuseful, but this fact alone is insufficient to demonstrate the creativity necessary for\ncopyright protection.\xe2\x80\x9d). Though it may be one of many possible yoga sequences\ncapable of attaining similar results, the Sequence is nevertheless a process and is\ntherefore ineligible for copyright protection.\n[The court also held that the Sequence was not a copyrightable choreographic work.]\nIV. Conclusion\nAlthough there is no cause to dispute the many health, fitness, spiritual, and aesthetic\nbenefits of yoga, and Bikram Yoga in particular, they do not bring the Sequence into\nthe realm of copyright protection. The Sequence falls squarely within Section\n102(b)\xe2\x80\x99s exclusions from copyright protection, no matter how it is labeled or how\nably the label is argued. Therefore, the district court properly granted Evolation\xe2\x80\x99s\nmotion for partial summary judgment.\nAFFIRMED.\nNotes and questions\n\n92\n\n\x0c(1) In Bikram\xe2\x80\x99s Yoga College of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir. 2015),\nthe Ninth Circuit addressed whether a sequence of twenty-six yoga poses and two breathing\nexercises developed by Bikram Choudhury and described in his book were entitled to\ncopyright protection. Bikram\xe2\x80\x99s Yoga sued defendant Evolation Yoga and two individuals\nfor copyright infringement based on their use of Bikram\xe2\x80\x99s Yoga sequence in their yoga\nclasses. The defendants did not challenge Choudhury\xe2\x80\x99s copyright protection for his 1979\nbook explaining his yoga sequence, but they did challenge the notion that copyright in the\nbook extended to the sequence itself or that the Sequence was independently copyrighted as\ncompilation. The court held that the Sequence of poses itself was an unprotectable idea by\nvirtue of section 102(b) and applying Baker v. Selden. Choudhury\xe2\x80\x99s own declarations of health\nbenefits appeared to be fatal in this respect.\nFollowing Baker, and recognizing this vital distinction between ideas and expression,\ncourts have routinely held that the copyright for a work describing how to perform\na process does not extend to the process itself.\n\n(2) Note that the court did not discount the aesthetic qualities of the Sequence:\nThough Choudhury emphasizes the aesthetic attributes of the Sequence\xe2\x80\x99s \xe2\x80\x9cgraceful\nflow,\xe2\x80\x9d at bottom, the Sequence is an idea, process, or system designed to improve\nhealth. \xe2\x80\xa6 the beauty of the process does not permit one who describes it to gain,\nthrough copyright, the monopolistic power to exclude all others from practicing it\n\xe2\x80\xa6\n\nBut those aesthetic considerations were subordinate to the functional aspects of the\nSequence:\nYet just like the recipe, the Sequence remains unprotectable as a process the design\nof which primarily reflects function, not expression.\n\n(3) Choudhury tried to argue that the Sequence qualified for copyright protection as a\ncompilation because his \xe2\x80\x9cselection, coordination, and arrangement\xe2\x80\x9d of twenty-six poses and\ntwo breathing exercises created a coherent and expressive composition. This is a common\ntactic by copyright plaintiffs and the court rightly rejected it.\nIt is true that the Copyright Act identifies compilations as a proper subject of copyright.\nSection 103(a) of the Copyright Act provides that \xe2\x80\x9c[t]he subject matter of copyright as\nspecified in section 102 includes compilations.\xe2\x80\x9d Compilation is defined in section 101 as \xe2\x80\x9ca\nwork formed by the collection and assembling of preexisting materials or of data that are\nselected, coordinated, or arranged in such a way that the resulting work as a whole\nconstitutes an original work of authorship.\xe2\x80\x9d\nBut as the court was quick to point out, Section 103 must be read in conjunction with\nSection 102. The court concluded that the mere fact that the Sequence possessed many\nconstituent parts did not transform it into a proper subject of copyright protection. After all,\n\xe2\x80\x9cVirtually any process or system could be dissected in a similar fashion.\xe2\x80\x9d\n(4) Another noteworthy aspect of the decision is what the court says about the existence of\nalternatives.\nIt makes no difference that similar results could be achieved through a different\norganization of yoga poses and breathing exercises. Choudhury argues that he could\nhave chosen from \xe2\x80\x9chundreds of postures\xe2\x80\x9d and \xe2\x80\x9ccountless arrangements of these\npostures\xe2\x80\x9d in developing the Sequence. But the possibility of attaining a particular\n\n93\n\n\x0cend through multiple different methods does not render the uncopyrightable a\nproper subject of copyright. \xe2\x80\xa6\nThough it may be one of many possible yoga sequences capable of attaining similar\nresults, the Sequence is nevertheless a process and is therefore ineligible for\ncopyright protection.\n\nFollowing Baker, courts routinely hold that when ideas can be expressed in no more than a\nfew ways, merger precludes copyright protection because of the limited range of expressive\nalternatives.\n\nMerger and sc\xc3\xa8nes \xc3\xa0 faire\nThe Merger Doctrine\nVery occasionally a literary work will fail to qualify for copyright protection because it lacks\nthe modicum of creativity required by Feist. Telephone directories and works based on the\npublic domain with no recognizable authorial changes are not eligible for copyright\nprotection and may be copied at will. However, sometimes even works that display that\nmodicum of creativity will also be ineligible for copyright protection because potentially\ncopyrightable expression has merged with uncopyrightable facts, ideas, or functions. The\nuncopyrightability of the forms in Baker v. Selden is an early example the merger doctrine at\nwork, although the Court did not expressly invoke the doctrine by name.\nEvery copyrightable work contains unprotectable elements. In very rare cases, there is\ncomplete overlap between original expression and unprotectable facts, ideas, or methods. In\nsuch cases, the merger doctrine holds that the freedom of facts, ideas, and methods wins out.\nUnder the merger doctrine, when \xe2\x80\x9cthere is only one feasible way of expressing an idea, so\nthat if the expression were copyrightable it would mean that the idea was copyrightable,\xe2\x80\x9d the\nexpression is not protected.31 Or to put in another way, the \xe2\x80\x9cmerger doctrine\xe2\x80\x9d holds that, in\ncertain circumstances, where authors have only one or very few ways of expressing an idea\nor function, the expression and the idea are merged, and the expression is treated as\nunprotectable.32\nIn Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967) for example, the plaintiff was\nthe copyright owner of a set of rules for a sales promotional contest of the \xe2\x80\x98sweepstakes\xe2\x80\x99\ntype involving the social security numbers of the participants. Morrissey alleged that the\ndefendant, Procter & Gamble, had copied and thus infringed Rule 1 of its rules.\nPlaintiff\xe2\x80\x99s Rule\n1. Entrants should print name, address and social security number on a boxtop, or a\nplain paper. Entries must be accompanied by * * * boxtop or by plain paper on\nwhich the name * * * is copied from any source. Official rules are explained on * * *\npackages or leaflets obtained from dealer. If you do not have a social security\nnumber you may use the name and number of any member of your immediate\nfamily living with you. Only the person named on the entry will be deemed an\nentrant and may qualify for prize.\n31\n\nSee Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 928 (7th Cir. 2003)\n\n32\n\nSee Pamela Samuelson, Reconceptualizing Copyright\xe2\x80\x99s Merger Doctrine, 63 J. COPYRIGHT SOC\xe2\x80\x99Y (2016).\n\n94\n\n\x0c\xe2\x80\x98Use the correct social security number belonging to the person named on entry * *\n* wrong number will be disqualified.\xe2\x80\x99\nDefendant\xe2\x80\x99s Rule\n1. Entrants should print name, address and Social Security number on a Tide\nboxtop, or on (a) plain paper. Entries must be accompanied by Tide boxtop (any\nsize) or by plain paper on which the name \xe2\x80\x98Tide\xe2\x80\x99 is copied from any source. Official\nrules are available on Tide Sweepstakes packages, or on leaflets at Tide dealers, or\nyou can send a stamped, self-addressed envelope to: Tide \xe2\x80\x98Shopping Fling\xe2\x80\x99\nSweepstakes, P.O. Box 4459, Chicago 77, Illinois.\n\xe2\x80\x98If you do not have a Social Security number, you may use the name and number of\nany member of your immediate family living with you. Only the person named on\nthe entry will be deemed an entrant and may qualify for a prize.\n\xe2\x80\x98Use the correct Social Security number, belonging to the person named on the\nentry - wrong numbers will be disqualified.\xe2\x80\x99\n\nHolding for the defendant, the Ninth Circuit said (at 678\xe2\x80\x93679) that:\nWhen the uncopyrightable subject matter is very narrow, so that \xe2\x80\x98the topic\nnecessarily requires,\xe2\x80\x99 \xe2\x80\xa6, if not only one form of expression, at best only a limited\nnumber, to permit copyrighting would mean that a party or parties, by copyrighting\na mere handful of forms, could exhaust all possibilities of future use of the\nsubstance.\nIn such circumstances it does not seem accurate to say that any particular form of\nexpression comes from the subject matter. However, it is necessary to say that the\nsubject matter would be appropriated by permitting the copyrighting of its\nexpression. We cannot recognize copyright as a game of chess in which the public\ncan be checkmated.\n\nThree points are worth keeping in mind in relation to merger. First, the merger is not a sui\ngeneris or ad hoc principle, it is one manifestation of the broader principle that copyright\nprotection does not extend to the protection of facts, ideas, functions, or processes. Second,\nthe merger doctrine operates to exclude what might have otherwise been protectable\nexpression from the ambit of copyright protection. Third, the merger doctrine can deny\ncopyright to a work in total, but merger analysis is also used by courts to identify\nunprotectable elements within protectable expression that must be filtered in any\ninfringement analysis.\nSc\xc3\xa8nes \xc3\xa0 Faire\nStock themes and conventions belong in the public domain.\nLike the merger doctrine, the sc\xc3\xa8nes \xc3\xa0 faire doctrine also polices the idea-expression distinction.\nUnder the sc\xc3\xa8nes \xc3\xa0 faire doctrine stock or standard literary devices are not considered\nprotectable, even if they are expressive. The doctrine\xe2\x80\x99s name is borrowed from the French\nwho \xe2\x80\x9c use a very expressive phrase in dramatic literature: \xe2\x80\x98sc\xc3\xa8nes \xc3\xa0 faire\xe2\x80\x99 that is, scenes which\n\xe2\x80\x98must\xe2\x80\x99 be done.\xe2\x80\x9d33\n\n33\n\nSchwarz v. Universal Pictures Co., 85 F. Supp. 270, 275 (S.D. Cal. 1945)\n\n95\n\n\x0cAs the Seventh Circuit explained in Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 929\n(7th Cir. 2003):\n\xe2\x80\xa6 copyright owner can\xe2\x80\x99t prove infringement by pointing to features of his work\nthat are found in the defendant\xe2\x80\x99s work as well but that are so rudimentary,\ncommonplace, standard, or unavoidable that they do not serve to distinguish one\nwork within a class of works from another.\n\xe2\x80\xa6 Every expressive work can be decomposed into elements not themselves\ncopyrightable\xe2\x80\x94the cars in a car chase, the kiss in a love scene, the dive bombers in\na movie about Pearl Harbor, or for that matter the letters of the alphabet in any\nwritten work. The presence of such elements obviously does not forfeit copyright\nprotection of the work as a whole, but infringement cannot be found on the basis of\nsuch elements alone; it is the combination of elements, or particular novel twists\ngiven to them, that supply the minimal originality required for copyright protection.\n\nAs the Second Circuit explained in Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d\nCir. 1980), the sc\xc3\xa8nes \xc3\xa0 faire doctrine is justified on the basis that \xe2\x80\x9cit is virtually impossible to\nwrite about a particular historical era or fictional theme without employing certain \xe2\x80\x98stock\xe2\x80\x99 or\nstandard literary devices.\xe2\x80\x9d\nHow does a stock character have to be to constitute sc\xc3\xa8nes \xc3\xa0 faire? Some courts put this in\nterms of whether expression is \xe2\x80\x9cindispensable,\xe2\x80\x9d but that is an overstatement. An element\ncan be \xe2\x80\x9cstandard\xe2\x80\x9d or \xe2\x80\x9ccustomary\xe2\x80\x9d without being indispensable. See, e.g., Hoehling v. Universal\n(at 979): \xe2\x80\x9cincidents, characters or settings which are as a practical matter indispensable, or at\nleast standard, in the treatment of a given topic.\xe2\x80\x9d\nSc\xc3\xa8nes \xc3\xa0 faire will not usually make a work uncopyrightable, but it will make aspects of the\nwork irrelevant for infringement analysis. Like an unprotectable idea, any aspect of the work\nthat is sc\xc3\xa8nes \xc3\xa0 faire is unprotectable as such. The fact that work A and work B both contain\nthe same sc\xc3\xa8nes \xc3\xa0 faire elements does not go very far to prove one was copied from the other\nin the usual case, and it certainly does not establish that any such copying was wrongful,\neven if proven or admitted.\nLexmark Int\xe2\x80\x99l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004)\nAt the time of this litigation, Lexmark made and sold printers and printer cartridges. Lexmark print cartridges contained a\nsimple computer program (the Toner Loading Program) and an authentication code stored on an embedded microchip. For\na Lexmark printer to accept a print cartridge, it would have to receive an authentication code from the chip inside the\ncartridge. The printers were designed this was so that Lexmark could sell toner cartridges as single-use items, or that could\nonly be refurbished by Lexmark. Static Control supplied its own chips that would defeat the Lexmark authentication\nsequence and thus allow third parties sell remanufactured Lexmark toner cartridges. Each of Static Control\xe2\x80\x99s SMARTEK\nchips also contained an exact copy of Lexmark\xe2\x80\x99s Toner Loading Program, which was necessary to make its product\ncompatible with Lexmark\xe2\x80\x99s printers.\nLexmark alleged that Static Control violated its copyright in the Toner Loading Program and that it violated the DMCA by\ncircumventing Lexmark\xe2\x80\x99s access controls. This extract focuses on the copyright issues in the case. DMCA anticircumvention issues are addressed in a later chapter.\n\nCircuit Judge Sutton\n\xe2\x80\xa6 As this case comes to the court, the parties agree that computer programs may be\nentitled to copyright protection as \xe2\x80\x9cliterary works\xe2\x80\x9d under 17 U.S.C. \xc2\xa7 101 and may be\nprotected from infringement under 17 U.S.C. \xc2\xa7 106. And that is true with respect to\na computer program\xe2\x80\x99s object code (the binary code \xe2\x80\x94 a series of zeros and ones \xe2\x80\x94\n\n96\n\n\x0cthat computers can read) and its source code (the spelled-out program commands\nthat humans can read).\nThe parties also agree that Lexmark has registered the Toner Loading Program with\nthe Copyright Office, which is an infringement suit prerequisite, see 17 U.S.C. \xc2\xa7\n411(a), and which constitutes prima facie evidence of the copyright\xe2\x80\x99s validity, see id.\n\xc2\xa7 410(c). And the parties agree that SCC shoulders the burden of rebutting the\npresumptive validity of Lexmark\xe2\x80\x99s copyright.\nThe parties also share common ground when it comes to most of the general\nprinciples of copyright infringement applicable to this case. A plaintiff may establish\na claim of copyright infringement by showing (1) ownership of a valid copyright in\nthe computer program at issue (here, the Toner Loading Program) and (2) that the\ndefendant copied protectable elements of the work. See Feist Publ\xe2\x80\x99ns, Inc. v. Rural Tel.\nServ. Co., 499 U.S. 340, 361 (1991). The first prong tests the originality and nonfunctionality of the work, see M.M. Bus. Forms Corp. v. Uarco, Inc., 472 F.2d 1137,\n1139 (6th Cir.1973), both of which are presumptively established by the copyright\nregistration. The second prong tests whether any copying occurred (a factual matter)\nand whether the portions of the work copied were entitled to copyright protection (a\nlegal matter). If no direct evidence of copying is available, a claimant may establish\nthis element by showing that the defendant had access to the copyrighted work and\nthat the copyrighted work and the allegedly copied work are substantially similar.\nAs to the first prong, the Supreme Court has instructed that \xe2\x80\x9coriginal ... means only\nthat the work was independently created by the author (as opposed to copied from\nother works), and that it possesses at least some minimal degree of creativity,\xe2\x80\x9d even\nif the work is not a \xe2\x80\x9cnovel\xe2\x80\x9d one. Feist, 499 U.S. at 345-46 (originality requires both\n\xe2\x80\x9cindependent creation plus a modicum of creativity\xe2\x80\x9d). And although constitutionally\nmandated, the threshold showing of originality is not a demanding one. Id. at 345\n(\xe2\x80\x9cTo be sure, the requisite level of creativity is extremely low; even a slight amount\nwill suffice.\xe2\x80\x9d).\nBut even if a work is in some sense \xe2\x80\x9coriginal\xe2\x80\x9d under \xc2\xa7 102(a), it still may not be\ncopyrightable because \xc2\xa7 102(b) provides that \xe2\x80\x9c[i]n no case does copyright protection\nfor an original work of authorship extend to any idea, procedure, process, system,\nmethod of operation, concept, principle, or discovery, regardless of [its] form.\xe2\x80\x9d This\nprovision embodies the common-law idea-expression dichotomy that distinguishes\nthe spheres of copyright and patent law. \xe2\x80\x9cUnlike a patent, a copyright gives no\nexclusive right to the art disclosed; protection is given only to the expression of the\nidea \xe2\x80\x94 not the idea itself.\xe2\x80\x9d Mazer v. Stein, 347 U.S. 201, 217 (1954); see also Baker v.\nSelden, 101 U.S. 99, 101-02 (1879) (explaining that while a book describing a\nbookkeeping system is worthy of copyright protection, the underlying method\ndescribed is not); Computer Assocs. Int\xe2\x80\x99l, Inc. v. Altai, Inc., 982 F.2d 693, 703 (2d\nCir.1992) (\xe2\x80\x9cIt is a fundamental principle of copyright law that a copyright does not\nprotect an idea, but only the expression of the idea.\xe2\x80\x9d). While this general principle\napplies equally to computer programs, id.; see also House Report at 5667 (extending\ncopyright protection to computer programs only \xe2\x80\x9cto the extent that they incorporate\nauthorship in programmer\xe2\x80\x99s expression of original ideas, as distinguished from ideas\nthemselves\xe2\x80\x9d), the task of separating expression from idea in this setting is a vexing\none, see Altai, 982 F.2d at 704 (\xe2\x80\x9cThe essentially utilitarian nature of a computer\n97\n\n\x0cprogram further complicates the task of distilling its idea from its expression.\xe2\x80\x9d); Sega\nEnters., Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir.1992); see also Lotus Dev.\nCorp. v. Borland Int\xe2\x80\x99l, Inc., 49 F.3d 807, 819-20 (1st Cir.1995) (Boudin, J., concurring).\n\xe2\x80\x9cCompared to aesthetic works, computer programs hover even more closely to the\nelusive boundary line described in \xc2\xa7 102(b).\xe2\x80\x9d Altai, 982 F.2d at 704.\nIn ascertaining this \xe2\x80\x9celusive boundary line\xe2\x80\x9d between idea and expression, between\nprocess and non-functional expression, courts have looked to two other staples of\ncopyright law \xe2\x80\x94 the doctrines of merger and sc\xc3\xa8nes \xc3\xa0 faire. Where the \xe2\x80\x9cexpression is\nessential to the statement of the idea,\xe2\x80\x9d CCC Info. Servs., Inc. v. Maclean Hunter Mkt.\nReports, Inc., 44 F.3d 61, 68 (2d Cir.1994); see also Lotus Dev., 49 F.3d at 816 (\xe2\x80\x9cIf\nspecific words are essential to operating something, then they are part of a \xe2\x80\x98method\nof operation\xe2\x80\x99 and, as such, are unprotectable.\xe2\x80\x9d), or where there is only one way or\nvery few ways of expressing the idea, Warren Publ\xe2\x80\x99g, Inc. v. Microdos Data Corp., 115\nF.3d 1509, 1519 n. 27 (11th Cir.1997), the idea and expression are said to have\n\xe2\x80\x9cmerged.\xe2\x80\x9d In these instances, copyright protection does not exist because granting\nprotection to the expressive component of the work necessarily would extend\nprotection to the work\xe2\x80\x99s uncopyrightable ideas as well. See Gates Rubber Co. v. Bando\nChem. Indus., Ltd., 9 F.3d 823, 838 (10th Cir.1993); see also Murray Hill Publ\xe2\x80\x99ns, Inc. v.\nTwentieth Century Fox Film Corp., 361 F.3d 312, 319 n. 2 (6th Cir.2004) (noting that\nwhere idea and expression are intertwined and where non-protectable ideas\npredominate, expression is not protected). For computer programs, \xe2\x80\x9cif the\npatentable process is embodied inextricably in the line-by-line instructions of the\ncomputer program, [] then the process merges with the expression and precludes\ncopyright protection.\xe2\x80\x9d Atari I, 975 F.2d at 839-40.\nFor similar reasons, when external factors constrain the choice of expressive vehicle,\nthe doctrine of \xe2\x80\x9csc\xc3\xa8nes \xc3\xa0 faire\xe2\x80\x9d \xe2\x80\x94 \xe2\x80\x9cscenes,\xe2\x80\x9d in other words, \xe2\x80\x9cthat must be done\xe2\x80\x9d \xe2\x80\x94\nprecludes copyright protection. See Twentieth Century Fox Film, 361 F.3d at 319-20. In\nthe literary context, the doctrine means that certain phrases that are \xe2\x80\x9cstandard,\nstock, ... or that necessarily follow from a common theme or setting\xe2\x80\x9d may not obtain\ncopyright protection. Gates Rubber, 9 F.3d at 838. In the computer-software context,\nthe doctrine means that the elements of a program dictated by practical realities \xe2\x80\x94\ne.g., by hardware standards and mechanical specifications, software standards and\ncompatibility requirements, computer manufacturer design standards, target industry\npractices, and standard computer programming practices \xe2\x80\x94 may not obtain\nprotection. Id. (citing case examples); see Sega Enters., 977 F.2d at 1524 (\xe2\x80\x9cTo the\nextent that a work is functional or factual, it may be copied.\xe2\x80\x9d); Brown Bag Software v.\nSymantec Corp., 960 F.2d 1465, 1473 (9th Cir.1992) (affirming district court\xe2\x80\x99s finding\nthat \xe2\x80\x9cplaintiffs may not claim copyright protection of an expression that is, if not\nstandard, then commonplace in the computer software industry\xe2\x80\x9d). As \xe2\x80\x9can industrywide goal,\xe2\x80\x9d programming \xe2\x80\x9cefficiency\xe2\x80\x9d represents an external constraint that figures\nprominently in the copyrightability of computer programs. Altai, 982 F.2d at 708.\nGenerally speaking, \xe2\x80\x9clock-out\xe2\x80\x9d codes fall on the functional-idea rather than the\noriginal-expression side of the copyright line. Manufacturers of interoperable devices\nsuch as computers and software, game consoles and video games, printers and toner\ncartridges, or automobiles and replacement parts may employ a security system to\nbar the use of unauthorized components. To \xe2\x80\x9cunlock\xe2\x80\x9d and permit operation of the\n\n98\n\n\x0cprimary device (i.e., the computer, the game console, the printer, the car), the\ncomponent must contain either a certain code sequence or be able to respond\nappropriately to an authentication process. To the extent compatibility requires that a\nparticular code sequence be included in the component device to permit its use, the\nmerger and sc\xc3\xa8nes \xc3\xa0 faire doctrines generally preclude the code sequence from\nobtaining copyright protection. See Sega Enters., 977 F.2d at 1524 (\xe2\x80\x9cWhen specific\ninstructions, even though previously copyrighted, are the only and essential means of\naccomplishing a given task, their later use by another will not amount to infringement.\xe2\x80\x9d)\n(quoting National Commission on New Technological Uses of Copyrighted Works,\nFinal Report 20 (1979)) (emphasis added); Atari Games Corp. v. Nintendo of Am., Inc.,\n1993 WL 207548, at *1 (N.D.Cal. May 18, 1993) (\xe2\x80\x9cAtari III\xe2\x80\x9d) (\xe2\x80\x9cProgram code that is\nstrictly necessary to achieve current compatibility presents a merger problem, almost\nby definition, and is thus excluded from the scope of any copyright.\xe2\x80\x9d).\nIn trying to discern whether these doctrines apply, courts tend to \xe2\x80\x9cfocus on whether\nthe idea is capable of various modes of expression.\xe2\x80\x9d Mason v. Montgomery Data, Inc.,\n967 F.2d 135, 138 (5th Cir.1992) (quoting Franklin Computer, 714 F.2d at 1253); Atari\nI, 975 F.2d at 840 (\xe2\x80\x9cThe unique arrangement of computer program expression which\ngenerates the data stream does not merge with the process so long as alternate\nexpressions are available.\xe2\x80\x9d). The question, however, is not whether any alternatives\ntheoretically exist; it is whether other options practically exist under the\ncircumstances. See Altai, 982 F.2d at 708 (\xe2\x80\x9cWhile, hypothetically, there might be a\nmyriad of ways in which a programmer may effectuate certain functions within a\nprogram ... efficiency concerns may so narrow the practical range of choice as to\nmake only one or two forms of expression workable options.\xe2\x80\x9d); Atari I, 975 F.2d at\n840 (noting that \xe2\x80\x9cno external factor dictated the bulk of the program\xe2\x80\x9d and finding\nthe program copyrightable). In order to characterize a choice between alleged\nprogramming alternatives as expressive, in short, the alternatives must be feasible\nwithin real-world constraints.\nThe Supreme Court\xe2\x80\x99s decision in Feist helps to illustrate the point. In Feist, the\nalleged infringer had included 1,309 of the plaintiff\xe2\x80\x99s alphabetically-organized\ntelephone book listings in its own telephone directory. 499 U.S. at 344. The facts\ncomprising these listings, it was clear, theoretically could have been organized in\nother ways \xe2\x80\x94 for instance, by street address or phone number, or by the age or\nheight of the individual. But by virtue of tradition and settled expectations, the\nfamiliar alphabetical structure copied by the defendant amounted to the only\norganizational option available to the defendant. Id. at 363. For these reasons, the\nSupreme Court determined that alphabetical phone listings did not satisfy the low\nthreshold of originality for copyright protection. Id.; see Altai, 982 F.2d at 711\n(noting that although Feist dealt with factual compilations under 17 U.S.C. \xc2\xa7 101, the\ndecision\xe2\x80\x99s \xe2\x80\x9cunderlying tenets apply to much of the work involved in computer\nprogramming\xe2\x80\x9d under 17 U.S.C. \xc2\xa7 102(a)).\n***\nIn applying these requirements to this case, it helps to clarify the terms of debate\nbetween the parties. Lexmark claims copyright protection in, and infringement of,\nthe code that composes its Toner Loading Program. It has not alleged that SCC\ncopied any other portion of its chip, including any of the data on which the SHA-1\n99\n\n\x0calgorithm \xe2\x80\x94 the authentication sequence or \xe2\x80\x9csecret handshake\xe2\x80\x9d \xe2\x80\x94 appear.\nPresumably that is because SCC replaced Lexmark\xe2\x80\x99s SHA-1 function with a different\npublicly available encryption program to enable interoperability of its chip with\nLexmark\xe2\x80\x99s printers. When it comes to the merits of the infringement claim, the\nparties primarily debate whether the Toner Loading Program satisfies the originality\nrequirement (prong one), as distinct from whether any copying by SCC is\nsubstantially similar to the Lexmark chip (prong two). That is because the parties\nagree that SCC\xe2\x80\x99s SMARTEK chip copied all aspects of the Toner Loading Program.\nIn our view, the district court committed three related legal errors in determining\nthat Lexmark had a likelihood of prevailing on its copyright claim with respect to the\nToner Loading Program. First, the district court concluded that, because the Toner\nLoading Program \xe2\x80\x9ccould be written in a number of different ways,\xe2\x80\x9d it was entitled to\ncopyright protection. In refusing to consider whether \xe2\x80\x9cexternal factors such as\ncompatibility requirements, industry standards, and efficiency\xe2\x80\x9d circumscribed the\nnumber of forms that the Toner Loading Program could take, the district court\nbelieved that the idea-expression divide and accompanying principles of merger and\nsc\xc3\xa8nes \xc3\xa0 faire play a role only in the \xe2\x80\x9csubstantial similarity\xe2\x80\x9d analysis and do not apply\nwhen the first prong of the infringement test (copyrightability) is primarily at issue.\nIn taking this path, the district court relied on cases invoking the pronouncement [in\nNimmer on Copyright] that the idea-expression divide \xe2\x80\x9cconstitutes not so much a\nlimitation on the copyrightability of works, as it is a measure of the degree of\nsimilarity that must exist between a copyrightable work and an unauthorized copy.\xe2\x80\x9d\nAnd in concluding more generally that the copyrightability of a computer program\nturns solely on the availability of other options for writing the program, the court\nrelied on several cases from other circuits. See, e.g., Apple Computer, Inc. v. Formula\nInt\xe2\x80\x99l, Inc., 725 F.2d 521, 525 (9th Cir.1984); Franklin Computer, 714 F.2d at 1253;\nWhelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1240 (3d Cir. 1986); E.F.\nJohnson Co. v. Uniden Corp. of Am., 623 F.Supp. 1485, 1502 (D.Minn. 1985).\nThis reasoning, to start with, conflicts with Feist. As the Supreme Court\xe2\x80\x99s recent\ndecision suggests, one does not satisfy the originality requirement for copyright\nprotection merely by showing that the work could have been put together in\ndifferent ways. Just as it failed to suffice in Feist that the author of the competing\ntelephone book could have organized the listings in some manner other than the\nindividual\xe2\x80\x99s last name, so it does not suffice here that SCC could have written the\nToner Loading Program in some other way. As in Feist, the court must ask whether\nthe alternative ways of putting together the competing work are feasible in that\nsetting.\nNor does Nimmer support the district court\xe2\x80\x99s \xe2\x80\x9ca number of different ways\xe2\x80\x9d\nreasoning. As a matter of practice, Nimmer is correct that courts most commonly\ndiscuss the idea-expression dichotomy in considering whether an original work and a\npartial copy of that work are \xe2\x80\x9csubstantially similar\xe2\x80\x9d (as part of prong two of the\ninfringement test), since the copyrightability of a work as a whole (prong one) is less\nfrequently contested. But the idea-expression divide figures into the substantial\nsimilarity test not as a measure of \xe2\x80\x9csimilarity\xe2\x80\x9d; it distinguishes the original work\xe2\x80\x99s\nprotectable elements from its unprotectable ones, a distinction that allows courts to\ndetermine whether any of the former have been copied in substantial enough part to\n\n100\n\n\x0cconstitute infringement. Both prongs of the infringement test, in other words,\nconsider \xe2\x80\x9ccopyrightability,\xe2\x80\x9d which at its heart turns on the principle that copyright\nprotection extends to expression, not to ideas. See Brown Bag Software, 960 F.2d at\n1475-76 (noting that copyrightability is an aspect of both parts of the infringement\ntest); see also Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1545 (11th Cir.1996) (deciding\nthat district court erred by not permitting consideration of merger, sc\xc3\xa8nes \xc3\xa0 faire\ndoctrines in instance of literal copying); Lotus Dev., 49 F.3d at 815 (assessing whether\nthe literally copied menu command structure is copyrightable in light of \xc2\xa7 102(b)\xe2\x80\x99s\nlimitation); Whelan Assocs., 797 F.2d at 1236-37 (discussing sc\xc3\xa8nes \xc3\xa0 faire doctrine in\nconsidering copyrightability of computer program structure); Franklin Computer, 714\nF.2d at 1253 (discussing merger in context of copyrightability of computer operating\nsystem program). When a work itself constitutes merely an idea, process or method\nof operation, or when any discernible expression is inseparable from the idea itself,\nor when external factors dictate the form of expression, copyright protection does\nnot extend to the work. See Bateman, 79 F.3d at 1546 n. 28 (\xe2\x80\x9cCompatibility and other\nfunctionality challenges to originality ... are applied so as to deny copyright\nprotection to a particular work or portion of a work.\xe2\x80\x9d) (emphasis added); Mason, 967\nF.2d at 138 n. 5 (rejecting argument that merger doctrine applies only to question of\ninfringement and noting that \xe2\x80\x9cthis court has applied the merger doctrine to the\nquestion of copyrightability\xe2\x80\x9d).\nNeither do the cited cases support the district court\xe2\x80\x99s initial frame of reference.\nFranklin Computer, 714 F.2d 1240, and Formula International, 725 F.2d 521, involved\ncopies of Apple\xe2\x80\x99s operating system program \xe2\x80\x94 a program whose size and\ncomplexity is to the Toner Loading Program what the Sears Tower is to a lamppost.\nGiven the nature of the Apple program, it would have been exceedingly difficult to\nsay that practical alternative means of expression did not exist and indeed no\ndefendant in the cases advanced that argument. And Franklin Computer, 714 F.2d at\n1253, and Whelan Assocs., 797 F.2d at 1236-37, do not establish that any variation in\nthe modes of expression establishes copyrightability, as they acknowledge the\npotential relevance of the merger and sc\xc3\xa8nes \xc3\xa0 faire doctrines. While E.F. Johnson\nrejected the defendant\xe2\x80\x99s argument that the computer software program at issue was\nnot protectable because it was needed for \xe2\x80\x9ccompatibility\xe2\x80\x9d with a certain radio system,\nit did so only after finding that \xe2\x80\x9cthe exact duplication of the program was not the\n\xe2\x80\x98only and essential\xe2\x80\x99 means of achieving compatibility.\xe2\x80\x9d 623 F.Supp. at 1502.\nSecond, given the district court\xe2\x80\x99s mistaken view of the legal standard for\ndistinguishing protectable expression from unprotectable ideas, the constraints on\nthe Toner Loading Program established by the evidence need to be reconsidered. To\ndiscern whether \xe2\x80\x9coriginality\xe2\x80\x9d exists in the work, the court should ask whether the\nideas, methods of operation and facts of the program could have been expressed in\nany form other than that chosen by the programmer, taking into consideration the\nfunctionality, compatibility and efficiency demanded of the program.\nIn presenting evidence in support of its motion for a preliminary injunction,\nLexmark focused on establishing that the Toner Loading Program could have been\nwritten in other ways. Dr. Maggs, Lexmark\xe2\x80\x99s expert, described several possible\nalternatives in his declaration: (1) different constants and equations could be used; (2)\na lookup table could be used in lieu of equations; (3) some measure other than\n\n101\n\n\x0ctorque could be used to approximate toner level (e.g., the number of pages printed);\nor (4) the same equations could be used in a different sequence. He concluded that\nover 50 different programs could be written to substitute for the Toner Loading\nProgram.\nDr. Goldberg, SCC\xe2\x80\x99s expert, acknowledged that certain changes could be made to\nthe program, for example, by changing the sequence of elements in the program, or\nby writing the Toner Loading Program in a different programming language\naltogether. But Dr. Goldberg conceded this point only as a theoretical matter, as he\nconcluded that functionality and efficiency considerations precluded any material\nchanges to the Toner Loading Program.\nDr. Goldberg concluded that several external constraints limit the options available\nin designing the Toner Loading Program. For one, the Printer Engine Program that\ndownloads and executes the program understands only a single programming\nlanguage composed of eight simple commands. For another, the program must\nconsist of only 55 bytes because the printer downloads only these particular bytes.\nEfficiency considerations and the physical realities of the printer and toner cartridge\nalso restrict the forms that the Toner Loading Program could take. As a result, Dr.\nGoldberg concluded, these external factors together \xe2\x80\x9cdictate the way that the simple\ntoner loading program looks,\xe2\x80\x9d and the resulting program is a \xe2\x80\x9cno-thought translation\nof the formulas to the language that the internal loading program must be written in,\nand the programmer doesn\xe2\x80\x99t have much choice.\xe2\x80\x9d Dr. Goldberg responded to Dr.\nMaggs\xe2\x80\x99 testimony that the Toner Loading Program could take alternative forms by\nnoting that Dr. Maggs\xe2\x80\x99 proposed changes were trivial \xe2\x80\x94 that they did not make any\n\xe2\x80\x9csubstantial difference to the nature of the program\xe2\x80\x9d \xe2\x80\x94 or that they were so\ninefficient and repetitive as to be \xe2\x80\x9cridiculous.\xe2\x80\x9d Instead, Dr. Goldberg concluded, the\nToner Loading Program as it is written is the most \xe2\x80\x9cstraightforward, efficient, natural\nway to express the program.\xe2\x80\x9d By contrast, Dr. Maggs\xe2\x80\x99 testimony did not reference\nany of these functional considerations discussed by Goldberg, meaning that the\nrecord fails to establish any affirmative support for the contention that Dr. Maggs\xe2\x80\x99\nproposed alternatives satisfy the memory restrictions of the program.\nEven aside from Dr. Goldberg\xe2\x80\x99s testimony that the Toner Loading Program is the\nmost efficient means of calculating toner levels, the alternatives suggested by Dr.\nMaggs do not appear to support the district court\xe2\x80\x99s initial conclusion that the\nprogram is expressive. Dr. Maggs\xe2\x80\x99 first and third suggestions \xe2\x80\x94 that different\nequations and values or a different means of measuring toner level altogether could\nhave been used \xe2\x80\x94 do not appear to represent alternative means of expressing the\nideas or methods of operations embodied in the Toner Loading Program; they\nappear to be different ideas or methods of operation altogether. Selection from\namong competing ideas or methods of operation generally does not result in\ncopyright-protectable expression. See Bateman, 79 F.3d at 1546 n.29 (\xe2\x80\x9cGenerally\nthere is more than one method of operation or process that can be used to perform a\nparticular computer program function. However, methods of operation and\nprocesses are not copyrightable.\xe2\x80\x9d); see also Am. Dental Ass\xe2\x80\x99n v. Delta Dental Plans\nAss\xe2\x80\x99n, 126 F.3d 977, 980 (7th Cir.1997) (\xe2\x80\x9cA lamp may be entirely original, but if the\nnovel elements are also functional the lamp cannot be copyrighted.\xe2\x80\x9d). Nor would the\nuse of a \xe2\x80\x9clookup table\xe2\x80\x9d appear to differ meaningfully from the use of other equations\n\n102\n\n\x0cdirectly. Instead of executing a mathematical formula on a given input, this program\nmerely \xe2\x80\x9clooks up\xe2\x80\x9d in a data table the output of that same formula for the given input\nvalue. Finally, Dr. Maggs\xe2\x80\x99 fourth suggestion \xe2\x80\x94 that the same equations could be\nreordered \xe2\x80\x94 does not appear to show originality because such alterations may be\ntoo trivial to support a finding of creative expression. See M.M. Bus. Forms, 472 F.2d\nat 1140 (holding that paraphrasing of words on legal forms does not contain the\nrequisite originality for copyright protection).\nTo the extent these alternatives suggest any originality in the Toner Loading Program,\nat any rate, the quantum of originality may well be de minimis and accordingly\ninsufficient to support the validity of Lexmark\xe2\x80\x99s copyright in the work. See Mitel, Inc.\nv. Iqtel, Inc., 124 F.3d 1366, 1373-74 (10th Cir.1997) (determining that plaintiff\xe2\x80\x99s\n\xe2\x80\x9carbitrary selection\xe2\x80\x9d of several numbers required only \xe2\x80\x9cde minimis creative effort\xe2\x80\x9d\nand did not \xe2\x80\x9cevince enough originality to distinguish authorship\xe2\x80\x9d); cf. Sega Enters.,\n977 F.2d at 1524 n. 7 (noting that 20-byte code is of de minimis length and therefore\nlikely a \xe2\x80\x9cword\xe2\x80\x9d or \xe2\x80\x9cshort phrase\xe2\x80\x9d that is not protected by copyright law); Murray Hill\nPubl\xe2\x80\x99ns, Inc. v. ABC Comm\xe2\x80\x99ns, Inc., 264 F.3d 622, 633 (6th Cir.2001) (noting that short\nmovie line was \xe2\x80\x9ca phrase or slogan not worthy of copyright protection in its own\nright\xe2\x80\x9d). Because the district court initially looked at these issues and this evidence\nthrough the wrong frame of reference, its conclusion that the Toner Loading\nProgram had sufficient originality to obtain copyright protection does not support\nthe preliminary injunction. At the permanent injunction stage of this dispute, we\nleave it to the district court in the first instance to decide whether the Toner Loading\nProgram has sufficient originality to warrant copyright protection.\nThird, and perhaps most significantly, the district court erred in assessing whether\nthe Toner Loading Program functions as a lock-out code. Even if the constraints\ndescribed by Dr. Goldberg \xe2\x80\x94 the programming language, the program size,\nefficiency concerns \xe2\x80\x94 did not dictate the content of the Toner Loading Program,\nthe fact that it also functions as a lock-out code undermines the conclusion that\nLexmark had a probability of success on its infringement claim.\nThe Toner Loading Program, recall, serves as input to the checksum operation that\nis performed each time the printer is powered on or the printer door is opened and\nclosed (i.e., for toner cartridge replacement). After downloading a copy of the Toner\nLoading Program to calculate toner levels, the Printer Engine Program runs a\ncalculation \xe2\x80\x94 the checksum \xe2\x80\x94 using every data byte of the Toner Loading Program\nas input. The program then compares the result of that calculation with a \xe2\x80\x9cchecksum\nvalue\xe2\x80\x9d that is located elsewhere on Lexmark\xe2\x80\x99s toner cartridge chip. If any single byte\nof the Toner Loading Program is altered, the checksum value will not match the\nchecksum calculation result. Only if the checksum value is correspondingly changed\nto accommodate any alterations in the data bytes will the printer function.\nIn addition to its general conclusion that external constraints on the program were\nnot relevant, the district court concluded that the checksum operation did not\noperate as a strict constraint on the content of the Toner Loading Program because\n\xe2\x80\x9cSCC\xe2\x80\x99s identical copying of Lexmark\xe2\x80\x99s Toner Loading Programs went beyond that\nwhich was necessary for compatibility.\xe2\x80\x9d According to the district court, the program\ncould be altered rather simply, even in view of the checksum operation, because\nreasonable trial and error of no more than 256 different data combinations would\n103\n\n\x0chave enabled SCC to discover and encode the correct checksum value on its chip. In\nreaching this conclusion, the court downplayed the significance of Dr. Goldberg\xe2\x80\x99s\ntestimony regarding the importance of contextual information to the ease or\ndifficulty of guessing the correct checksum value, saying that Dr. Goldberg called the\ntask \xe2\x80\x9cextraordinarily difficult,\xe2\x80\x9d then dismissing his testimony without further\nexplanation. Dr. Goldberg, however, did not describe this endeavor as\n\xe2\x80\x9cextraordinarily difficult\xe2\x80\x9d but as \xe2\x80\x9ccomputationally impossible,\xe2\x80\x9d (emphasis added) \xe2\x80\x94 a\npoint that Lexmark did not then, and does not now, refute. Contrary to Judge\nFeikens\xe2\x80\x99 suggestion, moreover, Lexmark offered no evidence to show that the task\nof \xe2\x80\x9cturning off\xe2\x80\x9d the checksum operation altogether (without contextual information)\nwould be any different from, or any less arduous than, the task of altering the\nchecksum value to accommodate another program.\nThe difficulty of deriving the proper checksum value and the corresponding degree\nto which the checksum operation acts as a constraint on the content of the bytes\ncomprising the Toner Loading Program may be an open question at the permanent\ninjunction phase. But for purposes of the preliminary injunction, Dr. Goldberg\xe2\x80\x99s\nunchallenged testimony that it would be \xe2\x80\x9ccomputationally impossible\xe2\x80\x9d to modify the\nchecksum value without contextual information suffices to establish that the\nchecksum operation imposes a compatibility constraint in the most literal sense\npossible: if any single byte of the Toner Loading Program is altered, the printer will\nnot function. On this record, pure compatibility requirements justified SCC\xe2\x80\x99s\ncopying of the Toner Loading Program.\n***\nIn defense of the district court\xe2\x80\x99s decision, Lexmark raises several other arguments, all\nunavailing. First, Lexmark notes that it \xe2\x80\x9ccreatively inserted\xe2\x80\x9d in the Toner Loading\nProgram a computer code representation of its stock ticker symbol, \xe2\x80\x9cLXK.\xe2\x80\x9d\nLexmark describes this segment as \xe2\x80\x9cnon-functional\xe2\x80\x9d because it does not translate\ninto source code contributing to the toner-calculating program. It is not clear\nwhether these three letters would support a finding of creative expression in the\nwork as a whole. See Sega Enters., 977 F.2d at 1524 n. 7 (noting that Sega\xe2\x80\x99s 20-byte\ninitialization code is of de minimis length and therefore likely a \xe2\x80\x9cword\xe2\x80\x9d or \xe2\x80\x9cshort\nphrase\xe2\x80\x9d that is not protected by copyright law as described in 37 C.F.R. \xc2\xa7 202.1(a));\nsee also Feist, 499 U.S. at 344 (concluding that phone book listings are not\ncopyrightable even though the listings contained four fictitious listings that the\nplaintiff included for infringement detection purposes). What is clear is that the bytes\ncontaining the \xe2\x80\x9cLXK\xe2\x80\x9d reference are functional in the sense that they, like the rest of\nthe Toner Loading Program, also serve as input to the checksum operation and as a\nresult amount to a lock-out code that the merger and sc\xc3\xa8nes \xc3\xa0 faire doctrines preclude\nfrom obtaining protection.\nSecond, Lexmark argues that if the Toner Loading Program is not copyrightable,\nthen \xe2\x80\x9cmost computer programs would not be copyrightable.\xe2\x80\x9d But the slope of this\ndecision is neither as slippery nor as steep as Lexmark suggests. Most computer\nprograms do not simultaneously operate as a lock-out code that is \xe2\x80\x9ccomputationally\nimpossible\xe2\x80\x9d to alter without input from the programmer; and most programs are not\nas brief as this one.\n\n104\n\n\x0cIn reaching this conclusion, we do not mean to say that brief computer programs are\nineligible for copyright protection. Short programs may reveal high levels of\ncreativity and may present simple, yet unique, solutions to programming quandaries.\nJust as a mathematician may develop an elegant proof, or an author may express\nideas in a spare, simple, but creative manner, see, e.g., e.e. cummings, Selected Poems\n(Richard S. Kennedy ed., 1994), so a computer programmer may develop a program\nthat is brief and eligible for protection. But unless a creative flair is shown, a very\nbrief program is less likely to be copyrightable because it affords fewer opportunities\nfor original expression.\nThird, invoking the Federal Circuit\xe2\x80\x99s decision in Atari I, 975 F.2d at 840, Lexmark\nargues that even if the Toner Loading Program amounts to a lock-out code, it still\nmay be eligible for protection. In Atari I, Nintendo developed a program (known as\n\xe2\x80\x9c10NES\xe2\x80\x9d) that blocked its game console from accepting unauthorized game\ncartridges. Relying on this program, Nintendo sold game cartridges that generated a\ndata stream that \xe2\x80\x9cunlocked\xe2\x80\x9d the game console, allowing it to load and run the game.\nThe Federal Circuit determined that the 10NES program was copyrightable despite\narguments that the program constituted unprotectable ideas rather than expression\nand that the merger doctrine precluded copyright protection.\nThe Federal Circuit\xe2\x80\x99s rationale for accepting copyright protection for the 10NES\nprogram does not undermine our conclusion because the 10NES program was not a\n\xe2\x80\x9clock out\xe2\x80\x9d code in the same sense that the Toner Loading Program is. In Atari, the\ndata bytes of the 10NES program did not themselves do the \xe2\x80\x9cunlocking\xe2\x80\x9d of the\ngame console; the program, when executed, generated an arbitrary stream of data\nthat in turn enabled the console to function. That same data stream, the court\nconcluded, could have been produced by a number of alternative programs; for this\nreason, the expression contained in the computer program did not \xe2\x80\x9cmerge\xe2\x80\x9d with the\nprocess. Id. (\xe2\x80\x9cThe unique arrangement of computer program expression which\ngenerates that data stream does not merge with the process so long as alternate\nexpressions are available. In this case, Nintendo has produced expert testimony\nshowing a multitude of different ways to generate a data stream which unlocks the\nNES console.\xe2\x80\x9d) id. (\xe2\x80\x9c[N]o external factor dictated the bulk of the [10NES]\nprogram.\xe2\x80\x9d). Here, by contrast, the data bytes comprising the Toner Loading Program\nthemselves act as the input to the checksum operation that must be successfully\ncompleted for the printer to operate. None of these bytes of the program can be\naltered without impeding printer functionality given the compatibility requirements\ncreated by the checksum operation. See Atari III, 1993 WL 207548, at *1\n(distinguishing current compatibility requirements from future ones, and excluding\nprogram code \xe2\x80\x9cthat is strictly necessary\xe2\x80\x9d to comply with the former from copyright\nprotection under the merger concept). Compatibility requirements in Atari, in short,\ndid not preclude the possibility of substituting other programs for the 10NES, while\nthey do here.\nFor like reasons, Judge Feikens is correct that a poem in the abstract could be\ncopyrightable. But that does not mean that the poem receives copyright protection\nwhen it is used in the context of a lock-out code. Similarly, a computer program may\nbe protectable in the abstract but not generally entitled to protection when used\nnecessarily as a lock-out device.\n\n105\n\n\x0cNotes and questions\n(1) In Lexmark Int\xe2\x80\x99l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004), the\nSixth Circuit held that a simple computer program used as a lock-out device was not\ncopyrightable because of the merger and scenes a faire doctrines. In a part of the decision not\nextracted here, the court also indicated that even if it were copyrightable the defendant\xe2\x80\x99s use\nto enable compatible printer cartridges to work in Lexmark printers would have been fair use.\n(2) The Sixth Circuit treats merger and sc\xc3\xa8nes \xc3\xa0 faire as a matter of whether feasible\nalternatives exist within \xe2\x80\x9creal-world constraints\xe2\x80\x9d and not simply whether alternatives exist in\ntheory. The court of appeals faulted the district court (at 537) for \xe2\x80\x9crefusing consider whether\nexternal factors such as compatibility requirements, industry standards, and efficiency\ncircumscribed the number of forms that the Toner Loading Program could take.\xe2\x80\x9d\n(3) Notice that the Sixth Circuit treats merger and sc\xc3\xa8nes \xc3\xa0 faire as limitations on copyright\nscope that can arise after the work has been created. The court says (at 536) that the question\nis not simply \xe2\x80\x9cwhether any alternatives theoretically exist\xe2\x80\x9d but rather \xe2\x80\x9cwhether other options\npractically exist under the circumstances\xe2\x80\x9d and of course, circumstances change over time.\nThis is consistent with Baker v. Selden. Recall that in the Court in Baker held that Baker did\nnot infringe the copyright in Selden\xe2\x80\x99s book on a novel bookkeeping system, even though\nBaker copied the forms used to implement the system. When Selden devised his\nbookkeeping system initially he no doubt had many choices to make and some of these\nchoices might be thought of as creative, after a fashion. And yet when Baker came to\nimplement the same system he was left with relatively few choices. This is not to say that\nBaker had literally no choice but to copy the forms exactly, indeed Baker\xe2\x80\x99s forms were\nsomewhat different Selden\xe2\x80\x99s.\n(4) In a more recent computer software case, Oracle America, Inc. v. Google Inc., 750 F.3d at\n1363-1364, the Federal Circuit held (arguably, against the weight of authority), takes the\nposition that a court must focus on the choices available to the author of the copyrighted\nwork at the time of creation; thus constraints faced by the later author and concerns such as\ncompatibility and interoperability are irrelevant to a merge or sc\xc3\xa8nes \xc3\xa0 faire analysis.\n(5) The Lexmark court rejects the position of the Nimmer treatise that merger and sc\xc3\xa8nes \xc3\xa0\nfaire are only applicable to assessing substantial similarity and holds that an analysis of\ncopyrightability informed by the doctrines of merger and sc\xc3\xa8nes \xc3\xa0 faire apply to establishing\nthe existence of a valid copyright and to determine whether a particular act of reproduction\namounts to infringement.\n(6) Does the court\xe2\x80\x99s conclusion in Lexmark (at 538) that \xe2\x80\x9cwhen external factors dictate the\nform of expression, copyright protection does not extend to the work\xe2\x80\x9d make sense in\nabsolute terms? What if Lexmark had a poem that functioned as a lock-out code, would the\npoem be uncopyrightable for all purposes, or simply when used in that one functionally\nconstrained manner?\nAt 544 the court notes that:\na poem in the abstract could be copyrightable. But that does not mean that the\npoem receives copyright protection when it is used in the context of a lock-out code.\nSimilarly, a computer program may be protectable in the abstract but not generally\nentitled to protection when used necessarily as a lock-out device.\n\n106\n\n\x0cIs the court saying that when a poem used as a lock-out device it loses copyright protection,\nor that it retains copyright generally, but is not infringed by use for a similar function?\n\nThe law itself is not copyrightable\nIn Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 668 (1834) the Supreme Court held unanimously,\nalthough with very little explanation, that \xe2\x80\x9cno reporter has or can have any copyright in the\nwritten opinions delivered by this Court; and that the judges thereof cannot confer on any\nreporter any such right.\xe2\x80\x9d\nIn Banks v. Manchester, 128 U.S. 244 (1888) the Court addressed the same issue with respect\nto the opinions of state court judges. In Banks, an Ohio statute provided for the\nappointment of an official reporter for the Supreme Court of Ohio, and tasked him with\ncompiling the decisions and other materials authored by the judges and securing \xe2\x80\x9cfor the\nbenefit of the state\xe2\x80\x9d a copyright on the compilations. That reporter was Mr. E.L. DeWitt.\nOhio statute also required the Secretary of State to contract with a publisher, who would be\ngiven the exclusive right to publish the reports compiled by the official court reporter \xe2\x80\x9cso far\nas the state can confer [such right].\xe2\x80\x9d The contract was awarded to Derby & Co. who\nassigned it in turn to Banks & Brothers. The controversy in Banks arose when a rival\npublisher sought to publish some of the same official reports of decisions of the Supreme\nCourt of Ohio in the American Law Journal.\nBanks v. Manchester, 128 U.S. 244 (1888)\nMr. Justice Blatchford delivered the opinion of the court.\n\xe2\x80\xa6 We are of opinion that these provisions of the statute do not cover the case of\nthe State of Ohio in reference to what Mr. DeWitt undertook to obtain a copyright\nfor, for the benefit of that State, in the present instance. Mr. DeWitt, although he\nmay have been a citizen of the United States or a resident therein, was not the author,\ninventor, designer, or proprietor of the syllabus, the statement of the case, or the\ndecision or opinion of the court. The State, therefore, could not become the assignee\nof Mr. DeWitt, as such author, inventor, designer, or proprietor. The State cannot\nproperly be called a citizen of the United States or a resident therein, nor could it\never be in a condition to fall within the description in \xc2\xa7 4952, or \xc2\xa7 4954 [, the\nrelevant sections of the Copyright Act].\nThe copyright claimed to have been taken out by Mr. DeWitt in the present case,\nbeing a copyright \xe2\x80\x9cfor the State,\xe2\x80\x9d is to be regarded as if it had been a copyright taken\nout in the name of the State. Whether the State could take out a copyright for itself,\nor could enjoy the benefit of one taken out by an individual for it, as the assignee of\na citizen of the United States or a resident therein, who should be the author of a\nbook, is a question not involved in the present case, and we refrain from considering\nit and from considering any other question than the one above indicated. In no\nproper sense can the judge who, in his judicial capacity, prepares the opinion or\ndecision, the statement of the case and the syllabus or head note, be regarded as their\nauthor or their proprietor, in the sense of \xc2\xa7 4952, so as to be able to confer any title\nby assignment on the State, sufficient to authorize it to take a copyright for such\nmatter, under that section, as the assignee of the author or proprietor.\n107\n\n\x0cJudges, as is well understood, receive from the public treasury a stated annual salary,\nfixed by law, and can themselves have no pecuniary interest or proprietorship, as\nagainst the public at large, in the fruits of their judicial labors. This extends to\nwhatever work they perform in their capacity as judges, and as well to the statements\nof cases and head notes prepared by them as such, as to the opinions and decisions\nthemselves. The question is one of public policy, and there has always been a judicial\nconsensus, from the time of the decision in the case of Wheaton v. Peters, 8 Pet. 591,\nthat no copyright could under the statutes passed by Congress, be secured in the\nproducts of the labor done by judicial officers in the discharge of their judicial duties.\nThe whole work done by the judges constitutes the authentic exposition and\ninterpretation of the law, which, binding every citizen, is free for publication to all,\nwhether it is a declaration of unwritten law, or an interpretation of a constitution or a\nstatute. Nash v. Lathrop, 142 Mass. 29, 35. In Wheaton v. Peters, it was said by this court,\nthat it was \xe2\x80\x9cunanimously of opinion that no reporter has or can have any copyright\nin the written opinions delivered by this court; and that the judges thereof cannot\nconfer on any reporter any such right.\xe2\x80\x9d What a court, or a judge thereof, cannot\nconfer on a reporter as the basis of a copyright in him, they cannot confer on any\nother person or on the State.\nNotes and questions:\n(1) In Banks v. Manchester, 128 U.S. 244 (1888) the Supreme Court held that court reporter for\nthe Ohio Supreme Court could not hold copyright in the opinions of the Court. The court\nsaid (at 253) that as a matter of public policy \xe2\x80\x9cno copyright could under the statutes passed\nby Congress, be secured in the products of the labor done by judicial officers in the\ndischarge of their judicial duties.\xe2\x80\x9d Justice Blatchford further explained (at 253-254) that:\nThe whole work done by the judges constitutes the authentic exposition and\ninterpretation of the law, which, binding every citizen, is free for publication to all,\nwhether it is a declaration of unwritten law, or an interpretation of a constitution or\na statute.\n\n(2) However, less than a month later in Callaghan v. Myers, 128 U.S. 617 (1888) the Court\ncame to a different conclusion than it had reached in Wheaton v. Peters and Banks v. Manchester.\nIn Callaghan, the Court held that although \xe2\x80\x9cthere can be no copyright in the opinions of the\njudges, or in the work done by them in their official capacity as judges,\xe2\x80\x9d the additional\nintellectual contribution of the court reporter\xe2\x80\x94things such as organizing the cases; writing\nannotations such as headnotes and syllabi to appear alongside the opinions in the reports\xe2\x80\x94\nmay be entitled to copyright protection in the hands of the reporter as a private individual.\nThe Court said (at 647) that there was \xe2\x80\x9cno ground of public policy on which a reporter who\nprepares a volume of law reports, of the character of those in this case, can ... be debarred\nfrom obtaining a copyright for the volume which will cover the matter which is the result of\nhis intellectual labor.\xe2\x80\x9d\n(3) Section 8 of the Copyright Act of 1909 provided that \xe2\x80\x9cno copyright shall subsist in the\noriginal text of any work which is in the public domain ... or in any publication of the United\nStates Government, or any reprint, in whole or in part, thereof.\xe2\x80\x9d A similar provision persists\nin section 105 of the current Act.\n\n108\n\n\x0c17 U.S. Code \xc2\xa7 105. Subject matter of copyright: United States Government\nworks\nCopyright protection under this title is not available for any work of the United\nStates Government, but the United States Government is not precluded from\nreceiving and holding copyrights transferred to it by assignment, bequest, or\notherwise.\n\nAlthough section 105 only applies to the federal government, it is understood that Supreme\nCourt\xe2\x80\x99s broader prohibition still applies with respect to state laws, municipal ordinances,\ncourt decisions, and similar official documents.34\n(4) In Veeck v. Southern Building Code Congress International, Inc., 293 F.3d 791 (5th Cir. 2002) (en\nbanc), the Fifth Circuit held that privately authored building codes lost their copyright status\nonce they were incorporated into law. However, various other courts have declined to\nextend the rule in other similar contexts.35\nRecent cases: Code Revision Commission v. Public Resource\nThe issue in Code Revision Commission v. Public.Resource.Org, Inc., 906 F. 3d 1229 (11th Cir. 2018)\nwas whether the Official Code of Georgia Annotated (OCGA) produced under the\nsupervision of the Code Revision Commission was copyrighted. The OCGA is comprised of\nboth legislative text (obviously uncopyrightable) and annotations that provide explanations\nand cross-references. As the court explained:\nAppearing alongside the statutory text are various annotations, consisting of history\nlines, repeal lines, cross references, commentaries, case notations, editor\xe2\x80\x99s notes,\nexcerpts from law review articles, summaries of opinions of the Attorney General of\nGeorgia, summaries of advisory opinions of the State Bar, and other research\nreferences.\n\nHowever,\nDespite the fact that they are part of the official Code, Georgia law says that the\nannotations themselves do not have the force of law in the way that the statutory\nportions of the Code do.\xe2\x80\x9d\n\nA highly abbreviated extract of the court of appeals\xe2\x80\x99 decision follows. The Supreme Court\nwill hear an appeal in this case in the 2019 Term.\nCode Revision Commission v. Public.Resource.Org, Inc., 906 F. 3d 1229 (11th Cir.\n2018)\nCircuit Judge Marcus\n\xe2\x80\xa6 The ultimate inquiry posed by the rule in Banks is thus whether a work is\nattributable to the constructive authorship of the People, which is to say whether it\nwas created by an agent of the People in the direct exercise of sovereign authority.\n34\n\nSee Copyright Office\xe2\x80\x99s 1961 Register\xe2\x80\x99s Report, at 129-30.\n\nSee e.g. See, e.g., CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61 (2d Cir. 1994);\nPractice Mgmt. Info. Corp. v. Am. Med. Ass\xe2\x80\x99n, 121 F.3d 516 (9th Cir. 1997), amended, 133 F.3d 1140 (9th Cir.\n1998); Cty. of Suffolk v. First Am. Real Estate Sols., 261 F.3d 179, 193 (2d Cir. 2001); John G. Danielson, Inc.\nv. Winchester-Conant Properties, Inc., 322 F.3d 26 (1st Cir. 2003)\n35\n\n109\n\n\x0cStatutes and judicial opinions are the most obvious examples of what falls within the\nambit of the rule.\nThis does not mean that statutes, judicial opinions, and other texts that carry the\nclear force of law are the only works that may be subject to the rule. For one thing,\nrelying, as the district court did, on a bright line distinction between edicts that have\nthe force of law and those that do not to apply the Banks rule simply does not work\nin some cases. This is one of them. It is clear to us that there exists a zone of\nindeterminacy at the frontier between edicts that carry the force of law and those\nthat do not. In this small band of cases a government work may not be characterized\nas law, and yet still be so sufficiently law-like as to implicate the core policy interests\nundergirding Banks.\nStatutory texts are the kinds of works most obviously subject to the rule announced\nin Banks. Because statutes are the prototypical works to which the rule applies, we\nrely on the statutory example as the lodestar for our inquiry. Whether or not a work\nis subject to the rule is dependent on whether the work is the law, or sufficiently like\nthe law, so as to be deemed the product of the direct exercise of sovereign authority,\nand therefore attributable to the constructive authorship of the People. Basing the\ninquiry on whether a work is similar enough to the law so as to be attributable to the\nPeople, of course, does little to diminish the difficulty of applying the Banks rule in\nthe unique circumstances presented here. But it does point us toward the right way\nof structuring our analysis.\nPut simply, there are certain things that make the law what it is. The law is written by\nparticular public officials who are entrusted with the exercise of legislative power; the\nlaw is, by nature, authoritative; and the law is created through certain, prescribed\nprocesses, the deviation from which would deprive it of legal effect. Each of these\nattributes is a hallmark of law. These characteristics distinguish written works that\ncarry the force of law from all other works. Since we are concerned here with\nwhether a work is attributable to the constructive authorship of the People, these\nfactors guide our inquiry into whether a work is law or sufficiently law-like so as to\nbe subject to the rule in Banks.\nAn analysis of these factors yields the conclusion that the annotations in the OCGA,\nwhile not having the force of law, are part and parcel of the law. They are so\nenmeshed with Georgia\xe2\x80\x99s law as to be inextricable. The annotations are themselves\nlaw-like insofar as we examine who made them, how they were made, and the role\nthey play in the legislative and jurisprudential spheres of Georgia\xe2\x80\x99s public life. In\nconsequence, they too represent a work, like the statutes themselves, that is\nconstructively authored by the People. They are therefore uncopyrightable.\n\xe2\x80\xa6\nOur inquiry has focused on whether the official annotations represent a direct\nexercise of sovereign power, and are therefore attributable to the constructive\nauthorship of the People. In making this determination, we have compared the work\nin question to works that represent the prototypical exercise of sovereign power,\nwhich is to say statutes and official interpretations of the law. We have been guided\nby three factors that may be regarded as the defining characteristics of law \xe2\x80\x94 the\n\n110\n\n\x0cidentity of the public official who created the work; the nature of the work; and the\nprocess by which the work was produced.\nWhen the wrong public official exercises a power delegated in the law, when the\npower exercised is of a type not contemplated by the law, or when the power is\nexercised outside the procedural channels prescribed by the law, the act cannot be\nconsidered a valid exercise of the sovereign power. From these principles, the\ncorollary logically follows: when the action taken is of the type entrusted by the\nPeople to their agents, when it is wielded by a public official whose assigned duties\ninclude the exercise of sovereign power, and when it is exercised pursuant to\nconstitutionally designated processes, it more likely represents an exercise of the\nsovereign authority. The reasoning found in Banks also suggests the importance of\nthese factors.\nAll of them point strongly toward the conclusion that the OCGA annotations are\nnot copyrightable. The OCGA annotations are created by Georgia\xe2\x80\x99s legislative body,\nwhich has been entrusted with exercising sovereign power on behalf of the people of\nGeorgia. While the annotations do not carry the force of law in the way that statutes\nor judicial opinions do, they are expressly given legal significance so that, while not\n\xe2\x80\x9claw,\xe2\x80\x9d the annotations undeniably are authoritative sources on the meaning of\nGeorgia statutes. The legislature has stamped them \xe2\x80\x9cofficial\xe2\x80\x9d and has chosen to\nmake them an integral part of the official codification of Georgia\xe2\x80\x99s laws. By wrapping\nthe annotations and the statutory text into a single unified edict, the Georgia General\nAssembly has made the connection between the two inextricable and, thereby,\nensured that obtaining a full understanding of the laws of Georgia requires having\nunfettered access to the annotations. Finally, the General Assembly\xe2\x80\x99s annual\nadoption of the annotations as part of the laws of Georgia is effected by the\nlegislative process \xe2\x80\x94 namely bicameralism and presentment \xe2\x80\x94 that is ordinarily\nreserved for the exercise of sovereign power.\nThus, we conclude that the annotations in the OCGA are attributable to the\nconstructive authorship of the People. To advance the interests and effect the will of\nthe People, their agents in the General Assembly have chosen to create an official\nexposition on the meaning of the laws of Georgia. In creating the annotations, the\nlegislators have acted as draftsmen giving voice to the sovereign\xe2\x80\x99s will. The resulting\nwork is intrinsically public domain material, belonging to the People, and, as such,\nmust be free for publication by all.\nAs a result, no valid copyright can subsist in these works. We, therefore, reverse the\njudgment of the district court, direct that judgment be entered for appellant PRO,\nvacate the district court\xe2\x80\x99s order granting the State of Georgia injunctive relief, and\nremand for further proceedings consistent with this opinion.\nRecent cases: ASTM v. Public Resource\nThe issue in ASTM v. Pub.Resource.Org was whether and to what extent privately developed\ncodes and standards retain the copyright protection once they become incorporated into\nfederal, state, or municipal law. As part of its self-proclaimed mission is \xe2\x80\x9cto make the law\nand other government materials more widely available,\xe2\x80\x9d Public.Resource.Org (\xe2\x80\x9cPRO\xe2\x80\x9d)\nposted copies of a number of incorporate standards to its public website. Between 2012 and\n\n111\n\n\x0c2014, PRO uploaded hundreds of technical standards, which, collectively, were downloaded\ntens of thousands of times. In mid-2013, several standards organizations, including the\nAmerican Society for Testing & Materials sued PRO, asserting claims of copyright\ninfringement, among other things.\nTens of thousands of technical standards developed by private organizations are\nincorporated into or referenced by law in different ways and with varying consequences. As\nthe court explained:\nWhen agencies or legislatures incorporate private standards into law, they often do\nso by reference\xe2\x80\x94that is, instead of spelling out the requirements of a standard\nwithin legislative or regulatory text, they reference the standard being incorporated\nand direct interested parties to consult that standard in order to understand their\nobligations. \xe2\x80\xa6 Just as the incorporation process varies, so too\xe2\x80\x94and this is central\nto the issues before us\xe2\x80\x94do the legal consequences of any given incorporation. This\nis hardly surprising, given that federal, state, and local legislatures and agencies have\nincorporated by reference thousands of technical standards. Indeed, by ASTM\xe2\x80\x99s\nown count, the Code of Federal Regulations alone has incorporated by reference\nover 1,200 of its standards. This appeal, which concerns ten standards incorporated\nby reference into law, reflects just a sliver of that diversity.\nOne way in which the incorporated standards vary is how readily they resemble\nordinary, binding law. At one end of this spectrum lie incorporated standards that\ndefine one\xe2\x80\x99s legal obligations just as much as, say, a local building code\xe2\x80\x94except that\nthe specific legal requirements are found outside the two covers of the codebook.\nThe NFPA 70 tank-barge plug specification discussed above, which the relevant\nregulation mentions by name in making compliance mandatory, is one such example.\nAnother is the incorporation of ASTM D975-07, the \xe2\x80\x9cStandard Specification for\nDiesel Fuel Oils,\xe2\x80\x9d into the U.S. Code. It provides that a retailer of certain biofuels\nneed not affix any special labels to its fuel so long as the fuel \xe2\x80\x9cmeets ASTM D975\ndiesel specifications.\xe2\x80\x9d 42 U.S.C. \xc2\xa7 17021(b)(1). These laws impose legally binding\nrequirements indistinguishable from, for example, a cigarette-labeling obligation, see\n15 U.S.C. \xc2\xa7 1333(a), except that the federal law imposing that obligation expressly\nspecifies, without reference to an external standard, exactly what qualifies as a\ncigarette, see id. \xc2\xa7 1332(1).\nAt the other end of the spectrum lie standards that serve as mere references but\nhave no direct legal effect on any private party\xe2\x80\x99s conduct. One example is the\nincorporation of ASTM D86-07, the \xe2\x80\x9cStandard Test Method for Distillation of\nPetroleum Products and Liquid Fuels at Atmospheric Pressure,\xe2\x80\x9d which a federal\nregulation describes as a \xe2\x80\x9creference procedure\xe2\x80\x9d used by the Environmental\nProtection Agency and regulated motor-vehicle manufacturers to determine whether\nthe boiling point for certain gasoline used for \xe2\x80\x9cexhaust and evaporative emission\ntesting\xe2\x80\x9d falls within a permissible range. 40 C.F.R. \xc2\xa7 86.113-04(a)(1). The regulation\ncreates only one relevant legal obligation: the regulated entity, in testing vehicular\nemissions, must use gasoline that meets specifications expressly laid out within the\nregulation itself. The incorporation of an external standard merely tells the regulated\nentity how it can ensure that the gasoline it uses in fact satisfies the codified\nrequirements.\n\nJudge Tatal\xe2\x80\x99s majority opinion in the ASTM case acknowledged that PRO had raised \xe2\x80\x9ca\nserious constitutional concern with permitting private ownership of standards essential to\nunderstanding legal obligations.\xe2\x80\x9d However, the but thought \xe2\x80\x9cit best at this juncture to\n\n112\n\n\x0caddress only the statutory fair use issue\xe2\x80\x94which may provide a full defense to some, if not all,\nof the [Standards Developing Organizations\xe2\x80\x99] infringement claims in this case\xe2\x80\x94and leave for\nanother day the question of whether the Constitution permits copyright to persist in works\nincorporated by reference into law.\xe2\x80\x9d\nIn terms of fair use, the majority noted that PRO had distributed the standards for the\npurpose of educating the public about the specifics of governing law and it generally credited\nthe argument that paraphrases, summaries, and descriptions, would not adequately \xe2\x80\x9ccapture\nthe precision that is necessary to understand the legal obligations that governments impose\nand enforce.\xe2\x80\x9d But the court regarded this as a highly fact specific inquiry. Citing Banks, the\ncourt reiterated that \xe2\x80\x9cthe express text of the law falls plainly outside the realm of copyright\nprotection\xe2\x80\x9d and held further that \xe2\x80\x9cstandards incorporated by reference into law are, at best,\nat the outer edge of copyright\xe2\x80\x99s protective purposes.\xe2\x80\x9d Judge Tatel court further explained (at\n452) that:\nWhere the consequence of the incorporation by reference is virtually\nindistinguishable from a situation in which the standard had been expressly copied\ninto law, this factor weighs heavily in favor of fair use. But where the incorporation\ndoes not lend to such easy substitution, fair use is harder to justify.\n\nThe court of appeals instructed the district court to take these principles into account on\nremand and also to conduct a more nuanced analysis of the potential market effect of PRO\xe2\x80\x99s\nactivities. Judge Katsas\xe2\x80\x99 concurring opinion in ASTM is extracted below\nAmerican Society for Testing & Materials v. Pub.Resource.Org, Inc., 896 F.3d 437\n(D.C. Cir. 2018)\nCircuit Judge Katsas concurring:\nThe plaintiffs here claim a copyright over binding legal texts, which would enable\nthem to prevent anyone from gaining access to that law or copying it for the public.\nSee 17 U.S.C. \xc2\xa7 106. Moreover, saying what that law is, without plaintiffs\xe2\x80\x99 permission,\nwould expose an individual to injunctive relief, impoundment, damages, attorneys\xe2\x80\x99\nfees, and potentially even criminal liability. See id. \xc2\xa7\xc2\xa7 502-506. As a matter of\ncommon-sense, this cannot be right: access to the law cannot be conditioned on the\nconsent of a private party, just as it cannot be conditioned on the ability to read fine\nprint posted on high walls. See Suetonius, Gaius Caligula \xc2\xb6 XLI, in The Lives of the\nCaesars (J.C. Rolfe trans., Macmillan Co. 1914) (\xe2\x80\x9che . . . had the law posted up, but in\na very narrow place and in excessively small letters, to prevent the making of a\ncopy\xe2\x80\x9d).\nNot surprisingly, precedent confirms this instinct. In Banks v. Manchester, 128 U.S.\n244 (1888), the Supreme Court held that judges cannot copyright their opinions, in\npart because their work \xe2\x80\x9cconstitutes the authentic expression and interpretation of\nthe law, which, binding every citizen, is free for publication to all.\xe2\x80\x9d Id. at 253.\nMoreover, two courts of appeals have confirmed that Banks remains good law under\nthe modern Copyright Act of 1976. In Building Officials & Code Administrators v. Code\nTechnology, Inc., 628 F.2d 730 (1st Cir. 1980), the First Circuit vacated a preliminary\ninjunction that would have enforced the copyright of a model building code as\nenacted into Massachusetts law. While not definitively deciding the question, the\ncourt reasoned that enforcement of the copyright could not be \xe2\x80\x9csquared with the\n113\n\n\x0cright of the public to know the law to which it is subject.\xe2\x80\x9d Id. at 735. Similarly, in\nVeeck v. Southern Building Code Congress International, 293 F.3d 791 (5th Cir. 2002) (en\nbanc), the Fifth Circuit held that \xe2\x80\x9cas law,\xe2\x80\x9d model rules adopted by a legislative body\n\xe2\x80\x9center the public domain and are not subject to the copyright holder\xe2\x80\x99s exclusive\nprerogatives.\xe2\x80\x9d Id. at 793.\nToday, the Banks rule might rest on at least four possible grounds: the First\nAmendment; the Due Process Clause of the Fifth Amendment; Section 102(b) of the\nCopyright Act, which denies copyright protection to \xe2\x80\x9cany idea, procedure, process,\nsystem, method of operation, concept, principle, or discovery,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102(b);\nor Section 107 of the Act, which sets forth the fair-use doctrine, id. \xc2\xa7 107. The Court\ntoday reasonably avoids what it correctly regards as \xe2\x80\x9ca serious constitutional concern\xe2\x80\x9d\nunder the First and Fifth Amendments. And it expressly reserves, in substance\nthough not by name, the question whether Section 102(b) extends protection to\nprivate standards as enacted into law.\nThe Court\xe2\x80\x99s fair-use analysis faithfully recites the governing four-factor balancing test,\nyet, in conducting the balancing, it puts a heavy thumb on the scale in favor of an\nunrestrained ability to say what the law is. Thus, when an incorporated standard sets\nforth binding legal obligations, and when the defendant does no more and no less\nthan disseminate an exact copy of it, three of the four relevant factors\xe2\x80\x94purpose and\ncharacter of the use, nature of the copyrighted work, and amount and substantiality\nof the copying\xe2\x80\x94are said to weigh \xe2\x80\x9cheavily\xe2\x80\x9d or \xe2\x80\x9cstrongly\xe2\x80\x9d in favor of fair use. This\nanalysis closely parallels Banks, which the Court explicitly invokes in its discussion of\nfactor two. The Court acknowledges the thinness of the record in this case, and it\nappropriately flags potentially complicating questions about how particular standards\nmay be incorporated into law, and whether such standards, as so incorporated,\nactually constitute \xe2\x80\x9cthe law.\xe2\x80\x9d But, where a particular standard is incorporated as a\nbinding legal obligation, and where the defendant has done nothing more than\ndisseminate it, the Court leaves little doubt that the dissemination amounts to fair\nuse.\nWith that understanding, and recognizing that the Section 102(b) and constitutional\nissues remain open in the unlikely event that disseminating \xe2\x80\x9cthe law\xe2\x80\x9d might be held\nnot to be fair use, I join the Court\xe2\x80\x99s opinion.\nNotes and questions:\n(1) In his concurring opinion in ASTM, Judge Katsas seems intent on leaving us in no doubt\nthat publishing copyrighted works incorporated as a binding legal obligations will be fair use.\n\nOther exclusions from copyright\nWords, titles, and short phrases 36\nIn Feist Publications, Inc. v. Rural Telephone Service, Co., 499 U.S. 340, 346 (1991), the Supreme\nCourt held that, \xe2\x80\x9coriginality is a constitutional requirement.\xe2\x80\x9d And it explained (at 345):\n\nThis material is also addressed in the chapter on copyright subject matter, but I have left it in here for the\nsake of completeness.\n36\n\n114\n\n\x0cOriginal, as the term is used in copyright, means only that the work was independently\ncreated by the author (as opposed to copied from other works), and that it possesses\nat least some minimal degree of creativity. (emphasis added)\n\nIn theory, every copyrightable work embodies \xe2\x80\x9cat least some minimal degree of creativity\xe2\x80\x9d, but\ncourts rarely have cause to define what that quantum of creativity is, although they often\nobserve its absence is particular contexts. Usually we don\xe2\x80\x99t need to know much more than\nthat fact that telephone books lack creativity entirely and novels possess it in abundance.\nHowever, the originality requirement has some important implications for the minimum size\nof copyrightable works and the Copyright Office has a long established practice of refusing\nregistration to words and short phrases on this basis.\n37 C.F.R. \xc2\xa7 202.1(a) Material not subject to copyright.\nThe following are examples of works not subject to copyright and applications for\nregistration of such works cannot be entertained:\n(a) Words and short phrases such as names, titles, and slogans; familiar symbols or\ndesigns; mere variations of typographic ornamentation, lettering or coloring; mere\nlisting of ingredients or contents; \xe2\x80\xa6\n\nThe requirement of originality is a good enough reason to preclude copyright for most\nwords and short phrases, but perhaps not all.\nWords and short phrases that are novel (in the patent law sense of being entirely new)\narguably are original in that they owe their existence to the author, but they should probably\nbe denied independent copyright status by virtue of the merger doctrine and the ideaexpression distinction, rather than a lack of creativity as such.37 For example, the word\n\xe2\x80\x9cQuidditch\xe2\x80\x9d was new and creative when JK Rowling invented it. She apparently selected it\nfrom five notebook pages of words beginning with \xe2\x80\x9cQ\xe2\x80\x9d. The word Quidditch could not be\ncopyrighted without depriving the public of the only plausible way of referring to the\npopular contact sport played on flying broomsticks in the Harry Potter fantasy series.\nQuidditch is uncopyrightable because the word is merged with the much more complicate\nset of ideas the word represents.\nOn the other hand, \xe2\x80\x9csupercalifragilisticexpialidocious\xe2\x80\x9d in Mary Poppins is also creative, and more\nimportantly, because it is nonsense it is hard to see that merger and idea-expression\ndistinction would bar it from copyright protection. But even if it could have been registered\nas a one-word literary work, the fact that it wasn\xe2\x80\x99t should mean something for copyright\nanalysis.38\nTaxonomies\nThere is some case law to the contrary, but the better view is that taxonomies of arbitrary\nnaming conventions are not copyrightable. For example in Southco, Inc. v. Kanebridge Corp., 390\nF.3d 276 (3d Cir. 2004)(en banc), the Third Circuit held that a list of serial numbers used to\nidentify hardware parts was not copyrightable.\nSee e.g. Perma Greetings, Inc. v. Russ Berrie & Co., 598 F. Supp 445, 448-49 (E.D. Mo. 1984) (finding that\nphrases such as \xe2\x80\x9chang in there,\xe2\x80\x9d \xe2\x80\x9cmessage,\xe2\x80\x9d and \xe2\x80\x9calong the way take time to smell the flowers\xe2\x80\x9d are unprotected\nand considering ideas of images and simple design characteristics to be uncopyrightable). See also, Matthews v.\nFreedman, 157 F.3d 25, 26 (1stCir.1998).\n37\n\n38\n\nLife Music, Inc. v. Wonderland Music Co. 241 F. Supp. 653 (S.D.N.Y.1965).\n\n115\n\n\x0cAfter discussing the originality requirement and the implications of the Feist decision, the\ncourt held (at 282):\nIn this case, the Southco product numbers are not \xe2\x80\x9coriginal\xe2\x80\x9d because each number\nis rigidly dictated by the rules of the Southco system. Because ideas may not be\ncopyrighted, Southco does not assert any claim of copyright in its\nnumbering system, but instead focuses on the part numbers themselves. The numbers,\nhowever, do not reflect any creativity.\n\nThe court also held (at 285) that the part numbers were uncopyrightable on a separate\nground, the uncopyrightability of short phrases and titles. The court explained that \xe2\x80\x9csince at\nleast 1899, it has been the practice of the Copyright Office to deny registration to \xe2\x80\x98words and\nphrases.\xe2\x80\x99\xe2\x80\x9d It summarized and accepted the policy rationale for the doctrine put forward by the\ngovernment in an amicus brief as follows (at 286):\nThe government suggests that this practice serves at least two purposes. First, the\ngovernment notes that a short phrase such as a part number typically lacks any\ncreativity whatsoever. Second, the government suggests that extending copyright\nprotection to part numbers would unduly interfere with the legitimate use of the\nnumbers in question. Because the owner of a copyright has the exclusive rights to\nreproduce the copyrighted work, if a part number (say, XXXXXXXXX, to take the\nexample discussed above) were copyrighted, any use of the number would\npotentially infringe the copyright. Moreover, if Southco\xe2\x80\x99s nine-digit numbers are\nprotected, would there be a principled basis for denying protection to a number\nwith, say, seven or five digits? Could a company or person thereby obtain the\nexclusive right to use the number 4,710,202 or 47,102? In light of the huge number\nof part and product numbers (and other analogous numbers) that now exist, this\nprospect gives reason for concern. Although the fair use defense would presumably\nprotect the use of such numbers in most situations, fair use is an affirmative defense\nand may impose an undue burden.\n\nThe law in the Sixth Circuit is the same. In ATC Distribution Group v. Whatever It Takes\nTransmissions & Parts, Inc., 402 F.3d 700, 706 (6th Cir. 2005), the court of appeals held that a\ntaxonomy for assigning unique identifiers to auto transmission parts by sorting them into\ncategories and sub-categories was not copyrightable. Just as in Southco, the court recognized\nthe system that generated the unique identifiers as an uncopyrightable idea and the numbers\nso generated as either unoriginal products of that system or as excluded by merger. The\ncourt also invoked the short works doctrine following a similar reasoning to Southco.\nFor a contrary view, see American Dental Association v. Delta Dental Plans Association, 126 F.3d\n977, 979 (7th Cir.1997), arguing that:\nFacts do not supply their own principles of organization. Classification is a creative\nendeavor. Butterflies may be grouped by their color, or the shape of their wings, or\ntheir feeding or breeding habits, or their habitats, or the attributes of their\ncaterpillars, or the sequence of their DNA; each scheme of classification could be\nexpressed in multiple ways. Dental procedures could be classified by complexity, or\nby the tools necessary to perform them, or by the parts of the mouth involved, or\nby the anesthesia employed, or in any of a dozen different ways. The Code\xe2\x80\x99s\ndescriptions don\xe2\x80\x99t \xe2\x80\x9cmerge with the facts\xe2\x80\x9d any more than a scientific description of\nbutterfly attributes is part of a butterfly.\n\nThe Seventh Circuit\xe2\x80\x99s opinion in American Dental appears to confuse originality in the system\nwith originality in the codes that are the product of that system.\n116\n\n\x0c117\n\n\x0c4. THE HISTORICAL DEVELOPMENT OF\nREPRODUCTION, ADAPTATION, AND FAIR USE\n\nTHE\n\nCONCEPTS\n\nOF\n\nReproduction and Adaptation\xe2\x80\x94Current International Framework\nBerne Convention\nArticle 9, subsection 1, of Berne Convention recognizes a broad reproduction right for\nliterary and artistic works. The Convention provides that \xe2\x80\x9cauthors of literary and artistic\nworks protected by this convention shall have the exclusive right of authorizing the\nreproduction of these works, in any manner or form.\xe2\x80\x9d\nBerne Convention (Paris 1971). Article 9.\n(1) Authors of literary and artistic works protected by this Convention shall have the\nexclusive right of authorizing the reproduction of these works, in any manner or\nform.\n(2) It shall be a matter for legislation in the countries of the Union to permit the\nreproduction of such works in certain special cases, provided that such reproduction\ndoes not conflict with a normal exploitation of the work and does not unreasonably\nprejudice the legitimate interests of the author.\n(3) Any sound or visual recording shall be considered as a reproduction for the\npurposes of this Convention.\nArticle 12 Berne Convention provides that \xe2\x80\x9cauthors of literary or artistic works shall enjoy\nthe exclusive right of authorizing, arrangements and other alterations of their works.\xe2\x80\x9d\nBerne Convention (Paris 1971). Article 12\nAuthors of literary or artistic works shall enjoy the exclusive right of authorizing\nadaptations, arrangements and other alterations of their works.\nArticle 14 of Berne adds a specific right to authorize cinematographic adaptation and the\nreproduction and distribution of such adaptations. It also adds the right of \xe2\x80\x9cpublic\nperformance and communication to the public by wire\xe2\x80\x9d of the works thus adapted.\nThis right to make a film adaptation has been part of the Berne Convention since the 1908\nBerlin revision, and it actually precedes the inclusion of the general reproduction right\n(Article 9) by many decades. This was reasonably fast work considering that the first film\nshot with the Cin\xc3\xa9matographe camera was only made in 1895.\nBerne Convention (Paris 1971). Article 14.\n(1) Authors of literary or artistic works shall have the exclusive right of authorizing:\n(i) the cinematographic adaptation and reproduction of these works, and the\ndistribution of the works thus adapted or reproduced; (ii) the public performance\nand communication to the public by wire of the works thus adapted or reproduced.\n(2) The adaptation into any other artistic form of a cinematographic production\nderived from literary or artistic works shall, without prejudice to the authorization of\nthe author of the cinematographic production, remain subject to the authorization of\nthe authors of the original works.\n118\n\n\x0cThe Information Society Directive\nThe European Union Directive on Copyright and Related Rights in the Information Society,\n2001/29/EC (usually just referred to as the Information Society Directive or just the\nInfosoc Directive), attempts to harmonize many aspects of copyright law in the European\nUnion, including exclusive rights.\nComparing the Berne Convention to the Infosoc Directive, it is striking how much more\ndetailed and prescriptive the latter is than the former. The Infosoc Directive directs member\nstates to provide an exclusive right encompassing direct or indirect, permanent or temporary\nreproductions by any means and in any form, in whole or in part.\nEuropean Union Directive on Copyright and Related Rights in the\nInformation Society, 2001/29/EC. Article 2.\nReproduction right\nMember States shall provide for the exclusive right to authorise or prohibit direct or\nindirect, temporary or permanent reproduction by any means and in any form, in\nwhole or in part:\n(a) for authors, of their works;\n(b) for performers, of fixations of their performances;\n(c) for phonogram producers, of their phonograms;\n(d) for the producers of the first fixations of films, in respect of the original and\ncopies of their films;\n(e) for broadcasting organisations, of fixations of their broadcasts, whether those\nbroadcasts are transmitted by wire or over the air, including by cable or satellite.\nThe Infosoc Directive talks about authors, performers, phonogram producers, film-fixators,\nand broadcasting organisations. What do all these entities have in common?\n\nReproduction, Adaptation, and Fair Use\xe2\x80\x94United States Framework\n17 U.S. Code \xc2\xa7 106 - Exclusive rights in copyrighted works\nSubject to sections 107 through 122, the owner of copyright under this title has the\nexclusive rights to do and to authorize any of the following:\n(1) to reproduce the copyrighted work in copies or phonorecords;\n(2) to prepare derivative works based upon the copyrighted work; \xe2\x80\xa6\n17 U.S. Code \xc2\xa7 107 - Limitations on exclusive rights: Fair use\nNotwithstanding the provisions of sections 106 and 106A, the fair use of a\ncopyrighted work, including such use by reproduction in copies or phonorecords or\nby any other means specified by that section, for purposes such as criticism,\ncomment, news reporting, teaching (including multiple copies for classroom use),\nscholarship, or research, is not an infringement of copyright. In determining whether\n\n119\n\n\x0cthe use made of a work in any particular case is a fair use the factors to be considered\nshall include\xe2\x80\x94\n(1) the purpose and character of the use, including whether such use is of a\ncommercial nature or is for nonprofit educational purposes;\n(2) the nature of the copyrighted work;\n(3) the amount and substantiality of the portion used in relation to the copyrighted\nwork as a whole; and\n(4) the effect of the use upon the potential market for or value of the copyrighted\nwork.\nThe fact that a work is unpublished shall not itself bar a finding of fair use if such\nfinding is made upon consideration of all the above factors.\nAmong other things, Section 106 of the Copyright Act of 1976 gives copyright owners the\nexclusive right \xe2\x80\x9cto reproduce the copyrighted work in copies\xe2\x80\x9d and \xe2\x80\x9cto prepare derivative\nworks based upon the copyrighted work\xe2\x80\x9d. Section 107 of the copyright act provides that the\nfair use of a copyrighted work is not an infringement of copyright. Taken together, what do\nSections 106(1), 106(2) and 107 of the Copyright Act tell us about the scope of copyright?\nUnderstanding these provisions and the associated concepts of reproduction, adaptation (the\nright to make derivative works based upon the copyrighted work), and fair use requires\nhistorical and technological context; it also requires addressing some metaphysical and\nconceptual questions. Historical context is required to see how the concept of reproduction\nhas evolved over time. Technological context is required to understand the contemporary\nsignificance of many technical acts of reproduction. Finally, if the reproduction alleged is not\na verbatim and exact copy of the entire work, understanding the reproduction right means\ndelving into some metaphysical conceptual questions.\n[Placeholder for discussion of Shyamkrishna Balganesh\xe2\x80\x99s article on the relational structure of\nthe copyright entitlement]\n\nThe Historical Context of the Reproduction Right\nThe Premodern Era of Copyright Law\nIn The Making of Modern Intellectual Property Law, Brad Sherman and Lionel Bently draw the\ndistinction between modern and premodern copyright, using 1850 as a rough line of\ndemarcation. For reasons that will become clear, in the American context it makes sense to\nbring that date forward slightly to 1841 when Justice Story decided the case of Folsom v.\nMarsh. The premodern/modern distinction is a useful one because the categories of\nintellectual-property law were quite fluid up until the mid-nineteenth century. And only after\nthe mid-1800s did the drive to internationalize copyright (a movement that culminated in the\nBerne Convention) significantly influence copyright law. Most of our modern concepts of\ncopyright law can be seen evolving in the premodern era, but that evolution is messy and the\ncase law from that era is at best a rough prototype of modern copyright law.\n\n120\n\n\x0cThe Reproduction Right in the Premodern Era\nThere is no doubt that the scope of copyright law was much narrower in the premodern era\nthan it is today, but it is not true (as many have suggested) that early copyright law was\nstrictly limited to merely mechanical acts of reproduction. As I explain in my 2011 article The\nPrehistory of Fair Use,39 the truth is more subtle. It would be more accurate to say that over the\ncourse of the premodern era of copyright the scope of the author\xe2\x80\x99s rights expanded from the\nnarrow right to object, to unauthorized complete reproductions (i.e., reprinting the exact\nsame book), to a slightly broader right that also included partial copies.\nMaking a shortened version or abstract of a longer text\xe2\x80\x94both the practice and the resulting\nadaptation were known as abridgement (verb and noun, respectively)\xe2\x80\x94was common in the\npremodern era, but the lawful scope of was abridgement contested throughout.\nGyles v. Wilcox (1740) 26 ER 489\nLike many early copyright cases, the controversy in Gyles centered on an important book of learning, Sir Matthew Hale\xe2\x80\x99s\nHistoria Placitorum Coron\xc3\xa6 (The History of the Pleas of the Crown). Although Hale died on Christmas Day 1676, his Historia\nPlacitorum Coron\xc3\xa6 was not published in an authorized form until 1736. The defendant, John Wilcox, had commissioned an\nabridgment of the Historia, to be entitled Modern Crown Law. The plaintiffs alleged that the defendant\xe2\x80\x99s work \xe2\x80\x9cborrowed\nverbatim from Sir Matthew Hale\xe2\x80\x99s Pleas of the Crown\xe2\x80\x9d\xe2\x80\x94omitting only statutes that had been repealed\xe2\x80\x94and translated \xe2\x80\x9call the\nLatin and French quotations\xe2\x80\x9d in Hale\xe2\x80\x99s book into English. See Matthew Sag, The Prehistory of Fair Use, 76 BROOKLYN LAW\nREVIEW 1371(2011).\n\nLord Hardwicke (the Lord Chancellor)\n\xe2\x80\xa6 As to what has been said by Mr. Attorney General of the acts being a monopoly,\nand therefore ought to receive strict construction, I am quite of a different opinion,\nand that it ought to receive a liberal construction, for it is very far from being a\nmonopoly, as it is intended to secure the property of books in the authors\nthemselves, or the purchasers of the copy, as some recompence for their pains and\nlabour in such works as may be of use to the learned world.\nThe question is, Whether this book of the New Crown Law, which the defendant\nhas published, is the same with Sir Matthew Hale\xe2\x80\x99s Historia Placitorum Coronce, the\ncopy of which is now the property of the plaintiff.\nWhere books are colourably shortened only, they are undoubtedly within the\nmeaning of the act of Parliament, and are a mere evasion of the statute, and cannot\nbe called an abridgment.\nBut this must not be carried so far as to restrain persons from making a real and fair\nabridgment, for abridgments may with great propriety be called a new book, because\nnot only the paper and print, but the invention, learning, and judgment of the author\nis shewn in them, and in many cases are extremely useful, though in some instances\nprejudicial, by mistaking and curtailing the sense of an author.\nIf I should extend the rule so far as to restrain all abridgments, it would be of\nmischievous consequence, for the books of the learned, les Journels des Scavans, and\nseveral others that might be mentioned, would be brought within the meaning of this\nact of parliament.\n39\n\nMatthew Sag, The Prehistory of Fair Use, 76 BROOKLYN LAW REVIEW 1371(2011).\n\n121\n\n\x0cIn the present case it is merely colourable, some words out of the Historia Placitorum\nCoronce are left out only, and translations given instead of the Latin and French\nquotations that are dispersed through Sir Matthew Hale\xe2\x80\x99s works; yet not so flagrant\nas the case of Read versus Hodges, for there they left out whole pages at a time; but I\nshall not be able to determine this properly, unless both books were read over, and\nthe case fairly stated between the parties.\nMr. Attorney General has said I may send it to [the common law courts] to be\ndetermined by a jury; but how can this possibly be done it would be absurd for the\nchief justice to sit and hear both books read over, which is absolutely necessary, to\njudge between them, whether the one is only a copy from the other.\nThe court is not under an indispensable obligation to send all facts to a jury, but may\nrefer them to a master, to state them, where it is a question of nicety and difficulty,\nand more fit for men of learning to inquire into, than a common jury.\nThis I think is one of those cases where it would be much better for the parties to fix\nupon two persons of learning and abilities in the profession of the law, who would\naccurately and carefully compare them, and report their opinion to the court.\nThe House of Lords very often, in matters of account which are extremely perplexed\nand intricate, refer it to two merchants named by the parties, to consider the case,\nand report their opinions upon it, rather than leave it to a jury; and I should think a\nreference of the same kind in some measure would be the properest method in the\npresent case.\nNotes and questions\n(1) Lord Hardwicke continued the injunction, pending a master of the court\xe2\x80\x99s report on the\nsimilarities between the two works. The result is not contained in the report of the case, but\nit is discussed in Tonson v. Walker, (1752) 36 Eng. Rep. 1017 (Ch.). Apparently, the courtassisted arbitration proceeding led to an agreement that the defendant\xe2\x80\x99s work was a fair\nabridgment outside the Statute of Anne\xe2\x80\x99s scope. Accordingly, the injunction was dissolved.\n(2) Does the decision in Gyles expand or contract the scope of copyright? Notice how Lord\nHardwicke rejects the argument that the Statute of Anne should be narrowly construed as a\nmonopoly. In The Prehistory of Fair Use (at 1391), I argue that Hardwicke\xe2\x80\x99s purposive reading\nof the copyright statute was also an expansive one. Under the Statute of Anne, 1710, 8 Ann.,\nc. 19, \xc2\xa71 (Eng.), \xe2\x80\x9cthe author of any book or books\xe2\x80\x9d or his assignees, was entitled to \xe2\x80\x9cthe sole\nright and liberty of printing such book and books.\xe2\x80\x9d Construed literally, the Act regulated\nonly exact and entire reprinting, but Lord Hardwicke readily looked beyond the narrow text\nof the act to its underlying purpose and rejected any \xe2\x80\x9cmere evasion of the statute.\xe2\x80\x9d\n(4) It is important to recognize that copyright\xe2\x80\x99s limiting principles, such as fair use and the\nidea-expression dichotomy, play an important role in strengthening the copyright system.\nBecause every act of authorship relies to some extent on engaging with and reusing existing\nmaterials, every generation of authors benefits from copyright limitations in their own\ncreative process. Moreover, looking at the statutory system of copyright as a whole, limits\n\n122\n\n\x0clike fair use allow the rights of the copyright owner to be phrased more expansively than\nwould otherwise be possible.40\n(5) Is the decision in Gyles pro-abridgment? In The Prehistory of Fair Use (at 1391), I argue that:\nAlthough Gyles is often cited as the origin of the fair use doctrine in England and\nhas generally been received as a pro-abridgment decision, Lord Hardwicke\xe2\x80\x99s\nreasoning gave as much to copyright owners as it took away. On the one hand, Gyles\nconfirmed the legality of some abridgments (those described as fair). Yet it also\nentrenched a broad purposive reading of the Statute of Anne and condemned\nanother set of abridgments (those deemed unfair) as infringing copyright.\n\n(6) What distinguishes an infringing abridgment from a non-infringing one under Gyles?\nHardwicke draws a line between reprints with minor alterations and \xe2\x80\x9ctrue abridgments\xe2\x80\x9d or\n\xe2\x80\x9creal and fair abridgments\xe2\x80\x9d which (at 490) he says:\nmay with great propriety be called a new book, because not only the paper and print,\nbut the invention, learning, and judgment of the author is shewn in them, and in\nmany cases are extremely useful, though in some instances prejudicial, by mistaking\nand curtailing the sense of an author.\n\nThe premodern copyright cases are not entirely coherent, perhaps no body of case law is. In\ngeneral the dividing line between infringing and noninfringing abridgements was drawn with\na view to two factors. First, the degree of intellectual labor contributed by the defendant.\nThis not simply an assessment of the amount of work added by the defendant, usually the\nquestion was presented as whether the defendant\xe2\x80\x99s work should fairly be seen as a new work.\nThe second factor was whether the defendant\xe2\x80\x99s work was likely to substitute for the\nplaintiff\xe2\x80\x99s original work.\n(7) In Gyles v. Wilcox, Lord Hardwicke said \xe2\x80\x9cabridgments may with great propriety be called a\nnew book, because not only the paper and print, but the invention, learning, and judgment\nof the author is shewn in them.\xe2\x80\x9d In an even earlier case, Burnett v. Chetwood, (1720) 35 Eng.\nRep. 1009 (Ch.), Lord Parker made a similar point with respect to translations, noting that \xe2\x80\x9ca\ntranslation might not be the same with the reprinting the original, on account that the\ntranslator has bestowed his care and pains upon it, and so not within the prohibition of the\nact.\xe2\x80\x9d Likewise, in Strahan v. Newbery (1773) 98 Eng. Rep. 913, 913 (Ch.) the court described\nan abridgement as \xe2\x80\x9can act of understanding . . . in the nature of a new and meritorious\nwork.\xe2\x80\x9d)\n(8) Modern United States copyright law has retained some of the decisional structure of the\npremodern English abridgment cases. The modern fair use doctrine is significantly\ninfluenced by the degree of newness of the defendant\xe2\x80\x99s work in the sense of the question of\nwhether the defendant\xe2\x80\x99s use was transformative (this is part of the first fair use factor). The\nmodern fair use cases are also highly sensitive to concerns of market substitution (this is part\nof the fourth fair use factor). However, infringement analysis under modern United States\ncopyright law begins with much broader notion of what kinds of derivative works or\nadaptations belong within the ambit of the copyright\xe2\x80\x99s rights.\n\nSee, Matthew Sag, God in the Machine: A New Structural Analysis of Copyright\xe2\x80\x99s Fair Use Doctrine, 11 MICH.\nTELECOMM. & TECH. L. REV. 381, 414 (2005)\n40\n\n123\n\n\x0cThe emergence of the right \xe2\x80\x9cto prepare derivative works based upon the copyrighted\nwork\xe2\x80\x9d\nOver the course of the 19th century we see a significant expansion in the concept of the\nrights of the copyright owner. This development can be seen in the case law and statute. The\ntwo most prominent markers of this transition are the 1841 case of Folsom v. Marsh and the\n1870 amendment to the U.S. Copyright Act that gave authors the right to control\ntranslations and dramatizations of their works.41\nFolsom v. Marsh concerned two different literary treatments of the life of George Washington.\nThe plaintiffs were Folsom, Wells & Thurston, a partnership of publishers that held the\nrights to Jared Sparks\xe2\x80\x99 multivolume collection of The Writings of George Washington. The\naccused work was Reverend Charles Upham\xe2\x80\x99s The Life of Washington, which was mainly\ncomprised of extracts from Washington\xe2\x80\x99s own writings. Upham\xe2\x80\x99s abbreviated and simplified\nLife of Washington, intended for local school libraries, weighed in at a mere 866 pages\xe2\x80\x94light\nin comparison to Sparks\xe2\x80\x99 massive 6763-page 12 volume compilation. About a third of\nUpham\xe2\x80\x99s work consisted of previously unpublished presidential writings, presumably copied\nfrom Sparks\xe2\x80\x99 compilation.\nUpham\xe2\x80\x99s publisher, the firm Marsh, Capen & Lyon, disputed Folsom\xe2\x80\x99s copyright ownership,\nbut it also argued that even if Folsom held the copyright in Sparks\xe2\x80\x99 twelve-volume collection\nof Washington\xe2\x80\x99s writings, the good Reverend Upham\xe2\x80\x99s work was nonetheless a fair\nabridgment that did not infringe. Marsh contended that once Washington\xe2\x80\x99s papers and\ncorrespondence were published, anyone had the right to selectively use those materials to\nprepare a new and original work. This defense was entirely plausible given the state of the\nlegal authorities at the time, similar abridgments had been allowed by numerous English\nauthorities, but it was not successful.\nFolsom v. Marsh, 9 F. Cas. 342, 349 (C.C.D. Mass. 1841) (No. 4901)\nCircuit Justice Story\nThis is one of those intricate and embarrassing questions, arising in the\nadministration of civil justice, in which it is not, from the peculiar nature and\ncharacter of the controversy, easy to arrive at any satisfactory conclusion, or to lay\ndown any general principles applicable to all cases. Patents and copyrights approach,\nnearer than any other class of cases belonging to forensic discussions, to what may\nbe called the metaphysics of the law, where the distinctions are, or at least may be,\nvery subtile and refined, and, sometimes, almost evanescent. In many cases, indeed,\nwhat constitutes an infringement of a patented invention, is sufficiently clear and\nobvious, and stands upon broad and general agreements and differences; but, in\nother cases, the lines approach very near to each other, and, sometimes, become\nalmost evanescent, or melt into each other. So, in cases of copyright, it is often\nNote also that in 1802 Congress amended the Copyright Act to include prints in the protected subject matter.\nIt also made it an infringement to cause such a work to be \xe2\x80\x9cengraved, etched, copied or sold, in the whole or in\npart, by varying, adding to, or diminishing from the main design. \xe2\x80\xa6\xe2\x80\x9d Bill Patry notes that \xe2\x80\x9cThis language may\nbe read either as enumerating specific acts that constitute infringement of the right to print or publish the work,\nor as a form of a derivative right. The language was subsequently incorporated in section 7 of the 1831 general\nrevision, where it applied to prints, cuts, engravings, maps, charts, and musical compositions (but not to books).\nThe right remained a part of the copyright statutes until the 1909 Act.\xe2\x80\x9d 4 PATRY ON COPYRIGHT \xc2\xa7 12:4\n41\n\n124\n\n\x0cexceedingly obvious, that the whole substance of one work has been copied from\nanother, with slight omissions and formal differences only, which can be treated in\nno other way than as studied evasions; whereas, in other cases, the identity of the\ntwo works in substance, and the question of piracy, often depend upon a nice\nbalance of the comparative use made in one of the materials of the other; the nature,\nextent, and value of the materials thus used; the objects of each work; and the degree\nto which each writer may be fairly presumed to have resorted to the same common\nsources of information, or to have exercised the same common diligence in the\nselection and arrangement of the materials.\nThus, for example, no one can doubt that a reviewer may fairly cite largely from the\noriginal work, if his design be really and truly to use the passages for the purposes of\nfair and reasonable criticism. On the other hand, it is as clear, that if he thus cites the\nmost important parts of the work, with a view, not to criticise, but to supersede the\nuse of the original work, and substitute the review for it, such a use will be deemed in\nlaw a piracy. A wide interval might, of course, exist between these two extremes,\ncalling for great caution and involving great difficulty, where the court is approaching\nthe dividing middle line which separates the one from the other. So, it has been\ndecided that a fair and bona fide abridgment of an original work, is not a piracy of\nthe copyright of the author. See Dodsley v. Kinnersley, 1 Amb. 403; Whittingham v.\nWooler, 2 Swanst. 428, 430, 431, note; Tonson v. Walker, 3 Swanst. 672-679, 681. But,\nthen, what constitutes a fair and bona fide abridgment, in the sense of the law, is one\nof the most difficult points, under particular circumstances, which can well arise for\njudicial discussion. It is clear, that a mere selection, or different arrangement of parts\nof the original work, so as to bring the work into a smaller compass, will not be held\nto be such an abridgment. There must be real, substantial condensation of the\nmaterials, and intellectual labor and judgment bestowed thereon; and not merely the\nfacile use of the scissors; or extracts of the essential parts, constituting the chief value\nof the original work. See Gyles v. Wilcox, 2 Atk. 141.\nIn the present case, the work alleged to be pirated, is the Writings of President\nWashington, in twelve volumes, royal octavo, containing nearly seven thousand pages,\nof which the first volume contains a life of Washington, by the learned editor, Mr.\nSparks, in respect to which no piracy is asserted or proved. The other eleven\nvolumes consist of the letters of Washington, private and official, and his messages\nand other public acts, with explanatory notes and occasional illustrations by the\neditor. That the original work is of very great, and, I may almost say, of inestimable\nvalue, as the repository of the thoughts and opinions of that great man, no one\npretends to doubt. The work of the defendants is in two volumes, duodecimo,\ncontaining eight hundred and sixty-six pages. It consists of a Life of Washington,\nwritten by the learned defendant, (the Rev. Charles W. Upham), which is formed\nupon a plan different from that of Mr. Sparks, and in which Washington is made\nmainly to tell the story of his own life, by inserting therein his letters and his\nmessages, and other written documents, with such connecting lines in the narrative,\nas may illustrate and explain the times and circumstances, and occasions of writing\nthem.\nThere is no complaint, that Mr. Upham has taken his narrative part, substantially,\nfrom the Life by Mr. Sparks. The gravamen is, that he has used the letters of\n\n125\n\n\x0cWashington, and inserted, verbatim, copies thereof from the collection of Mr. Sparks.\nThe master finds, by his report, that the whole number of pages in Mr. Upham\xe2\x80\x99s\nwork, corresponding and identical with the passages in Mr. Sparks\xe2\x80\x99s work, are three\nhundred and fifty-three pages out of eight hundred and sixty-six, a fraction more\nthan one third of the two volumes of the defendants. Of these three hundred and\nfifty-three pages, the report finds that three hundred and nineteen pages consist of\nletters of Washington, which have been taken from Mr. Sparks\xe2\x80\x99s work, and have\nnever been published before; namely, sixty-four pages are official letters and\ndocuments, and two hundred and fifty-five pages are private letters of Washington.\nThe question, therefore, upon this admitted state of the facts, resolves itself into the\npoint, whether such a use, in the defendants\xe2\x80\x99 work, of the letters of Washington,\nconstitutes a piracy of the work of Mr. Sparks.\n[Justice Story held that the letters of Washington were proper subjects of copyright\nand that the rights to those letters had been acquired by the plaintiffs. Story then\nturned to the question of abridgment.]\n\xe2\x80\xa6 The next and leading objection is, that the defendants had a right to abridge and\nselect, and use the materials which they have taken for their work, which, though it\nembraces the number of letters above stated, is an original and new work, and that it\nconstitutes, in no just sense, a piracy of the work of the plaintiffs. This, in truth, is\nthe real hinge of the whole controversy, and involves the entire merits of the suit. It\nis certainly true, that the defendants\xe2\x80\x99 work cannot properly be treated as an\nabridgment of that of the plaintiffs; neither is it strictly and wholly a mere\ncompilation from the latter. So far as the narrative goes, it is either original, or\nderived (at least as far as the matter has been brought before the court) from\ncommon sources of information, open to all authors. It is not even of the nature of a\ncollection of beauties of an author; for it does not profess to give fugitive extracts, or\nbrilliant passages from particular letters. It is a selection of the entire contents of\nparticular letters, from the whole collection or mass of letters of the work of the\nplaintiffs. From the known taste and ability of Mr. Upham, it cannot be doubted,\nthat these letters are the most instructive, useful and interesting to be found in that\nlarge collection.\nThe question, then, is, whether this is a justifiable use of the original materials, such\nas the law recognizes as no infringement of the copyright of the plaintiffs. It is said,\nthat the defendant has selected only such materials, as suited his own limited purpose\nas a biographer. That is, doubtless, true; and he has produced an exceedingly valuable\nbook. But that is no answer to the difficulty. It is certainly not necessary, to\nconstitute an invasion of copyright, that the whole of a work should be copied, or\neven a large portion of it, in form or in substance. If so much is taken, that the value\nof the original is sensibly diminished, or the labors of the original author are\nsubstantially to an injurious extent appropriated by another, that is sufficient, in\npoint of law, to constitute a piracy pro tanto. The entirety of the copyright is the\nproperty of the author; and it is no defence, that another person has appropriated a\npart, and not the whole, of any property. Neither does it necessarily depend upon the\nquantity taken, whether it is an infringement of the copyright or not. It is often\naffected by other considerations, the value of the materials taken, and the importance\nof it to the sale of the original work. Lord Cottenham, in the recent cases of Bramwell\n\n126\n\n\x0cv. Halcomb, 3 Mylne & C. 737, 738, and Saunders v. Smith, Id. 711, 736, 737, adverting\nto this point, said:\n\xe2\x80\x9cWhen it comes to a question of quantity, it must be very vague. One writer might\ntake all the vital part of another\xe2\x80\x99s book, though it might be but a small proportion of\nthe book in quantity. It is not only quantity, but value, that is always looked to. It is\nuseless to refer to any particular cases, as to quantity.\xe2\x80\x9d\n\nIn short, we must often, in deciding questions of this sort, look to the nature and\nobjects of the selections made, the quantity and value of the materials used, and the\ndegree in which the use may prejudice the sale, or diminish the profits, or supersede\nthe objects, of the original work. Many mixed ingredients enter into the discussion of\nsuch questions. In some cases, a considerable portion of the materials of the original\nwork may be fused, if I may use such an expression, into another work, so as to be\nundistinguishable in the mass of the latter, which has other professed and obvious\nobjects, and cannot fairly be treated as a piracy; or they may be inserted as a sort of\ndistinct and mosaic work, into the general texture of the second work, and constitute\nthe peculiar excellence thereof, and then it may be a clear piracy. If a person should,\nunder color of publishing \xe2\x80\x9cElegant Extracts\xe2\x80\x9d of poetry, include all the best pieces at\nlarge of a favorite poet, whose volume was secured by a copyright, it would be\ndifficult to say why it was not an invasion of that right, since it might constitute the\nentire value of the volume. The case of Mawman v. Tegg, 2 Russ. 385, is to this\npurpose. There was no pretence in that case, that all the articles of the encyclopedia\nof the plaintiffs had been copied into that of the defendants; but large portions of\nthe materials of the plaintiffs\xe2\x80\x99 work had been copied. Lord Eldon, upon that\noccasion, held, that there might be a piracy of part of a work, which would entitle the\nplaintiffs to a full remedy and relief in equity. In prior cases, he had affirmed the like\ndoctrine. In Wilkins v. Aikin, 17 Ves. 422, 424, he said:\n\xe2\x80\x9cThere is no doubt, that a man cannot, under the pretence of quotation, publish\neither the whole or a part of another\xe2\x80\x99s book, though he may use, what in all cases it\nis difficult to define, fair quotation.\xe2\x80\x9d\n\nIn Roworth v. Wilkes, 1 Camp. 94, Lord Ellenborough said:\n\xe2\x80\x9cA review will not, in general, serve as a substitute for the book reviewed; and even\nthere, if so much is extracted, that it communicates the same knowledge with the\noriginal work, it is an actionable violation of literary property. The intention to\npirate is not necessary in an action of this sort; it is enough, that the publication\ncomplained of is in substance a copy, whereby a work vested in another is\nprejudiced. A compilation of this kind (an encyclopedia) may differ from a treatise\npublished by itself; but there must be certain limits fixed to its transcripts; it must\nnot be allowed to sweep up all modern works, or an encyclopedia would be a recipe\nfor completely breaking down literary property.\xe2\x80\x9d\n\nThe vice chancellor (Sir L. Shadwell), in Sweet v. Shaw, 1 Jur. (London) 212, referring\nto the remarks of Lord Ellenborough, cited by counsel, said:\n\xe2\x80\x9cThat does not mean a substitute for the whole work. From what you state, suppose\na book to contain one hundred articles, and ninety-nine were taken, still it would not\nbe a substitute.\xe2\x80\x9d\n\nAnd in this very case he granted an injunction, being of opinion, that there was\nprima facie, at law, an invasion of the plaintiffs\xe2\x80\x99 right; not only an injury, but also a\n127\n\n\x0cdamage to the plaintiffs, in copying from several volumes of Reports, published by\nthe plaintiffs, although eleven only had been copied verbatim, but a considerable\nnumber of what were called \xe2\x80\x9cabridged cases,\xe2\x80\x9d were, in truth, copies of the plaintiffs\xe2\x80\x99\nvolumes, with little, or trifling, alterations. It is manifest, also, from what fell from\nLord Chancellor Cottenham, in Saunders v. Smith, 3 Mylne & C. 711, that he\nentertained no doubt, (although he did not decide the point,) that there might be a\nviolation of the copyright of volumes of Reports, by copying verbatim a part only of\nthe cases reported. Much must, in such cases, depend upon the nature of the new\nwork, the value and extent of the copies, and the degree in which the original authors\nmay be injured thereby. In Lewis v. Fullarton, 2 Jur. (London) 127, 2 Beav. 6, Lord\nLangdale, in the case of a topographical dictionary, held, that largely copying from\nthe work in another book having a similar object, was a violation of that copyright,\nalthough the same information might have been (but, in fact, was not) obtained from\ncommon sources, open to all persons. On that occasion, he said:\n\xe2\x80\x9cNone are entitled to save themselves trouble and expense, by availing themselves,\nfor their own profit, of other men\xe2\x80\x99s works, still entitled to the protection of\ncopyright;\xe2\x80\x9d\n\nand, accordingly, in that case, he granted an injunction as to the parts pirated,\nalthough it was admitted, on all hands, that there was much which was original in the\nnew work.\nIn the present case, I have no doubt whatever, that there is an invasion of the\nplaintiffs\xe2\x80\x99 copyright; I do not say designedly, or from bad intentions; on the contrary,\nI entertain no doubt, that it was deemed a perfectly lawful and justifiable use of the\nplaintiffs\xe2\x80\x99 work. But if the defendants may take three hundred and nineteen letters,\nincluded in the plaintiffs\xe2\x80\x99 copyright, and exclusively belonging to them, there is no\nreason why another bookseller may not take other five hundred letters, and a third,\none thousand letters, and so on, and thereby the plaintiffs\xe2\x80\x99 copyright be totally\ndestroyed. Besides; every one must see, that the work of the defendants is mainly\nfounded upon these letters, constituting more than one third of their work, and\nimparting to it its greatest, nay, its essential value. Without those letters, in its present\nform the work must fall to the ground. It is not a case, where abbreviated or select\npassages are taken from particular letters; but the entire letters are taken, and those\nof most interest and value to the public, as illustrating the life, the acts, and the\ncharacter of Washington. It seems to me, therefore, that it is a clear invasion of the\nright of property of the plaintiffs, if the copying of parts of a work, not constituting a\nmajor part, can ever be a violation thereof; as upon principle and authority, I have no\ndoubt it may be. If it had been the case of a fair and bona fide abridgment of the\nwork of the plaintiffs, it might have admitted of a very different consideration.\nI have come to this conclusion, not without some regret, that it may interfere, in\nsome measure, with the very meritorious labors of the defendants, in their great\nundertaking of a series of works adapted to school libraries. But a judge is entitled in\nthis case, as in others, only to know and to act upon his duty. I hope, however, that\nsome means may be found, to produce an amicable settlement of this unhappy\ncontroversy. The report of the master must stand confirmed, and a perpetual\ninjunction be awarded, restraining the defendants, their agents, servants and\nsalesmen, from farther printing, publishing, selling, or disposing of any copy or\n128\n\n\x0ccopies of the work complained of; the \xe2\x80\x9cLife of Washington,\xe2\x80\x9d by the Rev. Charles W.\nUpham, containing any of the three hundred and nineteen letters of Washington,\nstated in the report of the master, and never before published; and that it be referred\nto a master, to take an account of the profits made by the defendants, in the\npremises; with leave for either party to apply to the court for farther directions.\nNotes and questions\n(1) Folsom v. Marsh, 9 F. Cas. 342, 349 (C.C.D. Mass. 1841), is often cited as the beginning of\nthe modern United States doctrine of fair use, but the term does not actually appear in\nJustice Story\xe2\x80\x99s decision in the 1841 case. The earliest American report that actually uses the\nexpression \xe2\x80\x9cfair use\xe2\x80\x9d is Lawrence v. Dana, 15 F. Cas. 26, 60 (C.C.D. Mass. 1869) (No. 8136).\nMore importantly, although Folsom v. Marsh is certainly an important decision in the fair use\ncannon, the caselaw from which the modern understanding of fair use evolved dates back to\nat least 1741 in Lord Hardwicke\xe2\x80\x99s decision in Gyles v. Wilcox.\n(2) In Folsom v. Marsh, Justice Story rejected the defendant\xe2\x80\x99s argument that it has simply made\na fair or bona fide abridgment of Jared Sparks\xe2\x80\x99 The Writings of George Washington. Story\nacknowledged the English authorities on fair abridgment, but he emphasized the limiting\nprinciples in those cases. It was \xe2\x80\x9cclear,\xe2\x80\x9d in Justice Story\xe2\x80\x99s view (at 345), \xe2\x80\x9cthat a mere\nselection, or different arrangement of parts of the original work, so as to bring the work into\na smaller compass,\xe2\x80\x9d did not constitute a fair and bona fide abridgment. On the contrary, to\nqualify as a fair and bona fide abridgment, \xe2\x80\x9c[t]here must be real, substantial condensation of\nthe materials, and intellectual labor and judgment bestowed thereon; and not merely the\nfacile use of the scissors; or extracts of the essential parts, constituting the chief value of the\noriginal work.\xe2\x80\x9d\n(3) In The Ideology of Authorship Revisited: Authors, Markets, and Liberal Values in Early American\nCopyright, 118 YALE LAW JOURNAL 186 (2008), Oren Bracha argues that Folsom v. Marsh was a\npivotal component of American copyright law\xe2\x80\x99s transformation in the nineteenth century.\nOver the course of the nineteenth century, Bracha contends copyright changed from an\nexclusive right to make verbatim copies of particular texts to an abstract right of general\ncontrol in which the only boundaries of a work were identified vis-\xc3\xa0-vis its market value.\nBracha argues that the concept of fair use announced in Folsom v. Marsh was a fundamental\nchange in copyright\xe2\x80\x99s baseline. In The Prehistory of Fair Use, I argue that Bracha\xe2\x80\x99s\ncharacterization is correct in broad strokes, but that he over-states the abruptness of the\nshift: Folsom v. Marsh is undoubtedly significant, but its contribution was more subtle than\nBracha suggests.42\nFair abridgement was lawful in the United States prior to Folsom v. Marsh. In Wheaton v. Peters,\n33 U.S. (8 Pet.) 591, 652 (1834) the Court said:\nAn abridgement fairly done, is itself authorship, requires mind; and is not an\ninfringement, no more than another work on the same subject.\n\nAnd abridgement did not become suddenly unlawful after Folsom v. Marsh. See e.g. Story v.\nHolcombe, 23 F. Cas. 171, 173 (C.C.D. Ohio 1847) (No. 13,497) (\xe2\x80\x9cA fair abridgment of any\n\n42\n\nSee generally, Matthew Sag, The Prehistory of Fair Use, 76 BROOKLYN LAW REVIEW 1371 (2011).\n\n129\n\n\x0cbook is considered a new work, as to write it requires labor and exercise of judgment\xe2\x80\x9d);\nLawrence v. Dana, 15 F. Cas. 26, 59 (C.C.D. Mass. 1869) (No. 8,136).\nCopyright in the premodern era was not limited to exclusive right to make verbatim copies\nof particular texts, but the scope of infringing adaptations was much narrower than today.\nThe premodern cases illustrate a half-formed notion of the derivative work right:\nunauthorized derivatives could be enjoined to defend the market of the original work, but\nthey did not constitute a separate market unto themselves.43 Folsom departs from the earlier\nEnglish cases in that it recognizes derivatives as inherently valuable\xe2\x80\x94not just something to\nbe enjoined to defend the original work against substitution. This subtle shift is important\nbecause while the boundaries of a defensive derivative right can be ascertained vis-\xc3\xa0-vis the\ndefendant\xe2\x80\x99s work on the plaintiff\xe2\x80\x99s original market, the boundaries of an offensive derivative\nright can only be determined in the context of some other limiting principle.\n(4) Why did the scope of the right to make derivate works expand? The expansion of the\nderivative right may reflect broader shifts in 19th century thinking and a desire to protect\nvalue as an abstract concept as opposed to merely protecting title. In The Prehistory of Fair Use,\nI suggest that the extension of the derivative right from defensive to offensive may simply\nreflect an anchoring effect. As more and more derivatives were enjoined defensively, courts\nand copyright owners began to see these derivatives as part of the authors\xe2\x80\x99 inherent rights in\ntheir creations.\n\nReproduction in the Modern Era\nWhite-Smith Music Publishing Co. v. Apollo Co 209 U.S. 1 (1908)\nMr. Justice Day delivered the opinion of the court.\nThe actions were brought to restrain infringement of the copyrights of two certain\nmusical compositions, published in the form of sheet music, entitled, respectively,\n\xe2\x80\x9cLittle Cotton Dolly\xe2\x80\x9d and \xe2\x80\x9cKentucky Babe.\xe2\x80\x9d The appellee, defendant below, is\nengaged in the sale of piano players and player pianos, known as the \xe2\x80\x9cApollo,\xe2\x80\x9d and\nof perforated rolls of music used in connection therewith. The appellant, as assignee\nof Adam Geibel, the composer, alleged compliance with the copyright act, and that a\ncopyright was duly obtained by it on or about March 17, 1897. The answer was\ngeneral in its nature, and upon the testimony adduced a decree was rendered, as\nstated, in favor of the Apollo Company, defendant below, appellee here.\nThe action was brought under the provisions of the copyright act, \xc2\xa7 4952, giving to\nthe author, inventor, designer or proprietor of any book, map, chart, dramatic or\nmusical composition the sole liberty of printing, reprinting, publishing, completing,\ncopying, executing, finishing and vending the same. The appellee is the manufacturer\nof certain musical instruments adapted to be used with perforated rolls. The\ntestimony discloses that certain of these rolls, used in connection with such\ninstruments, and being connected with the mechanism to which they apply,\n\n43\n\nI discuss these cases at length in The Prehistory of Fair Use.\n\n130\n\n\x0creproduce in sound the melody recorded in the two pieces of music copyrighted by\nthe appellant.\nThe manufacture of such instruments and the use of such musical rolls has\ndeveloped rapidly in recent years in this country and abroad. The record discloses\nthat in the year 1902 from seventy to seventy-five thousand of such instruments\nwere in use in the United States, and that from one million to one million and a half\nof such perforated musical rolls, to be more fully described hereafter, were made in\nthis country in that year.\nIt is evident that the question involved in the use of such rolls is one of very\nconsiderable importance, involving large property interests, and closely touching the\nrights of composers and music publishers. The case was argued with force and ability,\norally and upon elaborate briefs.\nWithout entering into a detailed discussion of the mechanical construction of such\ninstruments and rolls, it is enough to say that they are what has become familiar to\nthe public in the form of mechanical attachments to pianos, such as the pianola, and\nthe musical rolls consist of perforated sheets, which are passed over ducts connected\nwith the operating parts of the mechanism in such manner that the same are kept\nsealed until, by means of perforations in the rolls, air pressure is admitted to the\nducts which operate the pneumatic devices to sound the notes. This is done with the\naid of an operator, upon whose skill and experience the success of the rendition\nlargely depends. As the roll is drawn over the tracker board the notes are sounded as\nthe perforations admit the atmospheric pressure, the perforations having been so\narranged that the effect is to produce the melody or tune for which the roll has been\ncut.\nSpeaking in a general way, it may be said that these rolls are made in three ways. First.\nWith the score or staff notation before him the arranger, with the aid of a rule or\nguide and a graduated schedule, marks the position and size of the perforations on a\nsheet of paper to correspond to the order of notes in the composition. The marked\nsheet is then passed into the hands of an operator who cuts the apertures, by hand,\nin the paper. This perforated sheet is inspected and corrected, and when corrected is\ncalled \xe2\x80\x9cthe original.\xe2\x80\x9d This original is used as a stencil and by passing ink rollers over\nit a pattern is prepared. The stenciled perforations are then cut, producing the master\nor templet. The master is placed in the perforating machine and reproductions\nthereof obtained, which are the perforated rolls in question. Expression marks are\nseparately copied on the perforated music sheets by means of rubber stamps. Second.\nA perforated music roll made by another manufacturer may be used from which to\nmake a new record. Third. By playing upon a piano to which is attached an\nautomatic recording device producing a perforated matrix from which a perforated\nmusic roll may be produced.\nIt is evident, therefore, that persons skilled in the art can take such pieces of sheet\nmusic in staff notation, and by means of the proper instruments make drawings\nindicating the perforations, which are afterwards outlined and cut upon the rolls in\nsuch wise as to reproduce, with the aid of the other mechanism, the music which is\nrecorded in the copyrighted sheets.\n\n131\n\n\x0cThe learned counsel for the parties to this action advance opposing theories as to the\nnature and extent of the copyright given by statutory laws enacted by Congress for\nthe protection of copyright, and a determination of which is the true one will go far\nto decide the rights of the parties in this case. On behalf of the appellant it is insisted\nthat it is the intention of the copyright act to protect the intellectual conception\nwhich has resulted in the compilation of notes which, when properly played,\nproduces the melody which is the real invention of the composer. It is insisted that\nthis is the thing which Congress intended to protect, and that the protection covers\nall means of expression of the order of notes which produce the air or melody which\nthe composer has invented.\nMusic, it is argued, is intended for the ear as writing is for the eye, and that it is the\nintention of the copyright act to prevent the multiplication of every means of\nreproducing the music of the composer to the ear.\nOn the other hand, it is contended that while it is true that copyright statutes are\nintended to reward mental creations or conceptions, that the extent of this\nprotection is a matter of statutory law, and that it has been extended only to the\ntangible results of mental conception, and that only the tangible thing is dealt with by\nthe law, and its multiplication or reproduction is all that is protected by the statute.\nIt must be admitted that the decisions, so far as brought to our attention in the full\ndiscussion had at the bar and upon the briefs, have been uniformly to the effect that\nthese perforated rolls operated in connection with mechanical devices for the\nproduction of music are not within the copyright act. It was so held in Kennedy v.\nMcTammany, 33 Fed. Rep. 584. In that case the learned judge said:\n\xe2\x80\x9cI cannot convince myself that these perforated sheets of paper are copies of sheet\nmusic within the meaning of the copyright law. They are not made to be addressed\nto the eye as sheet music, but they form a part of a machine. They are not designed\nto be used for such purposes as sheet music, nor do they in any sense occupy the\nsame field as sheet music. They are a mechanical invention made for the sole\npurpose of performing tunes mechanically upon a musical instrument.\xe2\x80\x9d\n\nAgain the matter was given careful consideration in the Court of Appeals of the\nDistrict of Columbia in an opinion by Justice Shepard (Stearn v. Rosey, 17 App. D.C.\n562), in which that learned justice, speaking for the court, said:\n\xe2\x80\x9cWe cannot regard the reproduction, through the agency of a phonograph, of the\nsounds of musical instruments playing the music composed and published by the\ncomplainants, as the copy or publication of the same within the meaning of the act.\nThe ordinary signification of the words \xe2\x80\x98copying,\xe2\x80\x99 \xe2\x80\x98publishing,\xe2\x80\x99 etc., cannot be\nstretched to include it.\n\xe2\x80\x9cIt is not pretended that the marking upon waxed cylinders can be made out by the\neye or that they can be utilized in any other way than as parts of the mechanism of\nthe phonograph.\n\xe2\x80\x9cConveying no meaning, then, to the eye of even an expert musician and wholly\nincapable of use save in and as a part of a machine specially adapted to make them\ngive up the records which they contain, these prepared waxed cylinders can neither\nsubstitute the copyrighted sheets of music nor serve any purpose which is within\ntheir scope. In these respects there would seem to be no substantial difference\nbetween them and the metal cylinder of the old and familiar music box, and this,\n\n132\n\n\x0cthough in use at and before the passage of the copyright act, has not been regarded\nas infringing upon the copyrights of authors and publishers.\xe2\x80\x9d\n\nThe question came before the English courts in Boosey v. Whight (1899, 1 Ch. 836),\nand it was there held that these perforated rolls did not infringe the English\ncopyright act protecting sheets of music. Upon appeal Lindley, Master of the Rolls,\nused this pertinent language (1900, 1 Ch. 122):\n\xe2\x80\x9cThe plaintiffs are entitled to copyright in three sheets of music. What does this\nmean? It means that they have the exclusive right of printing or otherwise\nmultiplying copies of those sheets of music, i.e., of the bars, notes, and other printed\nwords and signs on these sheets. But the plaintiffs have no exclusive right to the\nproduction of the sounds indicated by or on those sheets of music; nor to the\nperformance in private of the music indicated by such sheets; nor to any mechanism\nfor the production of such sounds or music.\n\xe2\x80\x9cThe plaintiff\xe2\x80\x99s rights are not infringed except by an unauthorized copy of their\nsheets of music. We need not trouble ourselves about authority; no question turning\non the meaning of that expression has to be considered in this case. The only\nquestion we have to consider is whether the defendants have copied the plaintiff\xe2\x80\x99s\nsheets of music.\n\xe2\x80\x9cThe defendants have taken those sheets of music and have prepared from them\nsheets of paper with perforations in them, and these perforated sheets, when put\ninto and used with properly constructed machines or instruments, will produce or\nenable the machines or instruments to produce the music indicated on the plaintiff\xe2\x80\x99s\nsheets. In this sense the defendant\xe2\x80\x99s perforated rolls have been copies from the\nplaintiff\xe2\x80\x99s sheets.\n\xe2\x80\x9cBut is this the kind of copying which is prohibited by the copyright act; or rather is\nthe perforated sheet made as above mentioned a copy of the sheet of music from\nwhich it is made? Is it a copy at all? Is it a copy within the meaning of the copyright\nact? A sheet of music is treated in the copyright act as if it were a book or sheet of\nletter press. Any mode of copying such a thing, whether by printing, writing,\nphotography, or by some other method not yet invented, would no doubt be\ncopying. So, perhaps, might a perforated sheet of paper to be sung or played from\nin the same way as sheets of music are sung or played from. But to play an\ninstrument from a sheet of music which appears to the eye is one thing; to play an\ninstrument with a perforated sheet which itself forms part of the mechanism which\nproduces the music is quite another thing.\xe2\x80\x9d\n\nSince these cases were decided Congress has repeatedly had occasion to amend the\ncopyright law. The English cases, the decision of the District Court of Appeals, and\nJudge Colt\xe2\x80\x99s decision must have been well known to the members of Congress; and\nalthough the manufacture of mechanical musical instruments had not grown to the\nproportions which they have since attained they were well known, and the omission\nof Congress to specifically legislate concerning them might well be taken to be an\nacquiescence in the judicial construction given to the copyright laws.\nThis country was not a party to the Berne convention of 1886, concerning\ninternational copyright, in which it was specifically provided:\n\xe2\x80\x9cIt is understood that the manufacture and sale of instruments serving to reproduce\nmechanically the airs of music borrowed from the private domain are not\nconsidered as constituting musical infringement.\xe2\x80\x9d\n\n133\n\n\x0cBut the proceedings of this convention were doubtless well known to Congress.\nIn the last analysis this case turns upon the construction of a statute, for it is\nperfectly well settled that the protection given to copyrights in this country is wholly\nstatutory. When we turn to the consideration of the act it seems evident that\nCongress has dealt with the tangible thing, a copy of which is required to be filed\nwith the Librarian of Congress, and wherever the words are used (copy or copies)\nthey seem to refer to the term in its ordinary sense of indicating reproduction or\nduplication of the original. \xe2\x80\xa6\nWhat is meant by a copy? We have already referred to the common understanding of\nit as a reproduction or duplication of a thing. A definition was given by Bailey, J., in\nWest v. Francis, 5 B. & A. 743, quoted with approval in Boosey v. Whight, supra. He said:\n\xe2\x80\x9cA copy is that which comes so near to the original as to give to every person seeing\nit the idea created by the original.\xe2\x80\x9d\nVarious definitions have been given by the experts called in the case. The one which\nmost commends itself to our judgment is perhaps as clear as can be made, and\ndefines a copy of a musical composition to be \xe2\x80\x9ca written or printed record of it in\nintelligible notation.\xe2\x80\x9d It may be true that in a broad sense a mechanical instrument\nwhich reproduces a tune copies it; but this is a strained and artificial meaning. When\nthe combination of musical sounds is reproduced to the ear it is the original tune as\nconceived by the author which is heard. These musical tones are not a copy which\nappeals to the eye. In no sense can musical sounds which reach us through the sense\nof hearing be said to be copies as that term is generally understood, and as we believe\nit was intended to be understood in the statutes under consideration. A musical\ncomposition is an intellectual creation which first exists in the mind of the composer;\nhe may play it for the first time upon an instrument. It is not susceptible of being\ncopied until it has been put in a form which others can see and read. The statute has\nnot provided for the protection of the intellectual conception apart from the thing\nproduced, however meritorious such conception may be, but has provided for the\nmaking and filing of a tangible thing, against the publication and duplication of\nwhich it is the purpose of the statute to protect the composer.\nAlso it may be noted in this connection that if the broad construction of publishing\nand copying contended for by the appellants is to be given to this statute it would\nseem equally applicable to the cylinder of a music box, with its mechanical\narrangement for the reproduction of melodious sounds, or the record of the\ngraphophone, or to the pipe organ operated by devices similar to those in use in the\npianola. All these instruments were well known when these various copyright acts\nwere passed. Can it be that it was the intention of Congress to permit them to be\nheld as infringements and suppressed by injunctions?\nAfter all, what is the perforated roll? The fact is clearly established in the testimony\nin this case that even those skilled in the making of these rolls are unable to read\nthem as musical compositions, as those in staff notation are read by the performer. It\nis true that there is some testimony to the effect that great skill and patience might\nenable the operator to read his record as he could a piece of music written in staff\nnotation. But the weight of the testimony is emphatically the other way, and they are\n\n134\n\n\x0cnot intended to be read as an ordinary piece of sheet music, which to those skilled in\nthe art conveys, by reading, in playing or singing, definite impressions of the melody.\nThese perforated rolls are parts of a machine which, when duly applied and properly\noperated in connection with the mechanism to which they are adapted, produce\nmusical tones in harmonious combination. But we cannot think that they are copies\nwithin the meaning of the copyright act.\nIt may be true that the use of these perforated rolls, in the absence of statutory\nprotection, enables the manufacturers thereof to enjoy the use of musical\ncompositions for which they pay no value. But such considerations properly address\nthemselves to the legislative and not to the judicial branch of the Government. As\nthe act of Congress now stands we believe it does not include these records as copies\nor publications of the copyrighted music involved in these cases.\nThe decrees of the Circuit Court of Appeals are affirmed.\nNotes and Questions\n(1) In White-Smith Music Publishing Co. v. Apollo Co, 209 US 1 (1908), the Supreme Court held\nthat music encoded in the mechanical cylinder of a player-piano was not a \xe2\x80\x9ccopy\xe2\x80\x9d because\nthe player-piano rolls were not human-readable: they were \xe2\x80\x9cnot made to be addressed to the\neye as sheet music, but they form a part of a machine[.]\xe2\x80\x9d\n(2) Congress responded to the White-Smith decision by amending the definition of a copy,\nmaking it clear that actual human readership or direct human readability were not required.\nInstructions encoded in machine-readable memory that could reproduce the sound but were\nunintelligible to humans qualified as \xe2\x80\x9ccopies\xe2\x80\x9d in the relevant sense. The modern Copyright\nAct takes the same view. It gives copyright owners the exclusive right \xe2\x80\x9cto reproduce the\ncopyrighted work in copies\xe2\x80\x9d and defines copies in Section 101 as \xe2\x80\x9cmaterial objects . . . in\nwhich a work is fixed . . . and from which the work can be perceived, reproduced, or\notherwise communicated.\n(3) [Placeholder for summary of competition law issues]\nKalem Co. v. Harper Brothers, 222 U.S. 55 (1911)\nMr. Justice Holmes delivered the opinion of the court\nThis is an appeal from a decree restraining an alleged infringement of the copyright\nupon the late General Lew Wallace\xe2\x80\x99s book \xe2\x80\x98\xe2\x80\x98Ben Hur.\xe2\x80\x99 The case was heard on the\npleadings and an agreed statement of facts, and the only issue is whether those facts\nconstitute an infringement of the copyright upon the book. So far as they need to be\nstated here they are as follows. The appellant and defendant, the Kalem Company, is\nengaged in the production of moving picture films, the operation and effect of which\nare too well known to require description. By means of them anything of general\ninterest from a coronation to a prize fight is presented to the public with almost the\nillusion of reality \xe2\x80\x94 latterly even color being more or less reproduced. The\ndefendant employed a man to read Ben Hur and to write out such a description or\nscenario of certain portions that it could be followed in action; these portions giving\nenough of the story to be identified with ease. It then caused the described action to\nbe performed and took negatives for moving pictures of the scenes, from which it\nproduced films suitable for exhibition. These films it expected and intended to sell\n135\n\n\x0cfor use as moving pictures in the way in which such pictures commonly are used. It\nadvertised them under the title Ben Hur. \xe2\x80\x98\xe2\x80\x98Scenery and Supers by Pain\xe2\x80\x99s Fireworks\nCo. Costumes from Metropolitan Opera House. Chariot Race by 3d Battery,\nBrooklyn. Positively the Most Superb Moving Picture Spectacle ever Produced in\nAmerica in Sixteen Magnificent Scenes,\xe2\x80\x99 etc., with taking titles, culminating in \xe2\x80\x98Ben\nHur Victor.\xe2\x80\x99 It sold the films and public exhibitions from them took place.\nThe subdivision of the question that has the most general importance is whether the\npublic exhibition of these moving pictures infringed any rights under the copyright\nlaw. By Rev. Stat., \xc2\xa7 4952, as amended by the act of March 3, 1891, c. 565, 26 Stat.\n1106, authors have the exclusive right to dramatize any of their works. So, if the\nexhibition was or was founded on a dramatizing of Ben Hur this copyright was\ninfringed. We are of opinion that Ben Hur was dramatized by what was done.\nWhether we consider the purpose of this clause of the statute, or the etymological\nhistory and present usages of language, drama may be achieved by action as well as\nby speech. Action can tell a story, display all the most vivid relations between men,\nand depict every kind of human emotion, without the aid of a word. It would be\nimpossible to deny the title of drama to pantomime as played by masters of the art.\nBut if a pantomime of Ben Hur would be a dramatizing of Ben Hur, it would be\nnone the less so that it was exhibited to the audience by reflection from a glass and\nnot by direct vision of the figures \xe2\x80\x94 as sometimes has been done in order to\nproduce ghostly or inexplicable effects. The essence of the matter in the case last\nsupposed is not the mechanism employed but that we see the event or story lived.\nThe moving pictures are only less vivid than reflections from a mirror. With the\nformer as with the latter our visual impression \xe2\x80\x94 what we see \xe2\x80\x94 is caused by the\nreal pantomime of real men through the medium of natural forces, although the\nmachinery is different and more complex. How it would be if the illusion of motion\nwere produced from paintings instead of from photographs of the real thing may be\nleft open until the question shall arise.\nIt is said that pictures of scenes in a novel may be made and exhibited without\ninfringing the copyright and that they may be copyrighted themselves. Indeed it was\nconceded by the Circuit Court of Appeals that these films could be copyrighted and,\nwe may assume, could be exhibited as photographs. Whether this concession is\ncorrect or not, in view of the fact that they are photographs of an unlawful\ndramatization of the novel, we need not decide. We will assume that it is. But it does\nnot follow that the use of them in motion does not infringe the author\xe2\x80\x99s rights. The\nmost innocent objects, such as the mirror in the other case that we have supposed,\nmay be used for unlawful purposes. And if, as we have tried to show, moving\npictures may be used for dramatizing a novel, when the photographs are used in that\nway they are used to infringe a right which the statute reserves.\nBut again it is said that the defendant did not produce the representations, but\nmerely sold the films to jobbers, and on that ground ought not to be held. In some\ncases where an ordinary article of commerce is sold nice questions may arise as to the\npoint at which the seller becomes an accomplice in a subsequent illegal use by the\nbuyer. It has been held that mere indifferent supposition or knowledge on the part of\nthe seller that the buyer of spirituous liquor is contemplating such unlawful use is not\nenough to connect him with the possible unlawful consequences, but that if the sale\n\n136\n\n\x0cwas made with a view to the illegal resale the price could not be recovered. But no\nsuch niceties are involved here. The defendant not only expected but invoked by\nadvertisement the use of its films for dramatic reproduction of the story. That was\nthe most conspicuous purpose for which they could be used, and the one for which\nespecially they were made. If the defendant did not contribute to the infringement it\nis impossible to do so except by taking part in the final act. It is liable on principles\nrecognized in every part of the law.\nIt is argued that the law construed as we have construed it goes beyond the power\nconferred upon Congress by the Constitution, to secure to authors for a limited time\nthe exclusive right to their writings. Art. I, \xc2\xa7 8, cl. 8. It is suggested that to extend the\ncopyright to a case like this is to extend it to the ideas as distinguished from the\nwords in which those ideas are clothed. But there is no attempt to make a monopoly\nof the ideas expressed. The law confines itself to a particular, cognate and well\nknown form of reproduction. If to that extent a grant of monopoly is thought a\nproper way to secure the right to the writings this court cannot say that Congress\nwas wrong.\nDecree affirmed.\nNotes and questions\n(1) Dramatization, not reproduction?\nArguably the most interesting aspect of the Supreme Court\xe2\x80\x99s decision in Kalem Co. v. Harper\nBrothers is what is missing. It seems remarkable in light of our current understanding of\ncopyright law, but the court of appeals in Harper & Bros. v. Kalem Co., 169 F. 61 (2d Cir.\n1909) held in essence that a film based on a book was not a copy of the book. The court of\nappeals said (at 63):\nThe series of photographs taken by the defendant constitutes a single picture,\ncapable of copyright as such; and as pictures only represent the artist\xe2\x80\x99s idea of what\nthe author has expressed in words, they do not infringe a copyrighted book or\ndrama, and should not as a photograph be enjoined. This distinction between\ninfringement of a copyright of a book and of the performing rights is like the\ndistinction in respect to an infringement between perforated music rolls and sheet\nmusic discussed in the case of White-Smith Co. v. Apollo Co., 209 U.S. 1, where the\ncourt said: \xe2\x80\x9cThere is no complaint in this case of the public performances of\ncopyrighted music, nor is the question involved whether the manufacturers of such\nperforated music rolls, when sold for use in public performances, might be held as\ncontributory infringers.\xe2\x80\x9d\n\nThe notion that \xe2\x80\x9cpictures only represent the artist\xe2\x80\x99s idea of what the author has expressed in\nwords\xe2\x80\x9d and thus fall on the idea side of the idea-expression dichotomy that fails to grasp that\nthe pictures in sequence tell a story and that story was the Ben Hur story.\n(2) Like the White-Smith v. Apollo case, Kalem case reflects a much narrower understanding of\nthe reproduction right. There was no general derivative work right in the copyright act of the\nday. However, the Act did give the copyright owner the right to dramatize the work and the\nCourt of Appeals agreed with the plaintiff that the act of exhibiting the film violated the\npublisher\xe2\x80\x99s dramatization right. The Supreme Court agreed.\n\n137\n\n\x0c(3) If the film version of Ben Hur had been regarded as an infringing copy of the book, then\nthe moviemaker\xe2\x80\x99s liability would have been straightforward. However, because the right\ninfringed related to dramatization, the moviemaker could only be indirectly liable for the\nactions of the individual movie theaters. To be clear, dramatization in this context is a verb,\nnot a noun. It was the act of showing the pictures in sequence to the public that amounted\nto the infringing dramatization. Justice Holmes had no hesitation in attributing the acts of\nthe movie theaters to the defendant because it \xe2\x80\x9cnot only expected but invoked by\nadvertisement the use of its films for dramatic reproduction of the story\xe2\x80\x9d.\n\nThe right to prepare a derivative work based upon the copyrighted work\nEarlier Copyright Acts\nThe express statutory right to \xe2\x80\x9cprepare a derivative work based upon the copyrighted work\xe2\x80\x9d\nis recent addition to American copyright law. Section 1 of the Copyright Act of 1790 gave\ndomestic authors who complied with certain formalities the \xe2\x80\x9csole right and liberty\xe2\x80\x9d to print,\nreprint, publish, and to vend (sell or offer for sale) qualifying maps, charts, and books, for a\nterm of fourteen years. Section 2 added an importation right, but the Act did not expressly\nrecognize a derivative right.\nIn 1909, Congress provided a more expansive but still specific list of derivatives that authors\nwere entitled to control. The Copyright Act of 1909, Section 1(b) conferred an exclusive\nright (among other things) to translate literary works, to dramatize nondramatic literary\nworks, and to novelize a dramatic work. It is important to note the structure of the 1909 Act.\nThe Act not only identified specific types of derivatives that authors were entitled to control;\nit also tied each type of derivative to the type of work being adapted. It was not until the\nCopyright Act of 1976 that United States copyright law conferred an express general right to\ncontrol the preparation of derivative works based upon copyrighted works.\nThe Copyright Act of 1976\nSection 106(2) of the Copyright Act of 1976 grants copyright owners the exclusive right \xe2\x80\x9cto\nprepare derivative works based upon the copyrighted work\xe2\x80\x9d. But what does this mean?\nBefore delving into the case law it is important to take stock of the other provisions of the\nCopyright Act that illuminate the meaning of Section 106(2).\n17 U.S. Code \xc2\xa7101\nA \xe2\x80\x9cderivative work\xe2\x80\x9d is a work based upon one or more preexisting works, such as a\ntranslation, musical arrangement, dramatization, fictionalization, motion picture\nversion, sound recording, art reproduction, abridgment, condensation, or any other\nform in which a work may be recast, transformed, or adapted. A work consisting of\neditorial revisions, annotations, elaborations, or other modifications, which, as a\nwhole, represent an original work of authorship, is a \xe2\x80\x9cderivative work\xe2\x80\x9d.\nSection 101 of the Copyright Act of 1976 defines a \xe2\x80\x9cderivative work\xe2\x80\x9d as \xe2\x80\x9ca work based upon\none or more preexisting works\xe2\x80\x9d and then lists several examples followed by a catchall \xe2\x80\x9cor\nany other form in which a work may be recast, transformed, or adapted.\xe2\x80\x9d\nWhat does it mean for one work to be \xe2\x80\x9cbased upon one or more preexisting works\xe2\x80\x9d?\nAssuming that there are two conceptually distinguishable works, what is the nature and\n\n138\n\n\x0cextent of connection between required to assert that one is a derivative work (or, \xe2\x80\x9ca work\nbased upon\xe2\x80\x9d) the other? Speaking loosely, one could say that a musical composition inspired\nby a painting is a work \xe2\x80\x98based upon\xe2\x80\x99 a preexisting copyrighted work, but that is obviously not\nwhat Congress intended.\nH.R. Rep. No. 1476, 94th Cong., 2d Sess. 62 (1976); S. Rep. No. 473, 94th\nCong., 1st Sess. 58 (1975).\nTo be an infringement the \xe2\x80\x9cderivative work\xe2\x80\x9d must be \xe2\x80\x9cbased upon the copyrighted\nwork.\xe2\x80\x9d \xe2\x80\xa6 Thus, to constitute a violation of section 106(2), the infringing work must\nincorporate a portion of the copyrighted work in some form; for example, a detailed\ncommentary on a work or programmatic musical composition inspired by a novel\nwould not normally constitute infringements under this clause.\n\nNot all transformations, recastings, or adaptations will create a derivative work as that term\nis used in the Copyright Act because many such activities do not produce a work that\nincludes a sufficient amount of the original copyrighted expression. Explanations,\ncommentaries, indexes, and bibliographies and similar supplementary works are not\nderivative works. These works would not exist but for the copyrighted work which they\nsupplement, however, \xe2\x80\x9cbut for\xe2\x80\x9d causation is not enough.\nLimiting principles\nThere are at least three key limiting principles that apply to the exclusive right \xe2\x80\x9cto prepare\nderivative works based upon the copyrighted work\xe2\x80\x9d under United States copyright law.\nFirst, making a derivative work necessitates recasting a qualitatively and quantitatively\nsignificant amount of the primary work\xe2\x80\x99s original expression into a new form or a new\nversion. Assessing whether this threshold has been met requires some understanding of what\nmade the primary work copyrightable in the first place. Suppose we reduced a novel such as\nFifty Shades of Gray down to a table of individual words and the frequency with which they\nappeared in the text. We could program a computer to randomly construct an alternative\nnovel, Gray Fifty Shades Of, which followed traditional rules of English grammar and used the\nsame individual words. A few things should be obvious about, Gray Fifty Shades Of: (i) it\nwould be terrible; (ii) it would not exist, but for Fifty Shades Of Gray, (iii) but it would not\nconvey any of the original expression of the primary work. Without some nontrivial overlap\nin original expression Gray Fifty Shades Of would not be a derivative work. On the other hand,\na sequel to the primary work that uses the same characters and settings would be very likely\nto be a derivative work.\nSecond, not all reproductions are derivative works, but all infringing derivatives must meet\nthe same threshold of similarity that is required to infringe the reproduction right. This\nmeans that the right to \xe2\x80\x9cproduce a derivative work based upon the copyrighted work\xe2\x80\x9d is in\nsome sense superfluous to the reproduction right. 44 But Section 106(2) is not entirely\npointless. It makes it easier for a copyright owner to license reproduction but still object to\nunauthorized changes to her work. Also, the existence of the right to \xe2\x80\x9cproduce a derivative\nwork based upon the copyrighted work\xe2\x80\x9d gives courts some guidance as to the extent of\nsimilarity required to make one work a reproduction of some prior work. Without the\nMelville B. Nimmer & David Nimmer, Nimmer On Copyright \xc2\xa7 8.09 [A] (2012). See also 4 Patry on\nCopyright \xc2\xa7 12:13 \xe2\x80\x9cIn order to infringe the derivative right, there must be substantial similarity in protectible\nexpression between the parties\xe2\x80\x99 works.\xe2\x80\x9d\n44\n\n139\n\n\x0cderivative work right it may not be obvious that translations, abridgments, fictionalizations,\nand dramatizations are presumptively within the scope of the copyright owners rights.\nThird, the relationship between fair use and derivative works can be confusing. Technically,\nsome fair uses will create derivative works, but if a use is fair it does not infringe the\nexclusive right to \xe2\x80\x9cproduce a derivative work based upon the copyrighted work,\xe2\x80\x9d because\nthat right is expressly conditioned as subject to the fair use doctrine. This is not that odd,\nafter all, some fair uses create reproductions of the original copyrighted work that don\xe2\x80\x99t\ninfringe the reproduction right in section 106(1).\nSome find it confusing that the Copyright Act defines a derivative work, in part, as one that\ntransforms a preexisting work, and yet the Supreme Court has said that whether a work is\ntransformative is a key to determining its status as fair use.45 No doubt, the confusion of terms\nis unfortunate, but the follow explanation may help:\nMatthew Sag, Predicting Fair Use, 73 OHIO STATE LAW JOURNAL 47, 55\n(2012)\nA transformative work, in the fair use sense, is one that imbues the original \xe2\x80\x9cwith a\nfurther purpose or different character, altering the first with new expression,\nmeaning, or message.\xe2\x80\x9d Thus, the assessment of transformativeness is not merely a\nquestion of the degree of difference between two works; rather, it requires a judgment\nof the motivation and meaning of those differences.\nThe difference between a noninfringing transformative use and an infringing\nderivative work can be illustrated as follows: if Pride and Prejudice were still subject to\ncopyright protection, the novel Pride and Prejudice and Zombies, which combines Jane\nAusten\xe2\x80\x99s original work with scenes involving zombies, cannibalism, and ninjas,\nwould be considered a transformative parody of the original, and thus fair use rather\nthan infringement. In contrast, a more traditional sequel would merely be an\ninfringing derivative work. (emphasis added).\n\nNote this explanation juxtaposes a transformative parody that would be fair use with an\ninfringing derivative. It does not suggest that transformative use and derivative works are\nmutually exclusive categories, although once a work has been determined to be fair use there\nnot much clarity to be gained by continuing to refer to it as a derivative work as well.\nThe Harry Potter Lexicon Case as an illustration of the relationship between the\nconcepts of reproduction, adaptation, and fair use\nAt the time of the litigation, J.K. Rowling was the author of seven highly acclaimed Harry\nPotter books and two short companion books to the Harry Potter series. Steven Vander Ark\nbegan work on The Harry Potter Lexicon website in 1999 and opened it to the public in\n2000. The Harry Potter Lexicon was a crowd-sourced fan website that collected and organized\ninformation from the Harry Potter books in encyclopedic form. The lexicon website was\nwell received, and received positive feedback from Rowling herself. At the trial Rowling said:\n\xe2\x80\x9cthis is such a great site that I have been known to sneak into an internet cafe while out\nwriting and check a fact rather than go into a bookshop and buy a copy of Harry Potter\n(which is embarrassing).\xe2\x80\x9d\nCampbell v. Acuff-Rose at 579 (transformative works ... lie at the heart of the fair use doctrine\xe2\x80\x99s guarantee of\nbreathing space...).\n45\n\n140\n\n\x0cIn 2007, RDR Books contacted Vander Ark about the possibility of publishing a Harry\nPotter encyclopedia based on some of the materials from the Lexicon website. RDR\novercame Vander Ark initial reluctance to publish by agreeing to defend and indemnify\nVander Ark in the event of any lawsuit. The Harry Potter Lexicon was published as an\nencyclopedia of Harry Potter information.\nThe extract that follows has been significantly edited to focus on the derivative work\ndiscussion.\nWarner Brothers Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y.\n2008)\nThe Lexicon is an A-to-Z guide to the creatures, characters, objects, events, and\nplaces that exist in the world of Harry Potter. As received by the Court in evidence,\nthe Lexicon manuscript is more than 400 type-written pages long and contains 2,437\nentries organized alphabetically. The first few pages contain a list of abbreviations\nused throughout the Lexicon to cite to the original sources of the material.\nThe Lexicon itself makes clear that the only source of its content is the work of J.K.\nRowling. The first page of the Lexicon manuscript states: \xe2\x80\x9cAll the information in the\nHarry Potter Lexicon comes from J.K. Rowling, either in the novels, the\n\xe2\x80\x98schoolbooks,\xe2\x80\x99 from her interviews, or from material which she developed or wrote\nherself.\xe2\x80\x9d Aside from four dictionary citations, no other citations to third-party works\nappear in the Lexicon.\nThe Lexicon entries cull every item and character that appears in the Harry Potter\nworks, no matter if it plays a significant or insignificant role in the story. The entries\ncover every spell (e.g., Expecto Patronum, Expelliarmus, and Incendio), potion (e.g.,\nLove Potion, Felix Felicis, and Draught of Living Death), magical item or device (e.g.,\nDeathly Hallows, Horcrux, Cloak of Invisibility), form of magic (e.g., Legilimency,\nOcclumency, and the Dark Arts), creature (e.g., Blast-Ended Skrewt, Dementors, and\nBlood-Sucking Bugbears), character (e.g., Harry Potter, Hagrid, and Lord\nVoldemort), group or force (e.g., Aurors, Dumbledore\xe2\x80\x99s Army, Death Eaters),\ninvented game (e.g., Quidditch), and imaginary place (e.g., Hogwarts School of\nWitchcraft and Wizardry, Diagon Alley, and the Ministry of Magic) that appear in the\nHarry Potter works. The Lexicon also contains entries for items that are not\nexplicitly named in the Harry Potter works but which Vander Ark has identified,\nsuch as medical magic, candle magic, wizard space, wizard clothing, and remorse.\nSome of the entries describe places or things that exist in the real world but also have\na place in the Harry Potter works, such as moors, Greece, and Cornwall.\nEach entry, with the exception of the shortest ones, gathers and synthesizes pieces of\ninformation relating to its subject that appear scattered across the Harry Potter\nnovels, the companion books, The Daily Prophet newsletters, Famous Wizard Cards,\nand published interviews of Rowling. The types of information contained in the\nentries include descriptions of the subject\xe2\x80\x99s attributes, role in the story, relationship\nto other characters or things, and events involving the subject. Repositories of such\ninformation, the entries seek to give as complete a picture as possible of each item or\ncharacter in the Harry Potter world, many of which appear only sporadically\nthroughout the series or in various sources of Harry Potter material.\n141\n\n\x0cThe snippets of information in the entries are generally followed by citations in\nparentheses that indicate where they were found within the corpus of the Harry\nPotter works. The thoroughness of the Lexicon\xe2\x80\x99s citation, however, is not consistent;\nsome entries contain very few citations in relation to the amount material provided.\nWhen the Lexicon cites to one of the seven Harry Potter novels, the citation\nprovides only the book and chapter number.\nWhile not its primary purpose, the Lexicon includes commentary and background\ninformation from outside knowledge on occasion. For example, the Lexicon\ncontains sporadic etymological references, (e.g., entries for \xe2\x80\x9cColloportus,\xe2\x80\x9d \xe2\x80\x9cLupin,\nRemus,\xe2\x80\x9d \xe2\x80\x9cAlohamora,\xe2\x80\x9d \xe2\x80\x9cFidelius Charm\xe2\x80\x9d), analogies to characters outside the Harry\nPotter world such as Merlin, and observations of Rowling\xe2\x80\x99s allusions to other works\nof literature such as \xe2\x80\x9cthe weird sisters\xe2\x80\x9d from Shakespeare\xe2\x80\x99s Macbeth. The Lexicon\nalso points to the very few \xe2\x80\x9cflints,\xe2\x80\x9d or errors in the continuity of the story, that\nappear in the Harry Potter series.\nWhile there was considerable opining at trial as to the type of reference work the\nLexicon purports to be and whether it qualifies as such (no doubt in part due to its\ntitle), the Lexicon fits in the narrow genre of non-fiction reference guides to fictional\nworks. As Defendant\xe2\x80\x99s expert testified, the Harry Potter series is a multi-volume\nwork of fantasy literature, similar to the works of J.R.R. Tolkien and C.S. Lewis. Such\nworks lend themselves to companion guides or reference works because they reveal\nan elaborate imaginary world over thousands of pages, involving many characters,\ncreatures, and magical objects that appear and reappear across thousands of pages.\nThe Lexicon, an A-to-Z guide which synthesizes information from the series and\ngenerally provides citations for location of that information rather than offering\ncommentary, is most comparable to the comprehensive work of Paul F. Ford,\nCompanion to Narnia: A Complete Guide to the Magical World of C.S. Lewis\xe2\x80\x99s The\nChronicles of Narnia, or the unauthorized A-to-Z guide by George W. Beahm, Fact,\nFiction, and Folklore in Harry Potter\xe2\x80\x99s World: An Unofficial Guide.\nAt trial, Rowling testified that the Lexicon took all the highlights of her work, in\nother words her characters\xe2\x80\x99 secret history, the jokes certainly, certain exciting\nnarrative twists, all the things that are the highlights of her stories. She compared this\ntaking of her work to plundering all of the \xe2\x80\x9cplums in [her] cake.\xe2\x80\x9d At trial, the\ntestimony of Rowling and the expert opinion of Johnson focused at length on the\nLexicon\xe2\x80\x99s verbatim copying of language from the Harry Potter works. Johnson\ntestified that in particular, entries that deal with invented terms, creatures, places and\nthings from the Harry Potter books use \xe2\x80\x9cagain and again the specific, very colorful,\nidiosyncratic ... nouns and phrases of Ms. Rowling.\xe2\x80\x9d\nAlthough it is difficult to quantify how much of the language in the Lexicon is\ndirectly lifted from the Harry Potter novels and companion books, the Lexicon\nindeed contains at least a troubling amount of direct quotation or close paraphrasing\nof Rowling\xe2\x80\x99s original language. The Lexicon occasionally uses quotation marks to\nindicate Rowling\xe2\x80\x99s language, but more often the original language is copied without\nquotation marks, often making it difficult to know which words are Rowling\xe2\x80\x99s and\nwhich are Vander Ark\xe2\x80\x99s.\n\n142\n\n\x0cFor example, in the entry for \xe2\x80\x9carmor, goblin made,\xe2\x80\x9d the Lexicon uses Rowling\xe2\x80\x99s\npoetic language nearly verbatim without quotation marks. The original language from\nHarry Potter and the Deathly Hallows reads:\n\xe2\x80\x9cMuggle-borns,\xe2\x80\x9d he said. \xe2\x80\x9cGoblinmade armour does not require cleaning, simple\ngirl. Goblins\xe2\x80\x99 silver repels mundane dirt, imbibing only that which strengthens it.\xe2\x80\x9d\n\nThe Lexicon entry for \xe2\x80\x9carmor, goblin made\xe2\x80\x9d reads in its entirety:\nSome armor in the wizarding world is made by goblins, and it is quite valuable. (e.g.,\nHBP20) According to Phineas Nigellus, goblin-made armor does not require\ncleaning, because goblins\xe2\x80\x99 silver repels mundane dirt, imbibing only that which\nstrengthens it, such as basilisk venom. In this context, \xe2\x80\x9carmor\xe2\x80\x9d also includes blades\nsuch as swords.\n\nAlthough the Lexicon entry introduces Rowling\xe2\x80\x99s language with the phrase,\n\xe2\x80\x9cAccording to Phineas Nigellus,\xe2\x80\x9d it does not use quotation marks.\nThe Lexicon entry for \xe2\x80\x9cDementors\xe2\x80\x9d reproduces Rowling\xe2\x80\x99s vivid description of this\ncreature sometimes using quotation marks and sometimes quoting or closely\nparaphrasing without indicating which language is original expression. The original\nlanguage appears in Chapters 5 and 10 of Harry Potter and the Prisoner of Azkaban\nas follows:\nIts face was completely hidden beneath its hood. \xe2\x80\xa6 There was a hand protruding\nfrom the cloak and it was glistening, grayish, slimy-looking, and scabbed, like\nsomething dead that had decayed in water. \xe2\x80\xa6 And then the thing beneath the hood,\nwhatever it was, drew a long, slow, rattling breath, as though it were trying to suck\nsomething more than air from its surroundings.\n***\n\xe2\x80\x9cDementors are among the foulest creatures to walk this earth. They infest the\ndarkest, filthiest places, they glory in decay and despair, they drain peace, hope, and\nhappiness out of the air around them. Even Muggles feel their presence, though\nthey can\xe2\x80\x99t see them. Get too near a dementor and every good feeling, every happy\nmemory will be sucked out of you. If it can, the dementor will feed on you long\nenough to reduce you to something like itself . . . soulless and evil. . . .\xe2\x80\x9d\n\nThe Lexicon entry for \xe2\x80\x9cDementors\xe2\x80\x9d reads in its entirety:\nDementors are some of the most terrible creatures on earth, flying tall black spectral\nhumanoid things with flowing robes. They \xe2\x80\x9cinfest the darkest, filthiest places, they\nglory in decay and despair, they drain peace, hope, and happiness out of the air\naround them,\xe2\x80\x9d according to Lupin (PA10). Dementors affect even Muggles,\nalthough Muggles can\xe2\x80\x99t see the foul, black creatures. Dementors feed on positive\nhuman emotions; a large crowd is like a feast to them. They drain a wizard of his\npower if left with them too long. They were the guards at Azkaban and made that\nplace horrible indeed. The Ministry used Dementors as guards in its courtrooms as\nwell (GF30, DH13). There are certain defenses one can use against Dementors,\nspecifically the Patronus Charm. A Dementor\xe2\x80\x99s breath sounds rattling and like it\xe2\x80\x99s\ntrying to suck more than air out of a room. Its hands are \xe2\x80\x9cglistening, grayish, slimylooking, and scabbed\xe2\x80\x9d. It exudes a biting, soulfreezing cold (PA5).\n\n[Discussion of additional examples omitted]\n\n143\n\n\x0cThe entries for the hero and the villain of the Harry Potter series (Harry Potter and\nLord Voldemort) present the closest thing to \xe2\x80\x9cplot summaries,\xe2\x80\x9d but are more aptly\ncharacterized as synopses or outlines of the narrative revolving around those\ncharacters. Because Harry Potter and Lord Voldemort drive the narrative and\nbecause they appear in nearly every chapter of the series, an encapsulation of the\nevents surrounding them ultimately yields a synopsis of the primary narrative thread\nin the Harry Potter series.\nCopying\n[The trial court found that the Lexicon was substantially similar to Rowling\xe2\x80\x99s original\nworks, not so much in terms of the overall plot (the court\xe2\x80\x99s analysis not entirely\nconsistent on this point), character and story of the works, but in terms of excessive\nliteral quotation.]\nAlthough it is difficult to quantify how much of the language in the Lexicon is\ndirectly lifted from the Harry Potter novels and companion books, the Lexicon\nindeed contains at least a troubling amount of direct quotation or close paraphrasing\nof Rowling\xe2\x80\x99s original language. The Lexicon occasionally uses quotation marks to\nindicate Rowling\xe2\x80\x99s language, but more often the original language is copied without\nquotation marks, often making it difficult to know which words are Rowling\xe2\x80\x99s and\nwhich are Vander Ark\xe2\x80\x99s.\n[The court reviewed several examples.] \xe2\x80\xa6 Although in these instances, the Lexicon\noften changes a few words from the original or rewrites original dialogue in the third\nperson, the language is nonetheless substantially similar.\nDerivative Work\nPlaintiffs allege that the Lexicon not only violates their right of reproduction, but\nalso their right to control the production of derivative works. The Copyright Act\ndefines a \xe2\x80\x9cderivative work\xe2\x80\x9d as \xe2\x80\x9ca work based upon one or more preexisting works,\nsuch as a translation, musical arrangement, dramatization, fictionalization, motion\npicture version, sound recording, art reproduction, abridgment, condensation, or any\nother form in which a work may be recast, transformed, or adapted\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101\n(emphasis added). A work \xe2\x80\x9cconsisting of editorial revisions, annotations,\nelaborations, or other modifications which, as a whole, represents an original work of\nauthorship\xe2\x80\x9d is also a derivative work.\nA work is not derivative, however, simply because it is \xe2\x80\x9cbased upon\xe2\x80\x9d the preexisting\nworks. If that were the standard, then parodies and book reviews would fall under\nthe definition, and certainly \xe2\x80\x9cownership of copyright does not confer a legal right to\ncontrol public evaluation of the copyrighted work.\xe2\x80\x9d Ty, Inc. v. Publ\xe2\x80\x99ns Int\xe2\x80\x99l Ltd., 292\nF.3d 512, 521 (7th Cir.2002). The statutory language seeks to protect works that are\n\xe2\x80\x9crecast, transformed, or adapted\xe2\x80\x9d into another medium, mode, language, or revised\nversion, while still representing the \xe2\x80\x9coriginal work of authorship.\xe2\x80\x9d Thus in Ty, Inc. v.\nPublications International Ltd., Judge Posner concluded, as the parties had stipulated,\nthat a collectors\xe2\x80\x99 guide to Beanie Babies was not a derivative work because \xe2\x80\x9cguides\ndon\xe2\x80\x99t recast, transform, or adapt the things to which they are guides.\xe2\x80\x9d 292 F.3d at\n520 (emphasis added).\n\n144\n\n\x0cPlaintiffs argue that based on the Twin Peaks decision \xe2\x80\x9ccompanion guides constitute\nderivative works where, as is the case here, they \xe2\x80\x98contain a substantial amount of\nmaterial from the underlying work.\xe2\x80\x99\xe2\x80\x9d This argument inaccurately states the holding\nof Twin Peaks and overlooks two important distinctions between the Lexicon and the\nguidebook in Twin Peaks. First, as mentioned earlier, the portions of the Lexicon that\nencapsulate plot elements or sketch plotlines bear no comparison with the\nguidebook in Twin Peaks, whose plot summaries giving \xe2\x80\x9celaborate recounting of plot\ndetails\xe2\x80\x9d were found to constitute an \xe2\x80\x9cabridgement\xe2\x80\x9d of the original work. See Twin\nPeaks, 996 F.2d at 1373 n. 2 (reproducing an excerpt of the infringing book\ncontaining a high degree of detail). Given that the Lexicon\xe2\x80\x99s use of plot elements is\nfar from an \xe2\x80\x9celaborate recounting\xe2\x80\x9d and does not follow the same plot structure as\nthe Harry Potter novels, Plaintiffs\xe2\x80\x99 suggestion that these portions of the Lexicon are\n\xe2\x80\x9cunauthorized abridgements\xe2\x80\x9d is unpersuasive. Second, and more importantly,\nalthough the Lexicon contains a substantial amount of material from the Harry\nPotter works, the material is not merely \xe2\x80\x9ctransformed from one medium to another,\xe2\x80\x9d\nas was the case in Twin Peaks. Id. at 1373. By condensing, synthesizing, and\nreorganizing the preexisting material in an A-to-Z reference guide, the Lexicon does\nnot recast the material in another medium to retell the story of Harry Potter, but\ninstead gives the copyrighted material another purpose. That purpose is to give the\nreader a ready understanding of individual elements in the elaborate world of Harry\nPotter that appear in voluminous and diverse sources. As a result, the Lexicon no\nlonger \xe2\x80\x9crepresents [the] original work[s] of authorship.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101. Under these\ncircumstances, and because the Lexicon does not fall under any example of\nderivative works listed in the statute, Plaintiffs have failed to show that the Lexicon\nis a derivative work.\nFair use\n[The court found that the overall purpose of the Lexicon was transformative because\nthe purpose of the original works was to tell an entertaining and thought-provoking\nstory, whereas the purpose of the Lexicon was to make information about the\nintricate world of Harry Potter readily accessible to readers through a reference guide.\nHowever, the claim to fair use ultimately failed because (a) the Lexicon was not really\ntransformative in relation to the companion books and (b) in spite of its general\ntransformativeness, the Lexicon\xe2\x80\x99s use of the underlying Harry Potter books was not\nreasonable in light of that purpose. The Lexicon not contained too much slapdash\ncut-and-paste and thus the lexicon slipped from transformative reference guide to\nexpressive substitute.]\nNotes and Questions\n(1) Warner Brothers Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008),\nillustrates how fact-intensive copyright cases can be. It is also an excellent illustration of the\nconvergence of issues relating to substantial similarity, adaptation, and fair use.\n(2) The Harry Potter Lexicon case also illustrates that guidebooks to fictional worlds must walk\na fine line, but it nonetheless offers some encouragement for those who wish to make the\nattempt. A less encouraging case is Castle Rock Entertainment v. Carol Publishing Group, Inc., 150\nF.3d 132 (2d Cir. 1998).\n\n145\n\n\x0cIn Castle Rock, the Second Circuit held that a quiz book based on the characters and events\nof the popular television series, Seinfeld, violated the show\xe2\x80\x99s copyright. The differences\nbetween the Seinfeld quiz and the Harry Potter Lexicon are subtle, but important. Like the\nSeinfeld quiz, the Lexicon related \xe2\x80\x9cfictional facts\xe2\x80\x9d the author, J.K. Rowling, had created.\nThe Castle Rock court acknowledged (at 138) that the substantially similar standard depends\non \xe2\x80\x9cthe copying of expression, rather than ideas\xe2\x80\x9d and that the quiz reproduced none of the\nplot, sequence, pace, or setting of the show. The defendant\xe2\x80\x99s quiz focused on \xe2\x80\x9cfacts\xe2\x80\x9d internal\nto the Seinfeld universe, such as the reason that Kramer enjoys going to the airport (because\nhe is hypnotized by the baggage carousels) or what it was that Jerry placed on Elaine\xe2\x80\x99s leg\nduring a piano recital (a Pez dispenser), and not facts about the show.\nThe court of appeals took the view (at 139) that \xe2\x80\x9c[b]ecause these characters and events\nspring from the imagination of Seinfeld\xe2\x80\x99s authors, the [quiz] plainly copies copyrightable,\ncreative expression.\xe2\x80\x9d Of course, the court can\xe2\x80\x99t really mean that any work that refers to the\ncharacters and events in a creative work would be infringing, otherwise ownership of\ncopyright would confer a legal right to control public evaluation of the copyrighted work, an\nidea anathema to copyright law.46\nThe real problem with the defendant\xe2\x80\x99s quiz in Castle Rock Entertainment was that it sought to\n\xe2\x80\x9crepackage Seinfeld to entertain Seinfeld viewers\xe2\x80\x9d and that the quiz itself was in no way\nanalytical. If the Seinfeld quiz infringed the copyright owner\xe2\x80\x99s rights at all, it was because it\nessentially recast the series\xe2\x80\x99 copyrightable characters into a new format, much the same as if\nthe defendant had made miniature dolls of the show\xe2\x80\x99s characters.47\nPenguin Random House LLC v. Colting, 270 F. Supp. 3d 736 (S.D.N.Y. 2017)\nDistrict Judge Jed S. Rakoff\nAt all times here relevant, plaintiffs owned valid copyrights to Breakfast at Tiffany\xe2\x80\x99s,\nThe Old Man and the Sea, On the Road, and 2001: A Space Odyssey. Defendants\xe2\x80\x99\n\xe2\x80\x9ccolorfully illustrated story summaries,\xe2\x80\x9d called \xe2\x80\x9cKinderGuides,\xe2\x80\x9d are designed to\n\xe2\x80\x9cintroduce\xe2\x80\x9d these works to children.\nOn or about September 22, 2016, defendants published their four Guides (part of a\nplanned 50-book series). On their front covers, the Guides very prominently display\nthe titles of plaintiffs\xe2\x80\x99 Novels and the names of the authors of plaintiffs\xe2\x80\x99 Novels,\nalong with the words \xe2\x80\x9cKinderGuides,\xe2\x80\x9d in large print and, in much smaller print, the\nwords \xe2\x80\x9cEarly Learning Guides to Culture Classics.\xe2\x80\x9d The only other words are\n\xe2\x80\x9cIllustrations by ____,\xe2\x80\x9d in very small print at the bottom.\nAll four Guides share the same layout. The first four pages feature illustrations and\none-line quotations taken from and attributed to the authors of the Novels (Capote,\nHemingway, Kerouac, and Clarke). The fifth page contains publication information,\nand the sixth is a title page, stating, to take one example, \xe2\x80\x9cKinderGuides: Early\nLearning Guides to Culture Classics,\xe2\x80\x9d \xe2\x80\x9cOn the Road,\xe2\x80\x9d \xe2\x80\x9cby Jack Kerouac,\xe2\x80\x9d and, in\nsmaller font, \xe2\x80\x9cIllustrations by Rose Forshall,\xe2\x80\x9d \xe2\x80\x9ca division of Moppet Books/Los\n46\n\nTy, Inc. v. Publ\xe2\x80\x99ns Int\xe2\x80\x99l. Ltd., 292 F.3d 512, 521 (7th Cir. 2002)\n\nSee, e.g., Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189 (2d Cir. 1985) (upholding copyrightability\nof \xe2\x80\x9cTransformer\xe2\x80\x9d changeable robotic action figures as sculptural works).\n47\n\n146\n\n\x0cAngeles, CA.\xe2\x80\x9d The seventh and eighth pages contain a \xe2\x80\x9cTable of Contents.\xe2\x80\x9d The\nninth displays an illustration of the original author of the Novel, and the tenth is a\npage \xe2\x80\x9cAbout the Author.\xe2\x80\x9d Following these front-pages are \xe2\x80\x9cStory Summaries,\xe2\x80\x9d\nwhich comprise a few dozen pages. Appended after these \xe2\x80\x9cStory Summaries\xe2\x80\x9d are a\nseries of back-pages, two each devoted to \xe2\x80\x9cMain Characters,\xe2\x80\x9d \xe2\x80\x9cKey Words,\xe2\x80\x9d \xe2\x80\x9cQuiz\nQuestions,\xe2\x80\x9d and \xe2\x80\x9cAnalysis.\xe2\x80\x9d\nDefendants admit that they had access to plaintiffs\xe2\x80\x99 Novels in preparing their Guides\nand that they relied on them. Indeed, a side-by-side comparison of plaintiffs\xe2\x80\x99 and\ndefendants\xe2\x80\x99 works reveals as much. Not only do the plots, settings, and characters of\nthe Guides mirror the Novels, but the Guides also include many specific details from\nthe Novels. For example, in both versions of Breakfast at Tiffany\xe2\x80\x99s, Holly Golightly\xe2\x80\x99s\nbusiness card reads \xe2\x80\x9cHolly Golightly, Traveling,\xe2\x80\x9d and in both versions Holly\ndescribes an experience she calls \xe2\x80\x9cthe mean reds,\xe2\x80\x9d or feeling afraid \xe2\x80\x9cbut you don\xe2\x80\x99t\nknow what you\xe2\x80\x99re afraid of.\xe2\x80\x9d See, Truman Capote, Breakfast at Tiffany\xe2\x80\x99s (2012\nedition) at 32 (\xe2\x80\x9cthe mean reds are horrible. You\xe2\x80\x99re afraid ... but you don\xe2\x80\x99t know what\nyou\xe2\x80\x99re afraid of\xe2\x80\x9d), Kinder-Guides, Breakfast at Tiffany\xe2\x80\x99s (2016) at 11, (\xe2\x80\x9c... the mean\nreds. That means she is afraid but doesn\xe2\x80\x99t know what she is afraid of.\xe2\x80\x9d). Similarly, in\nboth versions of On the Road, Sal drives across the United States with $50 in his\npocket and goes to see a blind jazz pianist named George Shearing; in both versions\nof 2001: A Space Odyssey, Dr. Heywood Floyd travels to Clavius Base, a space\nstation on the moon, where there is a large monolith named \xe2\x80\x9cTMA-1\xe2\x80\x9d and a crater\nnamed \xe2\x80\x9cTyco\xe2\x80\x9d; and, in both versions of The Old Man and the Sea, Santiago has\ngone 84 days without catching a fish and roots for the New York Yankees. While, of\ncourse, many aspects of plaintiffs\xe2\x80\x99 Novels do not appear in defendants\xe2\x80\x99 shorter\nGuides, all of the plots, characters, and settings in defendants\xe2\x80\x99 Guides appear in\nplaintiffs\xe2\x80\x99 Novels.\nIt is also undisputed that there is an established market for children\xe2\x80\x99s books based on\nadult novels, and that it is not unusual for copyright holders to publish, or license\npublication of, children\xe2\x80\x99s versions of works originally intended for adults.\nDefendants, however, never sought permission to prepare children\xe2\x80\x99s guides for\nplaintiffs\xe2\x80\x99 Novels.\nIt is further undisputed that plaintiffs have never authorized anyone to publish\nchildren\xe2\x80\x99s versions of their Novels. The managers of Hemingway\xe2\x80\x99s literary estate\naltogether rejected requests to create children\xe2\x80\x99s versions of The Old Man and the Sea.\nPenguin Random House considered authorizing a children\xe2\x80\x99s version of 2001: A\nSpace Odyssey, but decided against it. The Capote estate did authorize the creation\nof an illustrated, stand-alone children\xe2\x80\x99s version of A Christmas Memory \xe2\x80\x94 a short\nstory originally included in the same volume as Breakfast at Tiffany\xe2\x80\x99s \xe2\x80\x94 but did not\nauthorize a children\xe2\x80\x99s version of Breakfast at Tiffany\xe2\x80\x99s. Finally, Penguin Random\nHouse and the Clarke Estate have authorized the creation of an ESL (\xe2\x80\x9cEnglish as a\nSecond Language\xe2\x80\x9d) version of 2001: A Space Odyssey \xe2\x80\x94 \xe2\x80\x9ca simplified version,\xe2\x80\x9d\nwhich includes \xe2\x80\x9cinserted pages of exercises and notes,\xe2\x80\x9d but no children\xe2\x80\x99s versions.\nInfringement\nThe Copyright Act of 1976 grants copyright owners a bundle of exclusive rights,\nincluding the exclusive right to \xe2\x80\x9creproduce the copyrighted work\xe2\x80\x9d and the exclusive\n\n147\n\n\x0cright \xe2\x80\x9cto prepare derivative works based upon the copyrighted work.\xe2\x80\x9d Id. \xc2\xa7 106.\nHere, plaintiffs allege that defendants\xe2\x80\x99 Guides infringe both those rights.\nTo prevail on either ground, plaintiffs must prove that: (1) they hold a valid\nownership interest in the relevant copyrights, (2) defendants have \xe2\x80\x9cactually copied\xe2\x80\x9d\ntheir works, and (3) defendants\xe2\x80\x99 \xe2\x80\x9ccopying is illegal\xe2\x80\x9d because of a \xe2\x80\x9csubstantial\nsimilarity\xe2\x80\x9d between defendants\xe2\x80\x99 works and the \xe2\x80\x9cprotectable elements\xe2\x80\x9d of their\ncopyrighted works. Castle Rock, 150 F.3d at 137. To prevail on the second ground,\nplaintiffs must further prove that (4) defendants\xe2\x80\x99 works are unauthorized derivatives\nunder 17 U.S.C. \xc2\xa7 106(2).2\nFootnote 2: With respect to the first ground, the question of whether defendants\' Guides are derivative works is\n"completely superfluous," as "infringement of the adaptation right necessarily infringes the reproduction right."\nTwin Peaks Prods., Inc, v. Publications Int\'l, Ltd., 996 F.2d 1366, 1373 (2d Cir. 1993).\n\n[The court found that the undisputed evidence established ownership and actual\ncopying. After reviewing different tests for substantial similarity the court continued:]\nIn the instant case, however, none of these special tests is even needed to establish\nsubstantial similarity, as defendants\xe2\x80\x99 Guides are not even superficially distinct from\nthe respective Novels. Instead, they are explicitly based on plaintiffs\xe2\x80\x99 Novels, and\nseek in defendant\xe2\x80\x99s words, to \xe2\x80\x9cintroduce\xe2\x80\x9d them to children \xe2\x80\x9cthrough colorfully\nillustrated story summaries and kid-friendly analyses.\xe2\x80\x9d\nTo avoid, therefore, this obvious similarity, defendants would have the Court, in\neffect, subtract from defendants\xe2\x80\x99 Guides the characters, plots, and settings that were\ndirectly lifted from plaintiffs\xe2\x80\x99 Novels, on the ground that these elements do not\nconstitute protectable expression. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996,\n1002 (2d Cir. 1995) (noting that a court must limit its infringement inquiry to\nwhether \xe2\x80\x9cthe protectable elements, standing alone, are substantially similar\xe2\x80\x9d).\nDefendants claim that the characters, plots, and settings in plaintiffs\xe2\x80\x99 Novels are\nmerely \xe2\x80\x9ca collection of made-up facts\xe2\x80\x9d or \xe2\x80\x9cfictional facts,\xe2\x80\x9d and, since (historical or\nindependently-existing) facts are not protected, these elements are not aspects of \xe2\x80\x9can\nauthor\xe2\x80\x99s original expression\xe2\x80\x9d subject to copyright. As defendants put it, their Guide\nto 2001: A Space Odyssey \xe2\x80\x9cmerely summarized some of the facts of the book and\nthe characters, not the creative expression that makes Dr. David Bowman and HAL\n[the characters] memorable.\xe2\x80\x9d In other words, the aspects of plaintiffs\xe2\x80\x99 Novels that\nappear in defendants\xe2\x80\x99 Guides, such as the character of Holly Golightly, her place of\nresidence, her trips to the prison, her relationship to Sally Tomato, are not protected\nexpression but, according to defendants, \xe2\x80\x9cfictional facts.\xe2\x80\x9d\nThis exercise in sophistry, however, which confuses the difference between historical\nor independently-existing facts and fictional details created by a novelist, finds no\nsupport in applicable law. As the Second Circuit has clearly stated, \xe2\x80\x9ccharacters and\nevents\xe2\x80\x9d that \xe2\x80\x9cspring from the imagination\xe2\x80\x9d of authors are copyrightable, creative\nexpression. See Castle Rock, 150 F.3d at 139. Thus, the Copyright Act protects both\nthe literal text describing, for example, Dr. Bowman and HAL, and the \xe2\x80\x9cmade-up\nfacts\xe2\x80\x9d about Dr. Bowman and HAL. \xe2\x80\x9cUnlike the facts in a phone book, which do\nnot owe their origin to an act of authorship,\xe2\x80\x9d each \xe2\x80\x9cfact\xe2\x80\x9d in defendants\xe2\x80\x99 Guides is\nreally \xe2\x80\x9cfictitious expression\xe2\x80\x9d created by plaintiffs\xe2\x80\x99 authors. Castle Rock, 150 F.3d at\n139. Because the \xe2\x80\x9ccharacters and events\xe2\x80\x9d in defendants\xe2\x80\x99 Guides \xe2\x80\x9cspring from the\n\n148\n\n\x0cimagination of\xe2\x80\x9d Capote, Hemingway, Kerouac, and Clarke, each Guide \xe2\x80\x9cplainly\ncopies copyrightable, creative expression.\xe2\x80\x9d Id.\nBy any reasonable comparison, defendants\xe2\x80\x99 Guides copy substantial aspects of the\nthemes, characters, plots, sequencing, pace, and settings of plaintiffs\xe2\x80\x99 Novels. Indeed,\nthat is their stated purpose. The defendants admit that \xe2\x80\x9cthey wanted to be true to the\nauthor\xe2\x80\x99s original conception\xe2\x80\x9d at least \xe2\x80\x9cas far as possible given the nature of the\nKinder-Guides as children\xe2\x80\x99s books\xe2\x80\x9d and that defendants\xe2\x80\x99 works seek to convey to\nchildren \xe2\x80\x9cthe stories and characters\xe2\x80\x9d in plaintiffs\xe2\x80\x99 Novels. Defendants thus\neffectively admit to copyright infringement as a matter of law.\nDerivative Works\nPlaintiffs also allege that defendants\xe2\x80\x99 Guides violate their right to control the\npreparation of derivative works. See 17 U.S.C. \xc2\xa7 106(2). The Copyright Act defines a\n\xe2\x80\x9cderivative work\xe2\x80\x9d as: \xe2\x80\x9ca work based upon one or more preexisting works, such as a\ntranslation, musical arrangement, dramatization, fictionalization, motion picture\nversion, sound recording, art reproduction, abridgment, condensation, or any other\nform in which a work may be recast, transformed, or adapted.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101. \xe2\x80\x9cA\nwork is not derivative, however, simply because it is \xe2\x80\x98based upon\xe2\x80\x99 the preexisting\nworks.\xe2\x80\x9d Harry Potter, 575 F.Supp.2d at 538. Only works that are \xe2\x80\x9crecast, transformed,\nor adapted\xe2\x80\x9d into another medium, mode, or language while still representing the\n\xe2\x80\x9coriginal work of authorship\xe2\x80\x9d are derivative. Id.; Castle Rock, 150 F.3d at 143 n. 9.\nFor example, book reviews and parodies of copyrighted works are not derivative\nworks, despite being based on, and potentially reproducing, substantial amounts of\nprotected expression. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 592 (1994)\n(stating the general rule that the \xe2\x80\x9cmarket for potential derivative uses includes only\nthose that creators of original works would in general develop or license others to\ndevelop\xe2\x80\x9d).\nDepending on its nature, a \xe2\x80\x9cguide\xe2\x80\x9d may or may not qualify as a derivative work. The\nissue turns on whether the guide changes the copyrighted material in such a way that\nthe guide no longer represents the original \xe2\x80\x9cwork of authorship.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101;\nWarner Bros. Entm\xe2\x80\x99t Inc. v. RDR Books, 575 F.Supp.2d 513, 539 (S.D.N.Y. 2008). For\nexample, the Second Circuit found that a guide to the TV show Twin Peaks, which\n\xe2\x80\x9cmerely transformed\xe2\x80\x9d the original work \xe2\x80\x9cfrom one medium to another,\xe2\x80\x9d was a\nderivative work. But an encyclopedia based on the Harry Potter world, which did not\ntell the same story as the original copyrighted books and movies, was not a derivative\nwork. Id. (\xe2\x80\x9cby condensing, synthesizing, and reorganizing the preexisting material in\nan A-to-Z reference guide, the Lexicon does not recast the material in another\nmedium to retell the story of Harry Potter, but instead gives the copyrighted material\nanother purpose. That purpose is to give the reader a ready understanding of\nindividual elements in the elaborate world of Harry Potter that appear in voluminous\nand diverse sources.\xe2\x80\x9d).\nHere, though defendants\xe2\x80\x99 Guides add additional material at the end, specifically a few\nbrief pages of \xe2\x80\x9cAnalysis,\xe2\x80\x9d \xe2\x80\x9cQuiz Questions,\xe2\x80\x9d and information about the author, they\nare primarily dedicated to retelling plaintiffs\xe2\x80\x99 stories. Two pages of analysis do not\nconvert the Guides overall \xe2\x80\x94 which are largely composed of \xe2\x80\x9cStory Summaries\xe2\x80\x9d \xe2\x80\x94\ninto something that no longer \xe2\x80\x9crepresents the original work of authorship.\xe2\x80\x9d Like a\n\n149\n\n\x0ctranslation, dramatization, or motion picture adaptation (three categories explicitly\ndelineated by Congress as derivative works, see 17 U.S.C. \xc2\xa7 101), and like the guide\nin Twin Peaks, defendants\xe2\x80\x99 works basically retell the story of plaintiffs\xe2\x80\x99 works in\nanother medium (in this case illustrated children\xe2\x80\x99s books). Thus, because defendants\nnever received permission from plaintiffs to produce their Guides, the Guides are\nunauthorized derivatives as a matter of law.\nFor the aforementioned reasons, defendants\xe2\x80\x99 Guides are infringing; they infringe\nupon plaintiffs\xe2\x80\x99 exclusive right to reproduce their Novels, including the character of\nHolly Golightly (a separate count), and they infringe upon plaintiffs\xe2\x80\x99 exclusive right\nto exploit the market for derivative works based on their Novels.\nFair Use\n\xe2\x80\xa6 U.S. law no longer protects abridgements as fair use, even in cases where the\nshortening involves, as Justice Story put it, \xe2\x80\x9creal, substantial condensation of the\nmaterials, and intellectual labor and judgment bestowed thereon; and not merely the\nfacile use of the scissors.\xe2\x80\x9d Folsom v. Marsh, 9 F.Cas. 342, 344-45 (C.C.D. Mass. 1841).\nInstead, under the Copyright Act, abridgements are generally considered to be\nderivative works, and the right to prepare them is reserved exclusively to the\ncopyright holder. See Twin Peaks, 996 F.2d at 1376.\nWith respect to modifying the Novels for a younger audience, the mere removal of\nadult themes does not meaningfully \xe2\x80\x9crecast\xe2\x80\x9d the work any more than an airline\xe2\x80\x99s\nediting of R-rated films so that they can be shown to children on a flight absolve the\nairline from paying a royalty. As Judge Leval puts it, the question is whether the work\nproduces new insights and understandings. Here, defendants\xe2\x80\x99 expurgated Guides are\na vehicle for conveying to children the Novels\xe2\x80\x99 original stories and insights. Indeed,\nit is quite clear that defendants\xe2\x80\x99 Guides seek to fairly represent the original work of\nauthorship \xe2\x80\x94 defendants admit as much.\nFinally, there is the question of whether defendants\xe2\x80\x99 Guides qualify as educational\ncriticism or commentary. Works of criticism and commentary provide the sort of\nnew insights and understandings that are the sine qua non of transformative use.\nDefendants suggest that their Guides should be considered commentary, arguing\nthat their works serve educational purposes. As evidence, defendants point to the\nfew pages of analysis, quiz questions, and background information at the back of\neach Guide.\nBut tacking on these few pages does not provide safe harbor for an otherwise infringing\nwork. Here, defendants\xe2\x80\x99 story summaries do not recount plaintiffs\xe2\x80\x99 Novels in the service\nof literary analysis, they provide literary analysis in the service of trying to make the\nGuides qualify for the fair use exception. Indeed, defendants admitted this in open\ncourt, when their counsel explained that Colting and Medina \xe2\x80\x9cwent to great lengths\xe2\x80\x9d to\nachieve fair use protection. See Transcript at 17 (\xe2\x80\x9cthe very fact that we have these\nsections in the book [e.g. the \xe2\x80\x9cMain Characters\xe2\x80\x9d and \xe2\x80\x9cKeywords\xe2\x80\x9d and \xe2\x80\x9cAnalysis\xe2\x80\x9d\nsections] these are all things that were done to make these books fair use, at least in the\nminds of the defendants\xe2\x80\x9d). Fair use, however, is not a jacket to be worn over an\notherwise infringing outfit. One cannot add a bit of commentary to convert an\nunauthorized derivative work into a protectable publication.\n\n150\n\n\x0c[Having rejected the defendant\xe2\x80\x99s arguments that their use was transformative, the court\napplied the statutory fair use factors and concluded that their use was not fair.]\nNotes and questions\n(1) Obviously the KinderGuides were quite different to the original literary works that\ninspired them. How significantly would the Guides have to change in order not be seen as\nan infringing reproduction, derivative work, or to qualify as fair use?\n(2) Why were the KinderGuides in Penguin Random House LLC v. Colting held to be a\nderivative work based upon the copyrighted work while the Harry Potter Lexicon in Warner\nBrothers Entertainment, Inc. v. RDR Books was not?\n(3) The district court in Penguin Random House LLC v. Colting repeated the Second Circuit\xe2\x80\x99s\nsuggestion in Castle Rock that fictional facts are copyrightable, i.e., because the characters and\nevents in a novel \xe2\x80\x9cspring from the imagination\xe2\x80\x9d of authors they must be copyrightable,\ncreative expression. As noted above, the court can\xe2\x80\x99t really mean that any work that refers to\nthe characters and events in a creative work is infringing, can it?\n(4) Does the Wikipedia page describing the plot and main characters of a novel infringe on\nthe copyright in that book? If not, how would you distinguish the Wikipedia entry for The\nOld Man and the Sea48 from The Old Man and the Sea, by Ernest Hemingway: A Kinderguides\nIllustrated Learning Guide?\nFigure 2 Kinderguides version of the Old Man and the Sea\n\nThe Scope of Copyright in Derivative Works\nSection 103(a) of the Act contains a provision clarifying that compilations and derivative\nworks are eligible copyright subject matter, meaning that a derivative work can also be a new\ncopyrighted work, possibly with a different owner to the original and entitled to a new term\nof protection.\nThe same section also provides that copyright protection is not available any part of a\ncompilation or derivative work that incorporates infringing material. It is worth noting that\nthe U.S. rule deviates from the international norm in this respect.\n48\n\nhttps://en.wikipedia.org/wiki/The_Old_Man_and_the_Sea\n\n151\n\n\x0c17 U.S. Code \xc2\xa7 103(a)\nThe subject matter of copyright as specified by section 102 includes compilations\nand derivative works, \xe2\x80\xa6\n\xe2\x80\xa6 but protection for a work employing preexisting material in which copyright\nsubsists does not extend to any part of the work in which such material has been\nused unlawfully.\nThe Act also clarifies that copyrights in compilations and derivative works extends only to\nthe original material contributed by their authors and were independent of and had no effect\non the scope, duration, ownership, or subsistence of copyright in preexisting material.\n17 U.S. Code \xc2\xa7103(b)\nThe copyright in a compilation or derivative work extends only to the material\ncontributed by the author of such work, as distinguished from the preexisting\nmaterial employed in the work, and does not imply any exclusive right in the\npreexisting material. The copyright in such work is independent of, and does not\naffect or enlarge the scope, duration, ownership, or subsistence of, any copyright\nprotection in the preexisting material.\n\n152\n\n\x0c5. THE REPRODUCTION RIGHT\nThe meaning of reproduction\n17 U.S. Code \xc2\xa7 106 - Exclusive rights in copyrighted works\nSubject to sections 107 through 122, the owner of copyright under this title has the\nexclusive rights to do and to authorize any of the following:\n(1) to reproduce the copyrighted work in copies or phonorecords; \xe2\x80\xa6\nSection 106(1) of the Copyright Act of 1976 gives copyright owners the exclusive right \xe2\x80\x9cto\nreproduce the copyrighted work in copies,\xe2\x80\x9d but nothing in the Copyright Act actually tells us\nwhat standard to apply in determining whether one work amounts to a reproduction of\nanother.\nConsider two works, A and B that have some features in common, but also some differences.\nWhat is required to conclude that B is an infringing reproduction of A? The answer consists\nof two parts: copying in fact and wrongful copying.\nFigure 3 Copying in fact and wrongful copying\n\nActual"copying"or"causal"connec3on"\n\nA"\n\nB"\nOverlapping+\nprotectable+\nexpression+\n\nInfringing/Unlawful"Similarity"\n\nA"\n\nB"\n\n4"\n\nThe plaintiff in an action for copyright infringement must show that B was actually copied\nfrom A in the sense that there is a causal connection running from A to B. This copying can\nbe deliberate, unintended, or even subconscious. If two works are similar, but were in fact\nindependently created, there is no copyright infringement. The classic statement to this\neffect comes from Judge Learned Hand in Sheldon v. Metro-Goldwyn Pictures Corporation, 81 F.\n2d 49 (1936) (at 54):\n\xe2\x80\xa6 but if by some magic a man who had never known it were to compose anew\nKeats\xe2\x80\x99s Ode on a Grecian Urn, he would be an \xe2\x80\x9cauthor,\xe2\x80\x9d and, if he copyrighted it,\nothers might not copy that poem, though they might of course copy Keats\xe2\x80\x99s.\n\nOf course, most of us don\xe2\x80\x99t believe in magic and so we are usually prepared to draw an\ninference from very high levels of similarity that B probably was copied from A. We will\n153\n\n\x0creturn to this topic below. For the moment, assume that the plaintiff has shown that there is\na causal connection between A and B, this is not enough by itself. To establish that B is an\ninfringing reproduction of A, the plaintiff must show that B is substantially similar A.\nHow similar is too similar? As already discussed in a previous chapter, the rights of the\ncopyright owner are not limited to literal word-for-word reproductions or close facsimiles of\nthe original work. Nichols v. Universal Pictures 45 F.2d 119 (2d Cir. 1930) [extracted in a\nprevious chapter] provides a canonical explanation of why the scope of copyright goes\nbeyond literal cut-and-paste infringement and of the problems courts will face in drawing a\nline between ideas and their expression in cases of non-literal infringement. Judge Hand says\n(at 121):\nIt is of course essential to any protection of literary property, whether at commonlaw or under the statute, that the right cannot be limited literally to the text, else a\nplagiarist would escape by immaterial variations. That has never been the law, but, as\nsoon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that,\nas was recently well said by a distinguished judge, the decisions cannot help much in\na new case.\n\nAssuming that the sufficient causal connection has been established, how should a court\ndetermine whether B is too similar to A? This turns out to be a vexing question.\nMark A. Lemley, Our Bizarre System for Proving Copyright Infringement, 57 J.\nCopyright Society U.S.A. 719 (2010)\nAt the heart of copyright infringement cases is \xe2\x80\x9csubstantial similarity\xe2\x80\x9d between the\nplaintiff\xe2\x80\x99s and the defendant\xe2\x80\x99s works. But while every circuit agrees on the centrality\nof substantial similarity, that basic agreement conceals surprising differences in what\nexactly we mean by substantial similarity and how it is to be proven in court.\nPamela Samuelson, A Fresh Look at Tests for Nonliteral Copyright\nInfringement, 107 Northwestern University Law Review 1821 (2013)\nOne reason why conventional tests for judging nonliteral copyright infringement are\nproblematic is that there are too many tests and not enough guidance about which\none to use in what kinds of cases. Occasionally, courts have applied several different\ntests without being sure which test is the right one.\n\nThere are no mechanical guidelines, no hard and fast rules, and no percentages that can be\napplied to determine what constitutes a substantial, and thus infringing, similarity. One\nreason for this lack of precision is that it is impossible to decide how much taking is too\nmuch without referring to the specific works in question. In some cases, the copying of a\nrelatively small portion of a work can be actionable if that portion is material and substantial.\nAt a very general level, there is no controversy in the Second Circuit\xe2\x80\x99s assertion in Ringgold v.\nBlack Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997) that \xe2\x80\x9c[t]o support a finding\nof infringement on the basis of substantial similarity, the copying must be quantitatively and\nqualitatively sufficient.\xe2\x80\x9d But like most uncontroversial statements, this does not tell us very\nmuch. How should a court determine what is quantitatively and qualitatively sufficient?\nIn formulating a test for copyright infringement, courts must be careful not to allow a\nfinding of infringement to be based on similarities in unprotectable elements alone, and thus\nin most contexts they must attempt to parse out ideas from their expression, identify literary\ntropes, conventions, scenes a faire, and the constraints of the relevant medium, chosen\nmaterials, genre and public expectation. But courts must also be careful not disaggregate too\n154\n\n\x0cfar: after all, even the greatest works of literature are simply new towers made by the\ncombination of old bricks.\nCourts in the United States have struggled to articulate a rational consistent analytical\nframework for determining whether some copying is too much. In reviewing the approach\noutlined in any particular case, it is worth asking some probing questions about how the\ncourt is trying to determine whether the defendant\xe2\x80\x99s actions infringed the plaintiff\xe2\x80\x99s exclusive\nright to reproduce the work in copies.\n(1) What process is the court using to compare the works? Is the court reviewing the\nworks in total in a holistic side-by-side comparison; is it breaking the works down\ninto components and identifying similarities and differences; is the court filtering out\nsimilarities at an unprotectable high level of abstraction and similarities based on\nfacts or functionality?\n(2) When the court compares the works, whose point of view does it adopt?\n(3) What threshold of similarity is the court applying?\n(4) Do the works speak for themselves, or do they require expert analysis?\n(5) Assuming the right to trial by jury has been invoked, how does the court divide\nthe components of its analytical framework between the judge and jury?\nThis last question is significant. One of the reasons that courts in the United States have\nstruggled with articulating a framework to assess whether the threshold of reproduction has\nbeen met is that any such framework must also take account of the division of responsibility\nbetween the judge and the jury. In the United States, either the plaintiff or the defendant in a\ncivil action such as copyright infringement has a Constitutional right to demand that a jury\ndecides the case. In theory, the jury has the final say over questions of fact and the judge\ndetermines questions of law. This division of responsibilities is quite challenging in the\ncopyright context because of legal and factual questions about how much copying is too\nmuch are often hopelessly intertwined.\n\nDifferent tests and approaches\nReasoning from first principles it should be apparent that for a copyright owner to establish\nan infringement of the reproduction right, she must show two things: (1) that defendant\xe2\x80\x99s\nwork was actually copied in the sense that there is a causal connection running from the\nwork of the copyright owner to that of the defendant; (2) that the defendant\xe2\x80\x99s work is too\nsimilar to the plaintiff\xe2\x80\x99s to be permissible.\nThis two part copying in fact/wrongful copying structure is clearer in some United States\ncircuits than others.\nThe Legacy of Arnstein v. Porter\nArnstein v. Porter, 154 F.2d 464 (2d Cir. 1946) is an important part of the copyright law\ncannon. As Shyamkrishna Balganesh summarizes in The Questionable Origins of the Copyright\nInfringement Analysis,\n\n155\n\n\x0cWhile a few circuits have made important modifications to its central approach, the\n\xe2\x80\x9cArnstein test,\xe2\x80\x9d as it has come to be known, remains the dominant approach to\ncopyright infringement analysis today.49\n\nSome background is useful before considering the Second Circuit\xe2\x80\x99s opinion. The district\ncourt judge in Arnstein v. Porter was understandably skeptical when the litigious Ira Arnstein\naccused the famous Cole Porter of infringing copyrights in a collection of songs, some of\nwhich had never been published. That skepticism doubtlessly increased when Arnstein\nexplained this theory that Porter had hired \xe2\x80\x9cstooges\xe2\x80\x9d to follow him and ransack his home in\norder to obtain his compositions. Porter prevailed on a motion for summary judgment and\nArnstein appealed. The eventual success of Arnstein\xe2\x80\x99s appeal owed a lot to the trial judge\xe2\x80\x99s\noverly blunt and candid dismissal of Arnstein as, in effect, a vexatious and frivolous litigant.\nThe judge concluded his reasons with the observations that gave the impression that the\nmotion for summary judgment had been granted as \xe2\x80\x9cthe easiest and quickest way to dispose\nof the case\xe2\x80\x9d and \xe2\x80\x9cthat the judge had prioritized other cases ahead of the plaintiff\xe2\x80\x99s,\nprincipally because of the plaintiff\xe2\x80\x99s record of litigiousness.\xe2\x80\x9d50 As Balganesh explains, this did\nnot sit well with Judge Jerome Frank on the court of appeals. Frank was skeptical of\nsummary judgment and he also thought that there was at least some passing similarity\nbetween the plaintiff\xe2\x80\x99s and defendant\xe2\x80\x99s works such that the plaintiff deserved the chance to\npresent his case to a jury.\nArnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)\nCircuit Judge Frank\nPlaintiff with his complaint filed a jury demand which defendant moved to strike out.\nDefendant urges that the relief prayed in the complaint renders a jury trial\ninappropriate. We do not agree. Plaintiff did not ask for an injunction but solely for\ndamages. Such a suit is an action at \xe2\x80\x9claw.\xe2\x80\x9d That it is founded solely on a statute does\nnot deprive either party of a right to a trial by jury; an action for treble damages\nunder the Sherman Act is likewise purely statutory, but it is triable at \xe2\x80\x9claw\xe2\x80\x9d and by a\njury as of right.\nThe principal question on this appeal is whether the lower court, under Rule 56,\nproperly deprived plaintiff of a trial of his copyright infringment action. The answer\ndepends on whether \xe2\x80\x9cthere is the slightest doubt as to the facts.\xe2\x80\x9d In applying that\nstandard here, it is important to avoid confusing two separate elements essential to a\nplaintiff\xe2\x80\x99s case in such a suit: (a) that defendant copied from plaintiff\xe2\x80\x99s copyrighted\nwork and (b) that the copying (assuming it to be proved) went so far as to constitute\nimproper appropriation.\nAs to the first \xe2\x80\x94 copying \xe2\x80\x94 the evidence may consist (a) of defendant\xe2\x80\x99s admission\nthat he copied or (b) of circumstantial evidence \xe2\x80\x94 usually evidence of access \xe2\x80\x94\nfrom which the trier of the facts may reasonably infer copying. Of course, if there are\nno similarities, no amount of evidence of access will suffice to prove copying. If\nthere is evidence of access and similarities exist, then the trier of the facts must\nShyamkrishna Balganesh, The Questionable Origins of the Copyright Infringement Analysis 68 STAN. L. REV. 791\n(2016).\n49\n\n50\n\nId. at 803.\n\n156\n\n\x0cdetermine whether the similarities are sufficient to prove copying. On this issue,\nanalysis (\xe2\x80\x9cdissection\xe2\x80\x9d) is relevant, and the testimony of experts may be received to\naid the trier of the facts. If evidence of access is absent, the similarities must be so\nstriking as to preclude the possibility that plaintiff and defendant independently\narrived at the same result.\nIf copying is established, then only does there arise the second issue, that of illicit\ncopying (unlawful appropriation.). On that issue (as noted more in detail below) the\ntest is the response of the ordinary lay hearer; accordingly, on that issue, \xe2\x80\x9cdissection\xe2\x80\x9d\nand expert testimony are irrelevant.\nIn some cases, the similarities between the plaintiff\xe2\x80\x99s and defendant\xe2\x80\x99s work are so\nextensive and striking as, without more, both to justify an inference of copying and\nto prove improper appropriation. But such double-purpose evidence is not required;\nthat is, if copying is otherwise shown, proof of improper appropriation need not\nconsist of similarities which, standing alone, would support an inference of copying.\nEach of these two issues \xe2\x80\x94 copying and improper appropriation \xe2\x80\x94 is an issue of\nfact. If there is a trial, the conclusions on those issues of the trier, of the facts \xe2\x80\x94 of\nthe judge if he sat without a jury, or of the jury if there was a jury trial \xe2\x80\x94 bind this\ncourt on appeal, provided the evidence supports those findings, regardless of\nwhether we would ourselves have reached the same conclusions. But a case could\noccur in which the similarities were so striking that we would reverse a finding of no\naccess, despite weak evidence of access (or no evidence thereof other than the\nsimilarities); and similarly as to a finding of no illicit appropriation.\nWe turn first to the issue of copying. After listening to the compositions as played in\nthe phonograph recordings submitted by defendant, we find similarities; but we hold\nthat unquestionably, standing alone, they do not compel the conclusion, or permit\nthe inference, that defendant copied. The similarities, however, are sufficient so that,\nif there is enough evidence of access to permit the case to go to the jury, the jury\nmay properly infer that the similarities did not result from coincidence.\nSummary judgment was, then, proper if indubitably defendant did not have access to\nplaintiff\xe2\x80\x99s compositions. Plainly that presents an issue of fact. On that issue, the\ndistrict judge, who heard no oral testimony, had before him the depositions of\nplaintiff and defendant. The judge characterized plaintiff\xe2\x80\x99s story as \xe2\x80\x9cfantastic\xe2\x80\x9d; and,\nin the light of the references in his opinion to defendant\xe2\x80\x99s deposition, the judge\nobviously accepted defendant\xe2\x80\x99s denial of access and copying. Although part of\nplaintiff\xe2\x80\x99s testimony on deposition (as to \xe2\x80\x9cstooges\xe2\x80\x9d and the like) does seem\n\xe2\x80\x9cfantastic,\xe2\x80\x9d yet plaintiff\xe2\x80\x99s credibility, even as to those improbabilities, should be left\nto the jury. If evidence is \xe2\x80\x9cof a kind that greatly taxes the credulity of the judge, he\ncan say so, or, if he totally disbelieves it, he may announce that fact, leaving the jury\nfree to believe it or not.\xe2\x80\x9d If, said Winslow, J., \xe2\x80\x9cevidence is to be always disbelieved\nbecause the story told seems remarkable or impossible, then a party whose rights\ndepend on the proof of some facts out of the usual course of events will always be\ndenied justice simply because his story is improbable.\xe2\x80\x9d We should not overlook the\nshrewd proverbial admonition that sometimes truth is stranger than fiction.\nBut even if we were to disregard the improbable aspects of plaintiff\xe2\x80\x99s story, there\nremain parts by no means \xe2\x80\x9cfantastic.\xe2\x80\x9d On the record now before us, more than a\n157\n\n\x0cmillion copies of one of his compositions were sold; copies of others were sold in\nsmaller quantities or distributed to radio stations or band leaders or publishers, or the\npieces were publicly performed. If, after hearing both parties testify, the jury\ndisbelieves defendant\xe2\x80\x99s denials, it can, from such facts, reasonably infer access. It\nfollows that, as credibility is unavoidably involved, a genuine issue of material fact\npresents itself. With credibility a vital factor, plaintiff is entitled to a trial where the\njury can observe the witnesses while testifying. Plaintiff must not be deprived of the\ninvaluable privilege of cross-examining the defendant \xe2\x80\x94 the \xe2\x80\x9ccrucial test of\ncredibility\xe2\x80\x9d \xe2\x80\x94 in the presence of the jury. Plaintiff, or a lawyer on his behalf, on such\nexamination may elicit damaging admissions from defendant; more important,\nplaintiff may persuade the jury, observing defendant\xe2\x80\x99s manner when testifying, that\ndefendant is unworthy of belief.\n[W]e cannot now say \xe2\x80\x94 as we think we must say to sustain a summary judgment \xe2\x80\x94\nthat at the close of a trial the judge could properly direct a verdict.\nWe agree that there are cases in which a trial would be farcical. If, in a suit on a\npromissory note, the defendant, pleading payment, sets forth in an affidavit his\ncancelled check to the order of the plaintiff for the full amount due on the note and\na written receipt in full signed by the plaintiff, while plaintiff in a reply affidavit\nmerely states that he did not receive payment and suggests no other proof, then to\nrequire a trial would be absurd; for cross-examination of the defendant in such\ncircumstances clearly would be futile. But where, as here, credibility, including that of\nthe defendant, is crucial, summary judgment becomes improper and a trial\nindispensable. It will not do, in such a case, to say that, since the plaintiff, in the\nmatter presented by his affidavits, has offered nothing which discredits the honesty\nof the defendant, the latter\xe2\x80\x99s deposition must be accepted as true. We think that Rule\n56 was not designed thus to foreclose plaintiff\xe2\x80\x99s privilege of examining defendant at\na trial, especially as to matters peculiarly within defendant\xe2\x80\x99s knowledge. Illustrative of\nthe dangers, in this respect, of summary judgments, if not cautiously employed, is a\nrecent case in the court below. There the judge refused to grant summary judgment\nfor defendants, despite a mass of impressive affidavits, containing copies of\ncorporate records, the accuracy of which plaintiffs did not deny in their affidavits,\nand which on their face made plaintiffs\xe2\x80\x99 case seem nothing but a sham; at the trial,\nhowever, cross-examination of the defendants revealed facts, theretofore unknown\nby plaintiffs, that so riddled the defendants\xe2\x80\x99 case as it had previously appeared on the\nsummary judgment motion that the judge entered judgment against them for several\nmillion dollars, from which they did not appeal.\nWe do not believe that, in a case in which the decision must turn on the reliability of\nwitnesses, the Supreme Court, by authorizing summary judgments, intended to\npermit a \xe2\x80\x9ctrial by affidavits,\xe2\x80\x9d if either party objects. That procedure which, so the\nhistorians tell us, began to be outmoded at common law in the 16th century, would,\nif now revived, often favor unduly the party with the more ingenious and better paid\nlawyer. Grave injustice might easily result.\nAssuming that adequate proof is made of copying, that is not enough; for there can\nbe \xe2\x80\x9cpermissible copying,\xe2\x80\x9d copying which is not illicit. Whether (if he copied)\ndefendant unlawfully appropriated presents, too, an issue of fact. The proper\ncriterion on that issue is not an analytic or other comparison of the respective\n158\n\n\x0cmusical compositions as they appear on paper or in the judgment of trained\nmusicians.19 The plaintiff\xe2\x80\x99s legally protected interest is not, as such, his reputation as\na musician but his interest in the potential financial returns from his compositions\nwhich derive from the lay public\xe2\x80\x99s approbation of his efforts. The question, therefore,\nis whether defendant took from plaintiff\xe2\x80\x99s works so much of what is pleasing to the\nears of lay listeners, who comprise the audience for whom such popular music is\ncomposed, that defendant wrongfully appropriated something which belongs to the\nplaintiff.\nFootnote 19: Where plaintiff relies on similarities to prove copying (as distinguished from improper\nappropriation) paper comparisons and the opinions of experts may aid the court.\n\nSurely, then, we have an issue of fact which a jury is peculiarly fitted to determine.22\nIndeed, even if there were to be a trial before a judge, it would be desirable (although\nnot necessary) for him to summon an advisory jury on this question.\nFootnote 22: It would, accordingly, be proper to exclude tone-deaf persons from the jury, cf. Chatterton v. Cave,\n3 A.C. 483, 499-501, 502-504.\n\nWe should not be taken as saying that a plagiarism case can never arise in which\nabsence of similarities is so patent that a summary judgment for defendant would be\ncorrect. Thus suppose that Ravel\xe2\x80\x99s \xe2\x80\x9cBolero\xe2\x80\x9d or Shostakovitch\xe2\x80\x99s \xe2\x80\x9cFifth Symphony\xe2\x80\x9d\nwere alleged to infringe \xe2\x80\x9cWhen Irish Eyes Are Smiling.\xe2\x80\x9d23 But this is not such a case.\nFor, after listening to the playing of the respective compositions, we are, at this time,\nunable to conclude that the likenesses are so trifling that, on the issue of\nmisappropriation, a trial judge could legitimately direct a verdict for defendant.\nFootnote 23: In such a case, the complete absence of similarity would negate both copying and improper\nappropriation.\n\nAt the trial, plaintiff may play, or cause to be played, the pieces in such manner that\nthey may seem to a jury to be inexcusably alike, in terms of the way in which lay\nlisteners of such music would be likely to react. The plaintiff may call witnesses\nwhose testimony may aid the jury in reaching its conclusion as to the responses of\nsuch audiences. Expert testimony of musicians may also be received, but it will in no\nway be controlling on the issue of illicit copying, and should be utilized only to assist\nin determining the reactions of lay auditors. The impression made on the refined ears\nof musical experts or their views as to the musical excellence of plaintiff\xe2\x80\x99s or\ndefendant\xe2\x80\x99s works are utterly immaterial on the issue of misappropriation;24 for the\nviews of such persons are caviar to the general \xe2\x80\x94 and plaintiff\xe2\x80\x99s and defendant\xe2\x80\x99s\ncompositions are not caviar.25\nFootnote 24: Our comments in this paragraph would be pertinent if the trial were before a judge alone. Of\ncourse, a judge trying a case without a jury does not direct himself to enter a verdict; but the applicable standards\nare virtually the same, for he is then, in part, a one-man jury.\nFootnote 25: Nor need plaintiff\xe2\x80\x99s be. See, e.g., Baker v. Selden, 101 U.S. 99, 102.\n\nIn copyright infringement cases cited by defendant, we have sustained judgments in\nfavor of defendants based on findings of fact made by trial judges after trials,\nfindings we held not to be \xe2\x80\x9cclearly erroneous.\xe2\x80\x9d There we did not attempt to pass on\nthe veracity or credibility of witnesses. To do so here would be to convert an\nappellate court into a trial court. The avowed purpose of those who sponsored the\nsummary judgment practice was to eliminate needless trials where by affidavits it\n159\n\n\x0ccould be shown beyond possible question that the facts were not actually in dispute.\nIn the attempt to apply that reform \xe2\x80\x94 to avoid what is alleged to be a needless trial\nin a trial court \xe2\x80\x94 we should not conduct a trial in this court. Where the facts are thus\nin real dispute, it is our function, after a trial in the lower court, to review its legal\nconclusions and, with reference to its findings of fact, to determine not whether we\nwould ourselves have made them, but merely whether they rest on sufficient\nevidence in the record. When the trial occurs before a judge without a jury, we have\nhis findings of fact separated from his legal conclusions; when it occurs before a jury,\nour task is somewhat different, especially when the jury returns a general (i.e.,\ncomposite) verdict.28 But in reviewing a judgment after either type of trial, ours must\nbe a limited function. This is not, and must not be, a trial court. Such a court has a\nduty more difficult and important than ours. We begin our task where it leaves off.\nUntil the Supreme Court tells us that we err, we shall therefore adhere to the views\nstated in Doehler Metal Furniture Co. v. United States 149 F.2d 130 (1945), and to our\nbelief, expressed in Dellar v. Samuel Goldwyn, Inc., 2 Cir., 104 F. 2d 661, 662 (1939) and\nMacDonald v. Du Maurier, 2 Cir., 144 F.2d 696 (1944), that generally there should be\ntrials in plagiarism suits.\nFootnote 28: We must then assume any possible finding of fact which would support the verdict. A special verdict\nin the case at bar might well be desirable.\n\nPlaintiff has not copyrighted two of his compositions, \xe2\x80\x9cTwilight Waltz\xe2\x80\x9d and \xe2\x80\x9cDuet\xe2\x80\x9d\nfrom \xe2\x80\x9cSong of David.\xe2\x80\x9d Accordingly, the judgment to that extent should be changed\nto one of dismissal for lack of jurisdiction. The same is true of the judgment\nconcerning the alleged copying of the titles of plaintiff\xe2\x80\x99s songs, \xe2\x80\x9cWhat Is Love\xe2\x80\x9d and\n\xe2\x80\x9cNight and Day.\xe2\x80\x9d A title cannot be copyrighted. The facts do not permit the joinder\nof these non-federal causes of action with the action for infringement of copyrights.\nDefendant\xe2\x80\x99s motion papers showed that plaintiff had assigned his copyright to his\ncomposition \xe2\x80\x9cA Mother\xe2\x80\x99s Prayer\xe2\x80\x9d to another person. Plaintiff alleged that, by an oral\nagreement with the assignee, the copyright was to revert to plaintiff on the assignee\xe2\x80\x99s\ndeath, and that the assignee was dead. Defendant contended that the parol evidence\nrule barred proof of such an oral agreement, and that, therefore, plaintiff, not being\nable to show his ownership of the copyright, could not maintain suit for its\ninfringement. Defendant asked the judge to take judicial notice of the record of\nanother infringement suit in the same court, Arnstein v. American Soc. of Composers,\nD.C., 29 F.Supp. 388, involving the same issue as to the same composition, brought\nby plaintiff against another person, not in privity with the defendant here, in which\ndecision on that issue had been adverse to plaintiff. On that ground, the judge held\nthat the present action, so far as based on \xe2\x80\x9cA Mother\xe2\x80\x99s Prayer,\xe2\x80\x9d must be dismissed.\nIn so holding, the judge erred. As no one in the assignee\xe2\x80\x99s chain of title is a party to\nthis suit, the parol evidence rule does not apply. The adjudication in the previous suit\nis entirely irrelevant.\nDefendant disregarded that sort of irrelevance in moving in the court below not only\nfor summary judgment but also for dismissal of plaintiff\xe2\x80\x99s action as \xe2\x80\x9cvexatious.\xe2\x80\x9d For\nin aid of that latter motion, defendant asked the judge to take judicial notice of five\nprevious copyright infringement actions, including the one just mentioned above,\nbrought by the plaintiff in the same court against other persons, in which plaintiff\nhad advanced some legal arguments like those he advances here, and in which he had\n\n160\n\n\x0cbeen defeated. The judge in his opinion referred to but one of those suits, Arnstein v.\nAmerican Soc. of Composers, and purported not to pass on the motion to dismiss for\nvexatiousness. But in his order for final judgment he specifically referred to the\n\xe2\x80\x9crecords\xe2\x80\x9d of the court in the five cases, naming them, as constituting in part the\nbasis of the judgment.\nDefendant, in his brief in this court says, \xe2\x80\x9cThis is perhaps the most significant\xe2\x80\x9d\nargument in \xe2\x80\x9cthis case,\xe2\x80\x9d and presses us to hold that affirmance of the dismissal\nshould be based thereon. Coupled with this request is an implied suggestion that,\nwith respect to the summary judgment, we should not so concern ourselves with fear\nof creating a \xe2\x80\x9cbad\xe2\x80\x9d precedent for the future that we reach an unjust decision in this\nparticular case. With that suggestion we are in thorough accord. We decide against\nsummary judgment here because we consider it improper in this case. Our decision\nto that effect will have precedential significance only to the extent that, in any future\ncase, summary judgment is sought when the facts are not beyond the range of actual\ndispute.\nBut, in the spirit of that suggestion, we regard it as entirely improper to give any\nweight to other actions lost by plaintiff. Although, as stated above, the judge in his\nopinion, except as to one of the previous actions, did not say that he rested his\ndecision on those other suits, the language of his final judgment order indicates that\nhe was probably affected by them. If so, he erred. Absent the factors which make up\nres judicata (not present here), each case must stand on its own bottom, subject, of\ncourse, to the doctrine of stare decisis. Succumbing to the temptation to consider\nother defeats suffered by a party may lead a court astray; see, e.g., Southern Pacific Co. v.\nBogert, 250 U.S. 483, 489. When a particular suit is vexatious, sometimes at its\nconclusion the court can give some redress to the victorious party. Perhaps the\nLegislature can and should meet this problem more effectively. But we surely must\nnot do so, as defendant here would have us do, by prejudging the merits of the case\nbefore us.\nModified in part; otherwise reversed and remanded.\nNotes and questions\n(1) In Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946), Judge Frank posited a clear distinction\nbetween two \xe2\x80\x9cessential\xe2\x80\x9d elements in establishing infringement (at 468):\n\xe2\x80\xa6 it is important to avoid confusing two separate elements essential to a plaintiff\xe2\x80\x99s\ncase in such a suit: (a) that defendant copied from plaintiff\xe2\x80\x99s copyrighted work and\n(b) that the copying (assuming it to be proved) went so far as to constitute improper\nappropriation.\n\n(2) In terms of copying in fact, Judge Frank explained (at 468) actual copying could be\nestablished by \xe2\x80\x9cdefendant\xe2\x80\x99s admission that he copied\xe2\x80\x9d or by circumstantial evidence, by\nestablishing some combination of access to the work and similarity. In terms of wrongful\ncopying (or \xe2\x80\x9cillicit copying\xe2\x80\x9d or \xe2\x80\x9cunlawful appropriation\xe2\x80\x9d), Frank said (at 468) \xe2\x80\x9cthe test is the\nresponse of the ordinary lay hearer.\xe2\x80\x9d\nArnstein treats both copying in fact and wrongful copying as questions of fact and as\nobjective and subjective, respectively. The kinds of similarity that might support a finding of\n\n161\n\n\x0cactual copying are objective and thus analytical dissection of the works aided by the\ntestimony of experts may be appropriate. On the other hand, in the same sentence where he\nannounced that the test of wrongful copying \xe2\x80\x9cis the response of the ordinary lay hearer\xe2\x80\x9d\nJudge Frank said that \xe2\x80\x9caccordingly, on that issue, \xe2\x80\x9cdissection\xe2\x80\x9d and expert testimony are\nirrelevant.\xe2\x80\x9d Whether this is really so is an issue taken up later in this chapter.\n(3) Arnstein treats both copying in fact and wrongful copying as pure questions of fact that\nmust be determined by a jury except in the most extreme circumstances. In The Questionable\nOrigins of the Copyright Infringement Analysis, Shyamkrishna Balganesh argues that \xe2\x80\x9c[t]his jurycentric approach continues to influence modern copyright law and is responsible for the\nsubjective and unpredictable nature of the infringement analysis.\xe2\x80\x9d\n(4) Arnstein v. Porter is a copyright case, but copyright issues took a backseat to the intellectual\ncontest between Judge Jerome Frank, an opponent of summary judgment, and Judge Charles\nClark, one of its most recognizable proponents. In The Questionable Origins of the Copyright\nInfringement Analysis, Shyamkrishna Balganesh reexamines the historical record and argues\npersuasively that that:\nArnstein\xe2\x80\x99s decision to rely on juries for the infringement analysis had very little to do\nwith copyright law or policy. It was hardly a considered decision about the values at\nstake in the copyright infringement analysis, but instead almost entirely the product\nof the judges\xe2\x80\x99 desire to enable the particular plaintiff in the case to obtain a fair\nhearing, for which their reliance on a jury and a heightened summary judgment\nstandard proved to be ideal vehicles. Considerations of copyright law were for the\nmost part entirely secondary to the court\xe2\x80\x99s decision.\n\n(5) The standard for summary judgment set out in Arnstein (at 468) was that the plaintiff was\nentitled to a trial of his copyright infringement action if there were \xe2\x80\x9cthe slightest doubt as to\nthe facts.\xe2\x80\x9d This exacting standard has long since been overruled and yet Arnstein continues to\ninfluence the allocation of responsibilities between judge and jury in copyright litigation.\nThe extrinsic/intrinsic test for infringement of the reproduction right\nWilliams v. Gaye, 885 F. 3d 1150 (9th Cir. 2018)\nCircuit Judge M. Smith\nAfter a seven-day trial and two days of deliberation, a jury found that Pharrell\nWilliams, Robin Thicke, and Clifford Harris, Jr.\xe2\x80\x99s song \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d the world\xe2\x80\x99s\nbest-selling single in 2013, infringed Frankie Christian Gaye, Nona Marvisa Gaye,\nand Marvin Gaye III\xe2\x80\x99s copyright in Marvin Gaye\xe2\x80\x99s 1977 hit song \xe2\x80\x9cGot To Give It\nUp.\xe2\x80\x9d\nA. \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d\nIn 1976, Marvin Gaye recorded the song \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d in his studio. \xe2\x80\x9cGot\nTo Give It Up\xe2\x80\x9d reached number one on Billboard\xe2\x80\x99s Hot 100 chart in 1977, and\nremains popular today.\nIn 1977, Jobete Music Company, Inc. registered \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d with the\nUnited States Copyright Office and deposited six pages of handwritten sheet music\nattributing the song\xe2\x80\x99s words and music to Marvin Gaye. Marvin Gaye did not write\nor fluently read sheet music, and did not prepare the deposit copy. Instead, an\n162\n\n\x0cunidentified transcriber notated the sheet music after Marvin Gaye recorded \xe2\x80\x9cGot\nTo Give It Up.\xe2\x80\x9d\nThe Gayes inherited the copyrights in Marvin Gaye\xe2\x80\x99s musical compositions.\nB. \xe2\x80\x9cBlurred Lines\xe2\x80\x9d\nIn June 2012, Pharrell Williams and Robin Thicke wrote and recorded \xe2\x80\x9cBlurred\nLines.\xe2\x80\x9d Clifford Harris, Jr., known popularly as T.I., separately wrote and recorded a\nrap verse for \xe2\x80\x9cBlurred Lines\xe2\x80\x9d that was added to the track seven months later.\n\xe2\x80\x9cBlurred Lines\xe2\x80\x9d was the best-selling single in the world in 2013.\nThicke, Williams, and Harris co-own the musical composition copyright in \xe2\x80\x9cBlurred\nLines.\xe2\x80\x9d Star Trak and Interscope Records co-own the sound recording of \xe2\x80\x9cBlurred\nLines.\xe2\x80\x9d Universal Music Distribution manufactured and distributed \xe2\x80\x9cBlurred Lines.\xe2\x80\x9d\nC. The Action\nThe Gayes made an infringement demand on Williams and Thicke after hearing\n\xe2\x80\x9cBlurred Lines.\xe2\x80\x9d Negotiations failed, prompting Williams, Thicke, and Harris to file\nsuit for a declaratory judgment of non-infringement on August 15, 2013.\nThe Gayes counterclaimed against the Thicke Parties, alleging that \xe2\x80\x9cBlurred Lines\xe2\x80\x9d\ninfringed their copyright in \xe2\x80\x9cGot To Give It Up,\xe2\x80\x9d and added the Interscope Parties\nas third-party defendants.\nD. The District Court\xe2\x80\x99s Denial of Summary Judgment\nThe district court denied Williams and Thicke\xe2\x80\x99s motion for summary judgment on\nOctober 30, 2014.\n1. The District Court\xe2\x80\x99s Interpretation of the Copyright Act of 1909\nThe district court ruled that the Gayes\xe2\x80\x99 compositional copyright, which is governed\nby the Copyright Act of 1909, did not extend to the commercial sound recording of\n\xe2\x80\x9cGot To Give It Up,\xe2\x80\x9d and protected only the sheet music deposited with the\nCopyright Office. The district court accordingly limited its review of the evidence to\nthe deposit copy, and concluded there were genuine issues of material fact.\n2. The Evidence\nThe Thicke Parties relied upon the opinion of musicologist Sandy Wilbur. The Gayes\nrelied upon the opinions of Dr. Ingrid Monson, the Quincy Jones Professor of\nAfrican American Music at Harvard University, and musicologist Judith Finell. The\nexperts disagreed sharply in their opinions, which they articulated in lengthy reports.\nFinell opined that there is a \xe2\x80\x9cconstellation\xe2\x80\x9d of eight similarities between \xe2\x80\x9cGot To\nGive It Up\xe2\x80\x9d and \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d consisting of the signature phrase, hooks,2 hooks\nwith backup vocals, \xe2\x80\x9cTheme X,\xe2\x80\x9d3 backup hooks, bass melodies, keyboard parts, and\nunusual percussion choices.\nFootnote 2: According to Finell, the term \xe2\x80\x9chook\xe2\x80\x9d refers to the most important and memorable melodic material\nof a piece of popular music.\nFootnote 3: Finell named a repeated four-note backup vocal in \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d as \xe2\x80\x9cTheme X.\xe2\x80\x9d\n\nWilbur opined that there are no substantial similarities between the melodies,\nrhythms, harmonies, structures, and lyrics of \xe2\x80\x9cBlurred Lines\xe2\x80\x9d and \xe2\x80\x9cGot To Give It\n\n163\n\n\x0cUp,\xe2\x80\x9d and disputed each area of similarity Finell identified. The district court\ncompared Finell\xe2\x80\x99s testimony with Wilbur\xe2\x80\x99s and, pursuant to the extrinsic test under\ncopyright law, meticulously filtered out elements Wilbur opined were not in the\ndeposit copy, such as the backup vocals, \xe2\x80\x9cTheme X,\xe2\x80\x9d descending bass line, keyboard\nrhythms, and percussion parts.\nThe district court also filtered out several unprotectable similarities Dr. Monson\nidentified, including the use of a cowbell, hand percussion, drum set parts,\nbackground vocals, and keyboard parts. After filtering out those elements, the\ndistrict court considered Dr. Monson\xe2\x80\x99s analysis of harmonic and melodic similarities\nbetween the songs, and noted differences between Wilbur\xe2\x80\x99s and Dr. Monson\xe2\x80\x99s\nopinions.\nAfter performing its analytical dissection, as part of the extrinsic test, the district\ncourt summarized the remaining areas of dispute in the case. The district court\nidentified disputes regarding the similarity of the songs\xe2\x80\x99 signature phrases, hooks,\nbass lines, keyboard chords, harmonic structures, and vocal melodies. Concluding\nthat genuine issues of material fact existed, the district court denied Williams and\nThicke\xe2\x80\x99s motion for summary judgment.\nE. Trial\nThe case proceeded to a seven-day trial. The district court ruled before trial that the\nGayes could present sound recordings of \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d edited to capture\nonly elements reflected in the deposit copy. Consequently, the commercial sound\nrecording of \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d was not played at trial.\nWilliams and Thicke testified, each acknowledging inspiration from Marvin Gaye and\naccess to \xe2\x80\x9cGot To Give It Up.\xe2\x80\x9d\nFinell testified that \xe2\x80\x9cBlurred Lines\xe2\x80\x9d and \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d share many similarities,\nincluding the bass lines, keyboard parts, signature phrases, hooks, \xe2\x80\x9cTheme X,\xe2\x80\x9d bass\nmelodies, word painting, and the placement of the rap and \xe2\x80\x9cparlando\xe2\x80\x9d sections in the\ntwo songs. She opined that nearly every bar of \xe2\x80\x9cBlurred Lines\xe2\x80\x9d contains an element\nsimilar to \xe2\x80\x9cGot To Give It Up.\xe2\x80\x9d Although the district court had filtered out \xe2\x80\x9cTheme\nX,\xe2\x80\x9d the descending bass line, and the keyboard rhythms as unprotectable at summary\njudgment, Finell testified that those elements were in the deposit copy.\nDr. Monson played three audio-engineered \xe2\x80\x9cmash-ups\xe2\x80\x9d she created to show the\nmelodic and harmonic compatibility between \xe2\x80\x9cBlurred Lines\xe2\x80\x9d and \xe2\x80\x9cGot To Give It\nUp.\xe2\x80\x9d She testified that the two songs shared structural similarities on a sectional and\nphrasing level.\nWilbur opined that the two songs are not substantially similar and disputed Finell\nand Dr. Monson\xe2\x80\x99s opinions. Wilbur prepared and played a sound recording\ncontaining her rendition of the deposit copy of \xe2\x80\x9cGot To Give It Up.\xe2\x80\x9d\nNeither the Thicke Parties nor the Gayes made a motion for judgment as a matter of\nlaw pursuant to Federal Rule of Civil Procedure 50(a) before the case was submitted\nto the jury.\nOn March 10, 2015, after two days of deliberation, the jury returned mixed general\nverdicts. The jury found that Williams, More Water from Nazareth Publishing, and\n164\n\n\x0cThicke infringed the Gayes\xe2\x80\x99 copyright in \xe2\x80\x9cGot To Give It Up.\xe2\x80\x9d The jury awarded the\nGayes $4 million in actual damages, $1,610,455.31 in infringer\xe2\x80\x99s profits from\nWilliams and More Water from Nazareth Publishing, and $1,768,191.88 in infringer\xe2\x80\x99s\nprofits from Thicke.\nI. Governing Law\nA. Elements of a Copyright Infringement Claim\nTo prevail on a copyright infringement claim, a plaintiff must show that (1) he or she\nowns the copyright in the infringed work, and (2) the defendant copied protected\nelements of the copyrighted work. Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir. 2004).\nA copyright plaintiff may prove copying with circumstantial, rather than direct,\nevidence. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000). \xe2\x80\x9cAbsent\ndirect evidence of copying, proof of infringement involves fact-based showings that\nthe defendant had access to the plaintiff\xe2\x80\x99s work and that the two works are\nsubstantially similar.\xe2\x80\x9d Id.\nAccess and substantial similarity are inextricably linked. We adhere to the \xe2\x80\x9cinverse\nratio rule,\xe2\x80\x9d which operates like a sliding scale: The greater the showing of access, the\nlesser the showing of substantial similarity is required.6\nFootnote 6: To be clear, we do not \xe2\x80\x9credefine the test of substantial similarity here,\xe2\x80\x9d or negate the requirement\nthat there be substantial similarity. See Three Boys Music, 212 F.3d at 486. Although the dissent criticizes the inverse\nratio rule, the rule is binding precedent under our circuit law, and we are bound to apply it.\n\nWilliams and Thicke readily admitted at trial that they had a high degree of access to\n\xe2\x80\x9cGot To Give It Up.\xe2\x80\x9d The Gayes\xe2\x80\x99 burden of proof of substantial similarity is\nlowered accordingly.\nWe use a two-part test for substantial similarity: an extrinsic test and an intrinsic test.\nFor a jury to find substantial similarity, there must be evidence on both the extrinsic\nand intrinsic tests. A district court applies only the extrinsic test on a motion for\nsummary judgment, as the intrinsic test is reserved exclusively for the trier of fact.\nThe extrinsic test is objective. It considers whether two works share a similarity of\nideas and expression as measured by external, objective criteria. Application of the\nextrinsic test requires analytical dissection of a work and expert testimony. An\nanalytical dissection, in turn, requires breaking the works down into their constituent\nelements, and comparing those elements for proof of copying as measured by\n\xe2\x80\x9csubstantial similarity.\xe2\x80\x9d\nThe intrinsic test, on the other hand, is subjective. It asks whether the ordinary,\nreasonable person would find the total concept and feel of the works to be\nsubstantially similar.\nBecause the requirement is one of substantial similarity to protected elements of the\ncopyrighted work, it is essential to distinguish between the protected and\nunprotected material in a plaintiff\xe2\x80\x99s work. Still, substantial similarity can be found in\na combination of elements, even if those elements are individually unprotected.\nThis principle finds particular relevance in application of the intrinsic test, as a trier\nof fact may \xe2\x80\x9cfind that the over-all impact and effect indicate substantial\n\n165\n\n\x0cappropriation,\xe2\x80\x9d even if \xe2\x80\x9cany one similarity taken by itself seems trivial.\xe2\x80\x9d Sid & Marty\nKrofft Television Prods., Inc. v. McDonald\xe2\x80\x99s Corp., 562 F.2d 1157, 1169 (9th Cir. 1977).\nB. The Standard of Similarity for Musical Compositions\nWe have distinguished between \xe2\x80\x9cbroad\xe2\x80\x9d and \xe2\x80\x9cthin\xe2\x80\x9d copyright protection based on\nthe \xe2\x80\x9crange of expression\xe2\x80\x9d involved. Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d\n904, 913-14 (9th Cir. 2010). \xe2\x80\x9cIf there\xe2\x80\x99s a wide range of expression, then copyright\nprotection is \xe2\x80\x98broad\xe2\x80\x99 and a work will infringe if it\xe2\x80\x99s \xe2\x80\x98substantially similar\xe2\x80\x99 to the\ncopyrighted work.\xe2\x80\x9d On the other hand, \xe2\x80\x9cif there\xe2\x80\x99s only a narrow range of expression,\nthen copyright protection is \xe2\x80\x98thin\xe2\x80\x99 and a work must be \xe2\x80\x98virtually identical\xe2\x80\x99 to infringe.\xe2\x80\x9d\nTo illustrate, there are a myriad of ways to make an \xe2\x80\x9caliens-attack movie,\xe2\x80\x9d but \xe2\x80\x9cthere\nare only so many ways to paint a red bouncy ball on blank canvas.\xe2\x80\x9d Whereas the\nformer deserves broad copyright protection, the latter merits only thin copyright\nprotection.\nWe reject the Thicke Parties\xe2\x80\x99 argument that the Gayes\xe2\x80\x99 copyright enjoys only thin\nprotection. Musical compositions are not confined to a narrow range of expression.\nThey are unlike a page-shaped computer desktop icon, see Apple Computer, Inc. v.\nMicrosoft Corp., 35 F.3d 1435, 1444 (9th Cir. 1994), or a \xe2\x80\x9cglass-in-glass jellyfish\nsculpture,\xe2\x80\x9d Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003). Rather, as we have\nobserved previously, \xe2\x80\x9c[m]usic ... is not capable of ready classification into only five or\nsix constituent elements,\xe2\x80\x9d but is instead \xe2\x80\x9ccomprised of a large array of elements,\nsome combination of which is protectable by copyright.\xe2\x80\x9d Swirsky, 376 F.3d at 849.\nAs \xe2\x80\x9c[t]here is no one magical combination of ... factors that will automatically\nsubstantiate a musical infringement suit,\xe2\x80\x9d and as \xe2\x80\x9ceach allegation of infringement will\nbe unique,\xe2\x80\x9d the extrinsic test is met, \xe2\x80\x9c[s]o long as the plaintiff can demonstrate,\nthrough expert testimony ..., that the similarity was \xe2\x80\x98substantial\xe2\x80\x99 and to \xe2\x80\x98protected\nelements\xe2\x80\x99 of the copyrighted work.\xe2\x80\x9d Id. We have applied the substantial similarity\nstandard to musical infringement suits before and see no reason to deviate from that\nstandard now. Therefore, the Gayes\xe2\x80\x99 copyright is not limited to only thin copyright\nprotection, and the Gayes need not prove virtual identity to substantiate their\ninfringement action.\nC. The Copyright Act of 1909\nMarvin Gaye composed \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d before January 1, 1978, the effective\ndate of the Copyright Act of 1976. Accordingly, the Copyright Act of 1909 governs\nthe Gayes\xe2\x80\x99 compositional copyright.\nWhile the Copyright Act of 1976 protects \xe2\x80\x9cworks of authorship\xe2\x80\x9d fixed in \xe2\x80\x9csound\nrecordings,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102, the 1909 Act did not protect sound recordings. It is\nwell settled that \xe2\x80\x9c[s]ound recordings and musical compositions are separate works\nwith their own distinct copyrights.\xe2\x80\x9d9\nFootnote 9: 17 U.S.C. \xc2\xa7 102(a)(2) protects \xe2\x80\x9cmusical works,\xe2\x80\x9d while \xc2\xa7 102(a)(7) protects \xe2\x80\x9csound recordings.\xe2\x80\x9d\n\xe2\x80\x9c\xe2\x80\x98Sound recordings\xe2\x80\x99 are works that result from the fixation of a series of musical, spoken, or other sounds ...,\nregardless of the nature of the material objects, such as disks, tapes, or other phonorecords, in which they are\nembodied.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101.\n\nIt remains unsettled, however, whether copyright protection for musical\ncompositions under the 1909 Act extends only to the four corners of the sheet music\ndeposited with the United States Copyright Office, or whether the commercial sound\n166\n\n\x0crecordings of the compositions are admissible to shed light on the scope of the\nunderlying copyright. Here, the district court ruled that the 1909 Act protected only\nthe deposit copy of \xe2\x80\x9cGot To Give It Up,\xe2\x80\x9d and excluded the sound recording from\nconsideration.\nThe Gayes cross-appeal the district court\xe2\x80\x99s interpretation of the 1909 Act only in the\nevent the case is remanded for a new trial. The Gayes assert that Marvin Gaye\xe2\x80\x99s\nstudio recording may establish the scope of a compositional copyright, despite the\n1909 Act\xe2\x80\x99s lack of protection for sound recordings. The Thicke Parties, on the other\nhand, elevate the deposit copy as the quintessential measure of the scope of\ncopyright protection.10\nFootnote 10: To our knowledge, the Thicke Parties\xe2\x80\x99 position had not found support in case law until the district\ncourt\xe2\x80\x99s ruling. See Three Boys Music, 212 F.3d at 486 (observing, in the context of subject matter jurisdiction, that\n\xe2\x80\x9c[a]lthough the 1909 Copyright Act requires the owner to deposit a \xe2\x80\x98complete copy\xe2\x80\x99 of the work with the\ncopyright office, our definition of a \xe2\x80\x98complete copy\xe2\x80\x99 is broad and deferential\xe2\x80\x9d); see also 17 U.S.C. \xc2\xa7 704\n(providing that the Register of Copyrights and the Librarian of Congress may destroy or otherwise dispose of\noriginal deposit copies if certain facsimile requirements are met); Marya v. Warner/Chappell Music, Inc., 131\nF.Supp.3d 975, 982 (C.D. Cal. 2015) (observing that \xe2\x80\x9c[t]he Copyright Office no longer has the deposit copy\xe2\x80\x9d of\nthe work at issue, which was registered in 1935)).\n\nNevertheless, because we do not remand the case for a new trial, we need not, and\ndecline to, resolve this issue in this opinion. For purposes of this appeal, we accept,\nwithout deciding, the merits of the district court\xe2\x80\x99s ruling that the scope of the Gayes\xe2\x80\x99\ncopyright in \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d is limited to the deposit copy.\nII. The District Court\xe2\x80\x99s Order Denying Summary Judgment is Not Reviewable After\na Full Trial on the Merits.\n[The majority held that the district court\xe2\x80\x99s order denying the Thicke parties\xe2\x80\x99 motion\nfor summary judgment was not reviewable. The Thicke parties argued that it was\nbecause the district court\xe2\x80\x99s denial constituted legal error. The majority disagreed.]\nThe district court\xe2\x80\x99s application of the extrinsic test of similarity was a factbound\ninquiry far afield from decisions resolving disputes about the substance and clarity of\npre-existing law. The district court\xe2\x80\x99s ruling bears little resemblance to legal issues we\nhave reviewed pursuant to our exception.\nIII. The District Court Did Not Abuse its Discretion in Denying a New Trial.\nWe review the district court\xe2\x80\x99s denial of a motion for a new trial for abuse of\ndiscretion. We may reverse the denial of a new trial only if the district court reaches a\nresult that is illogical, implausible, or without support in the inferences that may be\ndrawn from the record. The abuse of discretion standard requires us to uphold a\ndistrict court\xe2\x80\x99s determination that falls within a broad range of permissible\nconclusions, provided the district court did not apply the law erroneously.\nThe Thicke Parties argue that a new trial is warranted on three grounds: (1) Jury\nInstructions 42 and 43 were erroneous; (2) the district court abused its discretion in\nadmitting portions of Finell and Dr. Monson\xe2\x80\x99s testimony; and (3) the verdict is\nagainst the clear weight of the evidence. We disagree, and discuss each ground in\nturn.\nA. Instructions 42 and 43 Were Not Erroneous.\n1. Jury Instruction 42\n167\n\n\x0cThe Thicke Parties argue that Instruction 42 allowed the jury to place undue weight\non Williams and Thicke\xe2\x80\x99s statements claiming inspiration from \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d\nand Marvin Gaye. The district court instructed the jurors:\nIn order to find that the Thicke Parties copied either or both of the Gaye Parties\xe2\x80\x99\nsongs, it is not necessary that you find that the Thicke Parties consciously or\ndeliberately copied either or both of these songs. It is sufficient if you find that the\nThicke Parties subconsciously copied either or both of the Gaye Parties\xe2\x80\x99 songs.\n\nBecause direct evidence is rare, copying is usually circumstantially proved by a\ncombination of access and substantial similarity. As the Thicke Parties acknowledge,\naccess may be \xe2\x80\x9cbased on a theory of widespread dissemination and subconscious\ncopying.\xe2\x80\x9d Three Boys Music, 212 F.3d at 483. In short, there is no scienter requirement.\nInstruction 42 stated as much.\nThe Thicke Parties argue that Instruction 42 was nonetheless inappropriate, because\nthe issue of access was not at issue. Not so. First, the fact that the Thicke Parties\nconceded access to \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d does not diminish the importance of access\nto the case. To the contrary, access remains relevant. Our inverse ratio rule provides\nthat the stronger the showing of access, the lesser the showing of substantial\nsimilarity is required.\nSecond, and dispositive here, the instructions as a whole make plain that a\ncircumstantial case of copying requires not just access, but also substantial similarity.\nInstructions 28 and 41 provide that copying may be proven by demonstrating access\nplus substantial similarity.12 Instruction 43 further underscores that the Gayes \xe2\x80\x9cmust\nshow that there is both substantial \xe2\x80\x98extrinsic similarity\xe2\x80\x99 and substantial \xe2\x80\x98intrinsic\nsimilarity\xe2\x80\x99 as to that pair of works.\xe2\x80\x9d Looking to the jury instructions as a whole, it is\nclear that the district court properly instructed the jury to find both access and\nsubstantial similarity.\nFootnote 12: Instruction 28 provides: \xe2\x80\x9cThe Gaye Parties may show the Thicke Parties copied from the work by\nshowing by a preponderance of the evidence that the Thicke Parties had access to the Gaye Parties\xe2\x80\x99 copyrighted\nwork and that there are substantial similarities between the Thicke Parties\xe2\x80\x99 work and original elements of the\nGaye Parties\xe2\x80\x99 work.\xe2\x80\x9d That the instruction uses the permissive \xe2\x80\x9cmay\xe2\x80\x9d presents no problem. It simply reflects the\nfact that the Gayes may, but are not required to, prove copying by way of a circumstantial theory, rather than a\ndirect one.\n\nInstruction 41 provides: \xe2\x80\x9cIf you conclude that the Thicke Parties had access to either\nor both of the Gaye Parties\xe2\x80\x99 works before creating either or both of their works, you\nmay consider that access in connection with determining whether there is substantial\nsimilarity between either or both pairs of works.\xe2\x80\x9d Instruction 41\xe2\x80\x99s use of \xe2\x80\x9cmay\xe2\x80\x9d is\nnot problematic either. In line with our inverse ratio rule, the instruction permits the\njury to consider access \xe2\x80\x9cin connection with\xe2\x80\x9d substantial similarity.\nIn light of the foregoing, we conclude that the district court did not err in giving Jury\nInstruction 42.\n2. Jury Instruction 43\nThe Thicke Parties argue that Instruction 43 erroneously instructed the jury to\nconsider unprotectable elements. Specifically, they contend that the district court\ninstructed the jury that it \xe2\x80\x9cmust consider\xe2\x80\x9d elements that they contend are not present\n\n168\n\n\x0cin the deposit copy: \xe2\x80\x9cTheme X,\xe2\x80\x9d the descending bass line, and keyboard parts.\nInstruction 43 states, in pertinent part:\nExtrinsic similarity is shown when two works have a similarity of ideas and\nexpression as measured by external, objective criteria. To make this determination,\nyou must consider the elements of each of the works and decide if they are\nsubstantially similar. This is not the same as \xe2\x80\x9cidentical.\xe2\x80\x9d There has been testimony\nand evidence presented by both sides on this issue, including by expert witnesses, as\nto such matters as: (a) for \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d and \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d the so-called\n\xe2\x80\x9cSignature Phrase,\xe2\x80\x9d hook, \xe2\x80\x9cTheme X,\xe2\x80\x9d bass melodies, keyboard parts, word painting,\nlyrics, [and] rap v. parlando.... The Gaye Parties do not have to show that each of\nthese individual elements is substantially similar, but rather that there is enough\nsimilarity between a work of the Gaye Parties and an allegedly infringing work of the\nThicke Parties to comprise a substantial amount.\n\nFirst, the Thicke Parties take the word \xe2\x80\x9cmust\xe2\x80\x9d out of context. Instruction 43\xe2\x80\x99s use of\nthe word \xe2\x80\x9cmust\xe2\x80\x9d serves to underline the extrinsic test\xe2\x80\x99s requirement that the jury\ncompare the objective elements of the works for substantial similarity.\nSecond, Finell testified that \xe2\x80\x9cTheme X,\xe2\x80\x9d the descending bass line, and the keyboard\nparts are reflected in the deposit copy, while Wilbur testified to the contrary. The\nexperts\xe2\x80\x99 quarrel over what was in the deposit copy was a factual dispute for the jury\nto decide. Even if Instruction 43\xe2\x80\x99s inclusion of contested elements could have led the\njury to believe that the elements were in the deposit copy, and to consider them as\nprotectable elements for purposes of the substantial similarity analysis, we cannot\nview Instruction 43 in isolation. In light of the jury instructions as a whole, we do\nnot conclude that the district court\xe2\x80\x99s listing of elements in Instruction 43 prevented\nthe jury from making a factual determination of what was in the deposit copy.\nThe instructions on whole make clear that the jury could consider only elements in\nthe deposit copy. Instruction 28 states that the Gayes bear \xe2\x80\x9cthe burden of proving\nthat the Thicke Parties copied original elements from the Gayes\xe2\x80\x99 copyrighted work.\xe2\x80\x9d\nInstruction 35, in turn, defines the Gayes\xe2\x80\x99 copyrighted work. Instruction 35 informed\njurors that at the time the copyright in \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d was registered, \xe2\x80\x9conly\nwritten music could be filed by a copyright owner with the Copyright Office as the\ndeposit copy of the copyrighted work.\xe2\x80\x9d In contrast, \xe2\x80\x9c[r]ecordings of musical\ncompositions could not be filed with the Copyright Office at that time.\xe2\x80\x9d The district\ncourt cautioned the jurors to distinguish between the commercial sound recording of\n\xe2\x80\x9cGot To Give It Up\xe2\x80\x9d and the deposit copy, noting that \xe2\x80\x9calthough a sound recording\nof \xe2\x80\x98Got to Give It Up\xe2\x80\x99 was made and released commercially, the particular recording\nis not at issue in this case, was not produced into evidence, and was not played for\nyou during the trial.\xe2\x80\x9d What was at issue was \xe2\x80\x9ctestimony from one or more witnesses\nfrom each side about what each thinks is shown on the deposit copy for each\ncomposition,\xe2\x80\x9d as well as \xe2\x80\x9crecorded versions of each work that each side has prepared\nbased on what each side contends is shown in the deposit copy that was filed with\nthe Copyright Office.\xe2\x80\x9d In short, the district court instructed the jurors that the\ndeposit copy, not the commercial sound recording, was the copyrighted work in the\ncase.\nHarper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir. 1989), is not helpful to\nthe Thicke Parties. In Harper House, we held that the district court erred in failing to\n\n169\n\n\x0cgive jury instructions that \xe2\x80\x9cadequately distinguished between protectable and\nunprotectable material.\xe2\x80\x9d The jury never heard the commercial sound recording.\nElements indisputably present only in the sound recording, such as the use of\ncowbell and party noises, were never played at trial. Had that been the case, the\ndistrict court would have had to instruct the jury to distinguish between elements in\nthe commercial recording and elements in the deposit copy. Instead, the jury heard\nsound clips edited to capture elements that the experts testified were in the deposit\ncopy. The question of which expert to believe was properly confided to the jury.\nThe district court did not err in giving Instruction 43.\nB. The District Court Did Not Abuse its Discretion in Admitting Portions of Finell\nand Dr. Monson\xe2\x80\x99s Testimony.\nThe Thicke Parties contend that the district court abused its discretion in admitting\nportions of Finell and Dr. Monson\xe2\x80\x99s expert testimony, arguing that they based their\ntestimony on unprotectable elements. We disagree.\n1. Finell\xe2\x80\x99s Testimony\nThe Thicke Parties object only to three portions of Finell\xe2\x80\x99s testimony: her testimony\nregarding \xe2\x80\x9cTheme X,\xe2\x80\x9d the descending bass line, and the keyboard parts. Finell\ntestified that \xe2\x80\x9cTheme X,\xe2\x80\x9d the descending bass line, and the keyboard rhythms were\nin the deposit copy.\nFinell was cross-examined for four hours. During cross-examination, Finell\nconceded that the notes of \xe2\x80\x9cTheme X\xe2\x80\x9d were not written on the sheet music, and she\nwas questioned about her testimony that the notes of \xe2\x80\x9cTheme X\xe2\x80\x9d were implied in\nthe deposit copy. She also acknowledged that the bass melody she presented at trial\ndiffered from that notated in the deposit copy. She was impeached with her\ndeposition testimony, in which she admitted that the rhythm of the keyboard parts in\nthe sound recording of \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d is not notated in the deposit copy.\nWilbur disputed her testimony, opining that \xe2\x80\x9cTheme X,\xe2\x80\x9d the descending bass line,\nand the keyboard rhythms are not contained in the deposit copy. The dispute boiled\ndown to a question of whose testimony to believe. Both experts referenced the\nsound recording.13 Both experts agreed that sheet music requires interpretation.14\nThe question of whose interpretation of the deposit copy to credit was a question\nproperly left for the jury to resolve. Therefore, the district court did not abuse its\ndiscretion by permitting Finell\xe2\x80\x99s testimony.\nFootnote 13: Wilbur initially relied upon the commercial sound recording of \xe2\x80\x9cGot To Give It Up\xe2\x80\x9d to prepare her\ntranscriptions. She continued to rely upon her transcriptions from the commercial sound recording, finding that\nthey were substantially the same as the transcriptions prepared from the deposit copy.\nFootnote 14: On cross-examination, Wilbur acknowledged that a lead sheet reflects a simplified version of a\nchord pattern in a composition, and that chord notation is merely representational. Wilbur also acknowledged\nthat she relied on her interpretation of what was contained within the lead sheet to create her recording of \xe2\x80\x9cGot\nTo Give It Up.\xe2\x80\x9d She admitted that she made choices to deviate from the sheet music, and that her choices were\ninformed by her musical training and knowledge. For example, despite the sheet music\xe2\x80\x99s instruction to continue\nplaying a bass line throughout the song, she chose not to do so in certain parts of the song, knowing that playing\nthe bass line would clash with certain chords.\n\n2. Dr. Monson\xe2\x80\x99s Testimony\n\n170\n\n\x0cThe Thicke Parties argue that the district court abused its discretion in allowing Dr.\nMonson to play audio \xe2\x80\x9cmash-ups\xe2\x80\x9d superimposing Marvin Gaye\xe2\x80\x99s vocals from \xe2\x80\x9cGot\nTo Give It Up\xe2\x80\x9d onto the accompaniment in \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d and vice versa. They\nargue that the \xe2\x80\x9cmash-ups\xe2\x80\x9d contained unprotectable elements, such as the keyboard\nparts, bass melodies, and Marvin Gaye\xe2\x80\x99s vocals.\nThis argument faces the same hurdle as the Thicke Parties\xe2\x80\x99 objection to Finell\xe2\x80\x99s\ntestimony. Dr. Monson testified that there were structural similarities between the\ntwo songs at a sectional level and at a phrasing level, and used the \xe2\x80\x9cmash-ups\xe2\x80\x9d to\ndemonstrate the songs\xe2\x80\x99 shared harmonic and melodic compatibility. We have\npermitted similar expert testimony in the past. Cf. Swirsky, 376 F.3d at 845-47\n(holding that district court erred in discounting expert\xe2\x80\x99s testimony regarding\nstructural similarities between two choruses). Dr. Monson was cross-examined on\nher opinion, and the jury was free to weigh her testimony as it saw fit.\nOur decision in Three Boys Music confirms that the district court acted within its\ndiscretion. Three Boys Music was a 1909 Act copyright infringement case in which the\njury heard not only a rendition of the deposit copy, but the complete commercial\nsound recording of the copyrighted song. In Three Boys Music, the defendants argued\nthat there were \xe2\x80\x9cinaccuracies in the deposit copy.\xe2\x80\x9d While the plaintiffs\xe2\x80\x99 expert\ntestified that \xe2\x80\x9cthe song\xe2\x80\x99s essential elements\xe2\x80\x9d were in the deposit copy, the defendants\nargued that \xe2\x80\x9cthe majority of the musical elements that were part of the infringement\nclaim\xe2\x80\x9d were not in the deposit copy. Despite the fact that the jury heard the\ncomplete sound recording, which differed from the deposit copy, we still upheld the\njury\xe2\x80\x99s verdict finding for the plaintiffs.16\nFootnote 16: It appears that factfinders have listened to commercial sound recordings in other music copyright\ninfringement cases governed by the 1909 Act. See, e.g., Repp v. Webber, 892 F.Supp. 552, 558 (S.D.N.Y. 1995)\n(\xe2\x80\x9cHaving listened to the two songs at issue, however, the Court cannot say as a matter of law that they do not\nshare any substantial similarities.\xe2\x80\x9d); Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F.Supp. 177, 180\n(S.D.N.Y. 1976) (noting that the similarity between the songs \xe2\x80\x9cis perfectly obvious to the listener\xe2\x80\x9d), aff\xe2\x80\x99d sub\nnom. ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988 (2d Cir. 1983); N. Music Corp. v. King Record Distrib.\nCo., 105 F.Supp. 393, 398 (S.D.N.Y. 1952) (\xe2\x80\x9cWe have suffered through the playing of the commercial\nrecordings.\xe2\x80\x9d).\n\nHere, the district court excluded the commercial sound recording of \xe2\x80\x9cGot To Give\nIt Up\xe2\x80\x9d from trial, and vigilantly policed the admission of testimony throughout trial,\nrepeatedly instructing counsel to ensure that the experts tethered their testimony to\nthe sheet music. The district court did not abuse its discretion in admitting portions\nof the Gayes\xe2\x80\x99 experts\xe2\x80\x99 testimony.\nC. The Verdict Was Not Against the Clear Weight of the Evidence.\nThe Thicke Parties argue that the verdict is against the clear weight of the evidence,\nmaintaining that there is no extrinsic or intrinsic similarity between the two songs.\nWe are bound by the limited nature of our appellate function\xe2\x80\x99 in reviewing the\ndistrict court\xe2\x80\x99s denial of a motion for a new trial. So long as there was some\nreasonable basis for the jury\xe2\x80\x99s verdict, we will not reverse the district court\xe2\x80\x99s denial of\na motion for a new trial. When that is the case, we reverse only when there is an\nabsolute absence of evidence to support the jury\xe2\x80\x99s verdict. It is not the courts\xe2\x80\x99 place\nto substitute our evaluations for those of the jurors. Of note, we are reluctant to\n\n171\n\n\x0creverse jury verdicts in music cases on appeal, given the difficulty of proving access\nand substantial similarity.\xe2\x80\x9d17 Three Boys Music, 212 F.3d at 481.\nFootnote 17: Our conclusion in Three Boys Music provides an example of the deference we must apply in\nreviewing the jury\xe2\x80\x99s verdict. Although that case presented \xe2\x80\x9ca weak case of access and a circumstantial case of\nsubstantial similarity,\xe2\x80\x9d we held that \xe2\x80\x9cneither issue warrants reversal of the jury\xe2\x80\x99s verdict.\xe2\x80\x9d 212 F.3d at 486\n\nThe Thicke Parties face significant, if not unsurmountable, hurdles. First, we are\ngenerally reluctant to disturb the trier of fact\xe2\x80\x99s findings, and have made clear that we\nwill not second-guess the jury\xe2\x80\x99s application of the intrinsic test. Second, our review is\nnecessarily deferential where, as here, the district court, in denying the Rule 59\nmotion, concluded that the verdict was not against the clear weight of the evidence.\nFinell testified that nearly every bar of \xe2\x80\x9cBlurred Lines\xe2\x80\x9d contains an area of similarity\nto \xe2\x80\x9cGot To Give It Up.\xe2\x80\x9d Even setting aside the three elements that trouble the\nThicke Parties (\xe2\x80\x9cTheme X,\xe2\x80\x9d the bass line, and the keyboard parts), Finell and Dr.\nMonson testified to multiple other areas of extrinsic similarity, including the songs\xe2\x80\x99\nsignature phrases, hooks, bass melodies, word painting, the placement of the rap and\n\xe2\x80\x9cparlando\xe2\x80\x9d sections, and structural similarities on a sectional and phrasing level.\nThus, we cannot say that there was an absolute absence of evidence supporting the\njury\xe2\x80\x99s verdict.\nWe conclude that the district court did not abuse its discretion in denying the Thicke\nParties\xe2\x80\x99 motion for a new trial.\nCONCLUSION\nWe have decided this case on narrow grounds. Our conclusions turn on the\nprocedural posture of the case, which requires us to review the relevant issues under\ndeferential standards of review.\n[The court affirmed the parts of the district court\xe2\x80\x99s judgment relevant to this extract.]\nCircuit Judge Nguyen, dissenting\nThe majority allows the Gayes to accomplish what no one has before: copyright a\nmusical style. \xe2\x80\x9cBlurred Lines\xe2\x80\x9d and \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d are not objectively similar.\nThey differ in melody, harmony, and rhythm. Yet by refusing to compare the two\nworks, the majority establishes a dangerous precedent that strikes a devastating blow\nto future musicians and composers everywhere.\nWhile juries are entitled to rely on properly supported expert opinion in determining\nsubstantial similarity, experts must be able to articulate facts upon which their\nconclusions \xe2\x80\x94 and thus the jury\xe2\x80\x99s findings \xe2\x80\x94 logically rely. Here, the Gayes\xe2\x80\x99 expert,\nmusicologist Judith Finell, cherrypicked brief snippets to opine that a \xe2\x80\x9cconstellation\xe2\x80\x9d\nof individually unprotectable elements in both pieces of music made them\nsubstantially similar. That might be reasonable if the two constellations bore any\nresemblance. But Big and Little Dipper they are not. The only similarity between\nthese \xe2\x80\x9cconstellations\xe2\x80\x9d is that they\xe2\x80\x99re both compositions of stars.\nI.\nWhen a court, with the assistance of expert testimony, is able to determine\nsubstantial similarity (or lack thereof) under the extrinsic test, judgment must be\n172\n\n\x0cgiven as a matter of law. See Benay v. Warner Bros. Entm\xe2\x80\x99t, Inc., 607 F.3d 620, 624 (9th\nCir. 2010). If, for example, the defendant copied verbatim most of the plaintiff\xe2\x80\x99s\nwork, then the plaintiff is entitled to a finding of substantial similarity as a matter of\nlaw. See Calhoun v. Lillenas Publ\xe2\x80\x99g, 298 F.3d 1228, 1232 (11th Cir. 2002). Conversely, if\nthe objective similarities between the two pieces are merely trivial, then a verdict for\nthe plaintiff could not stand. See Peters v. West, 692 F.3d 629, 636 (7th Cir. 2012)\n(affirming dismissal of infringement suit where the two songs \xe2\x80\x9cshare[d] only small\ncosmetic similarities\xe2\x80\x9d); Newton v. Diamond (\xe2\x80\x9cNewton II\xe2\x80\x9d), 388 F.3d 1189 (9th Cir.\n2004) (affirming grant of summary judgment to defendants who appropriated a de\nminimis portion of the plaintiff\xe2\x80\x99s musical composition and used it throughout their\nown work).\nThe majority, like the district court, presents this case as a battle of the experts in\nwhich the jury simply credited one expert\xe2\x80\x99s factual assertions over another\xe2\x80\x99s. To the\ncontrary, there were no material factual disputes at trial. Finell testified about certain\nsimilarities between the deposit copy of the \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d lead sheet and\n\xe2\x80\x9cBlurred Lines.\xe2\x80\x9d Pharrell Williams and Robin Thicke don\xe2\x80\x99t contest the existence of\nthese similarities. Rather, they argue that these similarities are insufficient to support\na finding of substantial similarity as a matter of law. The majority fails to engage with\nthis argument.\nFinell identified a few superficial similarities at the \xe2\x80\x9ccell\xe2\x80\x9d level by focusing on\nindividual musical elements, such as rhythm or pitch, entirely out of context. Most of\nthese \xe2\x80\x9cshort ... pattern[s]\xe2\x80\x9d weren\xe2\x80\x99t themselves protectable by copyright, and Finell\nignored both the other elements with which they appeared and their overall\nplacement in each of the songs. Her analysis is the equivalent of finding substantial\nsimilarity between two pointillist paintings because both have a few flecks of\nsimilarly colored paint. A comparison of the deposit copy of \xe2\x80\x9cGot to Give it Up\xe2\x80\x9d\nand \xe2\x80\x9cBlurred Lines\xe2\x80\x9d under the extrinsic test leads to only one conclusion. Williams\nand Thicke were entitled to judgment as a matter of law.\nII.\nA.\nAn important limitation on copyright protection is that it covers only an author\xe2\x80\x99s\nexpression \xe2\x80\x94 as opposed to the idea underlying that expression. See 17 U.S.C. \xc2\xa7\n102(a) (\xe2\x80\x9cCopyright protection subsists... in original works of authorship fixed in any\ntangible medium of expression ... from which they can be perceived, reproduced, or\notherwise communicated....\xe2\x80\x9d); id. \xc2\xa7 102(b) (\xe2\x80\x9cIn no case does copyright protection ...\nextend to any idea, procedure, process, system, method of operation, concept,\nprinciple, or discovery, regardless of the form in which it is described, explained,\nillustrated, or embodied in [the author\xe2\x80\x99s original] work.\xe2\x80\x9d). Copyright \xe2\x80\x9cencourages\nothers to build freely upon the ideas and information conveyed by a work.\xe2\x80\x9d Feist\nPubl\xe2\x80\x99ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349-50 (1991) (citing Harper & Row\nPublishers, Inc. v. Nation Enters., 471 U.S. 539, 556-57 (1985)).\nThe idea/expression dichotomy, as this principle is known, strikes a definitional\nbalance between the First Amendment and the Copyright Act. Because some\nrestriction on expression is the inherent and intended effect of every grant of\n\n173\n\n\x0ccopyright, the idea/expression dichotomy serves as one of copyright law\xe2\x80\x99s \xe2\x80\x9cbuilt-in\nFirst Amendment accommodations.\xe2\x80\x9d Eldred v. Ashcroft, 537 U.S. 186, 219 (2003).\nSuch accommodations are necessary because \xe2\x80\x9cin art, there are, and can be, few, if\nany, things, which in an abstract sense, are strictly new and original throughout.\xe2\x80\x9d\nCampbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994) Every work of art\n\xe2\x80\x9cborrows, and must necessarily borrow, and use much which was well known and\nused before.\xe2\x80\x9d Id. (quoting Emerson, 8 F. Cas. at 619). In the field of popular songs,\nmany, if not most, compositions bear some similarity to prior songs.1 But for the\nfreedom to borrow others\xe2\x80\x99 ideas and express them in new ways, artists would simply\ncease producing new works \xe2\x80\x94 to society\xe2\x80\x99s great detriment.\nFootnote 1: As an example, Williams and Thicke attempted to show the jury a video demonstrating how a\ncommon sequence of four chords serves as the harmonic backbone of innumerable songs. See Axis of Awesome,\n4 Chord Song (with song titles), YouTube (Dec. 10, 2009) https://www.youtube.com/watch?v=5pidokakU4I\n(singing 38 popular songs over the same chord progression, ranging from \xe2\x80\x9cLet It Be\xe2\x80\x9d by the Beatles to \xe2\x80\x9cIf I Were\na Boy\xe2\x80\x9d by Beyonc\xc3\xa9). \xe2\x80\x9cBlurred Lines\xe2\x80\x9d employs only two chords \xe2\x80\x94 the first two from this sequence. The district\ncourt prevented the jury from hearing this evidence. However, the court allowed the jury to hear mashups of\n\xe2\x80\x9cBlurred Lines\xe2\x80\x9d played together with \xe2\x80\x9cGot to Give It Up,\xe2\x80\x9d which the Gayes used to show that the two songs\nwere harmonically similar.\n\nB.\n\xe2\x80\x9cBlurred Lines\xe2\x80\x9d clearly shares the same \xe2\x80\x9cgroove\xe2\x80\x9d or musical genre as \xe2\x80\x9cGot to Give\nIt Up,\xe2\x80\x9d which everyone agrees is an unprotectable idea. But what the majority\noverlooks is that two works in the same genre must share at least some protectable\nexpression in order to run afoul of copyright law.\nNot all expression is protectable. Originality, the \xe2\x80\x9csine qua non of copyright,\xe2\x80\x9d\naccommodates authors\xe2\x80\x99 need to build on the works of others by requiring\ncopyrightable expression to be \xe2\x80\x9cindependently created by the author\xe2\x80\x9d and have \xe2\x80\x9cat\nleast some minimal degree of creativity.\xe2\x80\x9d Feist, 499 U.S. at 345, 348. If an author uses\ncommonplace elements that are firmly rooted in the genre\xe2\x80\x99s tradition, the expression\nis unoriginal and thus uncopyrightable. See id. at 363.\nEven original expression can be so intimately associated with the underlying idea as\nto be unprotectable. Under the doctrine of sc\xc3\xa8nes \xc3\xa0 faire, \xe2\x80\x9cexpressions that are\nstandard, stock, or common to a particular subject matter or medium are not\nprotectable under copyright law.\xe2\x80\x9d Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003)\n(citing See v. Durang, 711 F.2d 141, 143 (9th Cir. 1983)). The doctrine of merger\nprovides that where an idea contained in an expression cannot be communicated in a\nwide variety of ways, the idea and expression may merge such that even verbatim\nreproduction of a factual work may not constitute infringement.\nThe majority begins its analysis by suggesting that the Gayes enjoy broad copyright\nprotection because, as a category, \xe2\x80\x9c[m]usical compositions are not confined to a\nnarrow range of expression.\xe2\x80\x9d But the majority then contrasts this protected category\nas a whole with specific applications of other protected categories \xe2\x80\x94 the \xe2\x80\x9cpageshaped computer desktop icon\xe2\x80\x9d in Apple Computer (an audiovisual work) and the\n\xe2\x80\x9cglass-in-glass jellyfish sculpture\xe2\x80\x9d in Satava (a pictorial, graphic, and sculptural work)\n\xe2\x80\x94 that were entitled only to thin copyright protection due to the limited number of\nways in which they could be expressed. That\xe2\x80\x99s a false comparison. Under the\nmajority\xe2\x80\x99s reasoning, the copyrights in the desktop icon and glass jellyfish should\n\n174\n\n\x0chave been broad. Like musical compositions, both audiovisual works and pictorial,\ngraphic, and sculptural works can be expressed in myriad ways.\nMore importantly, \xe2\x80\x9c[t]he mere fact that a work is copyrighted does not mean that\nevery element of the work may be protected.\xe2\x80\x9d Feist, 499 U.S. at 348. Application of\nthe extrinsic test \xe2\x80\x9crequires breaking the [copyrighted and allegedly infringing] works\ndown into their constituent elements, and comparing those elements for proof of\ncopying as measured by substantial similarity.\xe2\x80\x9d Swirsky v. Carey, 376 F.3d 841, 845\n(9th Cir. 2004). \xe2\x80\x9cBecause the requirement is one of substantial similarity to protected\nelements of the copyrighted work, it is essential to distinguish between the protected\nand unprotected material....\xe2\x80\x9d Id. We then \xe2\x80\x9capply the limiting doctrines, subtracting\nthe unoriginal elements,\xe2\x80\x9d to determine how \xe2\x80\x9cbroad\xe2\x80\x9d or \xe2\x80\x9cthin\xe2\x80\x9d the remaining\ncopyright is. Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 766 (9th Cir. 2003) (citing\nApple Computer, 35 F.3d at 1442).\nThe majority doesn\xe2\x80\x99t explain what elements are protectable in \xe2\x80\x9cGot to Give It Up,\xe2\x80\x9d\nwhich is surprising given that our review of this issue is de novo. See Mattel, Inc. v.\nMGA Entm\xe2\x80\x99t, Inc., 616 F.3d 904, 914 (9th Cir. 2010). But by affirming the jury\xe2\x80\x99s\nverdict, the majority implicitly draws the line between protectable and unprotectable\nexpression \xe2\x80\x9cso broadly that future authors, composers and artists will find a\ndiminished store of ideas on which to build their works.\xe2\x80\x9d Oravec v. Sunny Isles Luxury\nVentures, L.C., 527 F.3d 1218, 1225 (11th Cir. 2008).\nWorse still, the majority invokes the oft-criticized \xe2\x80\x9cinverse ratio\xe2\x80\x9d rule to suggest that\nthe Gayes faced a fairly low bar in showing substantial similarity just because\nWilliams and Thicke conceded access to \xe2\x80\x9cGot to Give It Up.\xe2\x80\x9d The issue, however,\nisn\xe2\x80\x99t whether Williams and Thicke copied \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d \xe2\x80\x94 there\xe2\x80\x99s plenty of\nevidence they were attempting to evoke Marvin Gaye\xe2\x80\x99s style. Rather, the issue is\nwhether they took too much.\nCopying in and of itself \xe2\x80\x9cis not conclusive of infringement. Some copying is\npermitted.\xe2\x80\x9d Newton II, 388 F.3d at 1193 (quoting West Publ\xe2\x80\x99g Co. v. Edward Thompson\nCo., 169 F. 833, 861 (E.D.N.Y. 1909) (Hand, J.)). Copying will only have legal\nconsequences if it \xe2\x80\x9chas been done to an unfair extent.\xe2\x80\x9d Id. (quoting West Publ\xe2\x80\x99g, 169\nF. at 861). In determining liability for copyright infringement, the critical and\nultimate inquiry is whether \xe2\x80\x9cthe copying is substantial.\xe2\x80\x9d Id.\nRequiring similarities to be substantial is of heightened importance in cases involving\nmusical compositions. Sound recordings have \xe2\x80\x9cunique performance elements\xe2\x80\x9d that\nmust be \xe2\x80\x9cfiltered out from consideration.\xe2\x80\x9d Newton II, 388 F.3d at 1194. Thus, the\nrange of musical expression is necessarily more circumscribed when music is written\ndown than when it is performed. \xe2\x80\x9cGiven the limited number of musical notes (as\nopposed to words in a language), the combination of those notes and their phrasing,\nit is not surprising that a simple composition of a short length might well be\nsusceptible to original creation by more than one composer.\xe2\x80\x9d Calhoun, 298 F.3d at\n1232.\nIII.\nThe Gayes don\xe2\x80\x99t contend that every aspect of \xe2\x80\x9cBlurred Lines\xe2\x80\x9d infringes \xe2\x80\x9cGot to\nGive It Up.\xe2\x80\x9d Rather, they identify only a few features that are present in both works.\n\n175\n\n\x0cThese features, however, aren\xe2\x80\x99t individually protectable. And when considered in the\nworks as a whole, these similarities aren\xe2\x80\x99t even perceptible, let alone substantial.\nMusical compositions are expressed primarily through the building blocks of melody,\nharmony, and rhythm.4 See Newton v. Diamond (\xe2\x80\x9cNewton I\xe2\x80\x9d), 204 F.Supp.2d 1244,\n1249 (C.D. Cal. 2002); Don Michael Randel, The New Harvard Dictionary of Music 366\n(1986), (\xe2\x80\x9cThe whole of music is often informally divided into three domains: melody,\nharmony, and rhythm.\xe2\x80\x9d); see generally Aaron Copland, What to Listen for in Music 3377 (McGraw-Hill 1957). The deposit copy of \xe2\x80\x9cGot to Give it Up\xe2\x80\x9d employs these\ncomponents through a melodic line, an introductory bass line, and chord indications,\nwith the additional feature of lyrics.\nFootnote 4: Of course, these aren\xe2\x80\x99t the only elements through which a musical idea can be expressed in tangible\nform. See Swirsky, 376 F.3d at 848-49. Other elements include tempo (the speed at which a composition is\nplayed), dynamics (the volume of sound), and instrumentation. See id. Many elements can be broken down into\nconstituent elements. For example, melody is a sequence of pitches played successively; harmony is a group of\npitches played simultaneously; and a chord progression is a sequence of harmonies. See Don Michael Randel, The\nNew Harvard Dictionary of Music 366, 481-82 (1986). The analysis will generally focus on the most relevant subset of\nelements, which depends on the nature of the music at issue. See Swirsky, 376 F.3d at 849. Finell did not compare\nthe songs\xe2\x80\x99 overall harmonies because she felt \xe2\x80\x9cthat wasn\xe2\x80\x99t the most important similarity.\xe2\x80\x9d\n\nThe melodic line and the associated lyrics are notated throughout the deposit copy.\nThe bass line is notated for only the first eight measures,5 at the end of which the\nphrase \xe2\x80\x9cbass simile\xe2\x80\x9d indicates that the bass line should continue in a similar manner.\nAs is typical of a lead sheet, the chords are not expressed with individual notes\nindicating pitch and duration. Rather, the chords are described by name (e.g., \xe2\x80\x9cA7\xe2\x80\x9d\nfor a chord containing the pitches A, C#, E, and G) at places in the song where the\nharmony changes.\nFootnote 5: In musical notation, the notes signifying individual pitches are grouped into \xe2\x80\x9cmeasures\xe2\x80\x9d divided by\nvertical \xe2\x80\x9cbar\xe2\x80\x9d lines. Within a measure, the note immediately after the bar line, or \xe2\x80\x9cdownbeat,\xe2\x80\x9d receives the\ngreatest emphasis.\n\nA. Alleged Melodic Similarities\n1. The \xe2\x80\x9cSignature\xe2\x80\x9d Phrase\nFinell dubbed a 10-note melodic sequence in the deposit copy the \xe2\x80\x9cSignature Phrase.\xe2\x80\x9d\nShe argued that it corresponded to a 12-note sequence in \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d\nnotwithstanding that \xe2\x80\x9cno two notes have the same pitch, rhythm and placement,\xe2\x80\x9d as\nthe district court correctly observed.\nFinell identified four similar elements, none of which is protectable: (a) each phrase\nbegins with repeated notes; (b) the phrases have three identical pitches in a row in\nthe first measure and two in the second measure; (c) each phrase begins with the\nsame rhythm; and (d) each phrase ends on a melisma (one word sung over multiple\npitches).\na. Repeated Notes\nThe Signature Phrase begins in \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d with a note repeated four times.\nIn \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d it begins with a note repeated twice, followed by a different note,\nfollowed by the first note.6 The use of repeating notes is obviously not original to\n\xe2\x80\x9cGot to Give It Up.\xe2\x80\x9d Finell repeatedly used the song \xe2\x80\x9cHappy Birthday to You\xe2\x80\x9d and\nthe opening to Beethoven\xe2\x80\x99s Fifth Symphony as musical examples. Each of these\n\n176\n\n\x0cfamous melodies from the nineteenth century begins with repeated notes. Therefore,\nthe use of repeated notes is not protectable.\nFootnote 6: Finell attempted to minimize the significance of the third note in \xe2\x80\x9cBlurred Lines\xe2\x80\x9d moving to a\nneighboring pitch rather than repeating. However, she previously testified that the neighboring pitch \xe2\x80\x94 a sharp\nsecond scale degree (indicated \xe2\x80\x9c#2\xe2\x80\x9d in her exhibit) \xe2\x80\x94 was a \xe2\x80\x9cbroken rule\xe2\x80\x9d that \xe2\x80\x9cstands out.\xe2\x80\x9d Thus, the most\nprominent note in the four-note sequence in \xe2\x80\x9cBlurred Lines\xe2\x80\x9d is the one that differs from the corresponding\nsequence in \xe2\x80\x9cGot to Give It Up.\xe2\x80\x9d\n\nb. Pitch Similarity\nAlthough the Signature Phrase starts on different pitches in each piece, Finell\nidentified three consecutive ascending pitches that were the same in both pieces, and\ntwo consecutive descending pitches that were the same. She believed this similarity\nto be the most important.\nIn assessing the similarity of two pieces of music, it\xe2\x80\x99s important to keep in mind \xe2\x80\x9cthe\nlimited number of notes and chords available to composers and the resulting fact\nthat common themes frequently reappear in various compositions, especially in\npopular music.\xe2\x80\x9d Gaste v. Kaiserman, 863 F.2d 1061, 1068 (2d Cir. 1988) (citing Arnstein\nv. Edward B. Marks Music Corp., 82 F.2d 275, 277 (2d Cir. 1936)). Substantial similarity\n\xe2\x80\x9cmust extend beyond themes that could have been derived from a common source\nor themes that are so trite as to be likely to reappear in many compositions.\xe2\x80\x9d Id. at\n1068-69 (citing Selle v. Gibb, 741 F.2d 896, 905 (7th Cir. 1984)).\nThree consecutive pitches is just the sort of common theme that will recur in many\ncompositions.7 We have not yet addressed whether three pitches are protectable as a\nmatter of law. While \xe2\x80\x9ca single musical note would be too small a unit to attract\ncopyright protection, an arrangement of a limited number of notes can garner\ncopyright protection.\xe2\x80\x9d Swirsky, 376 F.3d at 851. Thus, we held in Swirsky that a\nmelody of seven notes is not unprotectable as a matter of law. Id. at 852.\nFootnote 7: There are only 123 or 1,728 unique combinations of three notes, and many of them are unlikely to be\nused in a song. See Darrell v. Joe Morris Music Co., 113 F.2d 80, 80 (2d Cir. 1940) (per curiam) (\xe2\x80\x9c[W]hile there are an\nenormous number of possible permutations of the musical notes of the scale, only a few are pleasing; and much\nfewer still suit the infantile demands of the popular ear.\xe2\x80\x9d). Finell testified that it\xe2\x80\x99s \xe2\x80\x9cunusual\xe2\x80\x9d to use the five notes\nthat fall between the seven notes of the scale. Demand for unique three-note combinations would quickly\nexhaust their supply. In 2016 alone, the Copyright Office registered over 40,000 sound recordings. See United\nStates Copyright Office, Fiscal 2016 Annual Report 17.\n\nIn Newton II, we considered a three-note musical phrase that the defendants sampled\n(i.e., copied exactly) from the sound recording of a copyrighted musical composition\nand used repeatedly throughout their work. Although we did not decide whether this\nsix-second segment was original enough to be protected, we held that \xe2\x80\x9cno reasonable\njuror could find [it] to be a quantitatively or qualitatively significant portion of the\n[four-and-a-half-minute] composition as a whole.\xe2\x80\x9d Newton II, 388 F.3d at 1195. The\ndistrict court reached the originality issue. In a \xe2\x80\x9cscholarly opinion,\xe2\x80\x9d it ruled that the\nthree-note phrase \xe2\x80\x94 even in combination with the background musical elements \xe2\x80\x94\nwas insufficiently original to warrant copyright protection. Id. at 1190; see Newton I,\n204 F.Supp.2d at 1253 (\xe2\x80\x9cMany courts have found that nearly identical or more\nsubstantial samples are not susceptible to copyright protection.\xe2\x80\x9d).\nThe two- and three-note melodic snippets at issue here, taken in isolation from their\nharmonic context, are even less original than the three-note segment at issue in\n\n177\n\n\x0cNewton. When played, each snippet lasts less than a second in a composition that\nlasts over four minutes. They are not individually protectable.\nc. Rhythmic Similarity\nThe first measure of the Signature Phrase in both works begins with a rhythm of six\neighth notes. A bare rhythmic pattern, particularly one so short and common, isn\xe2\x80\x99t\nprotectable. See Batiste v. Najm, 28 F.Supp.3d 595, 616 (E.D. La. 2014) (\xe2\x80\x9c[C]ourts\nhave been consistent in finding rhythm to be unprotectable.\xe2\x80\x9d); N. Music Corp. v. King\nRecord Distrib. Co., 105 F.Supp. 393, 400 (S.D.N.Y. 1952) (\xe2\x80\x9c[O]riginality of rhythm is\na rarity, if not an impossibility.\xe2\x80\x9d); see also Berlin, 329 F.2d at 545 (\xe2\x80\x9c[W]e doubt that\neven so eminent a composer as plaintiff Irving Berlin should be permitted to claim a\nproperty interest in iambic pentameter.\xe2\x80\x9d). Here, the rhythmic pattern lasts\napproximately 1.5 seconds and consists of an eighth note repeated without any\nvariation. Similar patterns are found in numerous other works. This element, devoid\nof its melodic and harmonic context, lacks any originality.\nd. Melisma\nThe final syllable of the lyrics in each phrase spans multiple pitches \xe2\x80\x94 three in \xe2\x80\x9cGot\nto Give It Up\xe2\x80\x9d and two in \xe2\x80\x9cBlurred Lines.\xe2\x80\x9d Melisma, however, is \xe2\x80\x9ca common\nmusical technique\xe2\x80\x9d and, as such, unprotectable. McDonald v. West, 138 F.Supp.3d 448,\n458 (S.D.N.Y. 2015). Use of melisma on the final syllable of a lyrical phrase is\nparticularly \xe2\x80\x9cbasic and commonplace.\xe2\x80\x9d Id. (involving melisma on the final syllable of\n\xe2\x80\x9cWe made it in America\xe2\x80\x9d). For example, any time one sings \xe2\x80\x9cHappy Birthday\xe2\x80\x9d to a\nperson with a one-syllable name, the person\xe2\x80\x99s name is sung as a two-note melisma at\nthe end of the phrase \xe2\x80\x9cHappy Birthday, dear ____.\xe2\x80\x9d\ne. The Signature Phrases as a Whole Are Not Substantially Similar\nEven when each element is not individually protectable, \xe2\x80\x9c[t]he particular sequence in\nwhich an author strings a significant number of unprotectable elements can itself be\na protectable element,\xe2\x80\x9d Metcalf v. Bochco, 294 F.3d 1069, 1074 (9th Cir. 2002). Here, as\nFinell concedes, the Signature Phrase has \xe2\x80\x9cvery few notes,\xe2\x80\x9d lasting less than four\nseconds. Therefore, even assuming that the Signature Phrase as a whole is\nprotectable, its protection is thin.\nThere is very little similarity between the two songs\xe2\x80\x99 Signature Phrases. Both\nmelodies rise and fall. But they begin and end on different pitches. The highest,\nlongest, most stressed pitch in each phrase is different \xe2\x80\x94 in \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d this\npitch is consonant with the underlying harmony; in \xe2\x80\x9cGot to Give It Up,\xe2\x80\x9d it is\ndissonant. One phrase has 10 notes; the other, 12. The five identical pitches in each\nof the phrases have different rhythmic placement within the measure and therefore\nreceive different stress. And only two of these identical pitches have similar\nunderlying harmonies.8\n8: In \xe2\x80\x9cGot to Give It Up,\xe2\x80\x9d the entire Signature Phrase is harmonized to an A7 chord. In \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d the first\nmeasure is harmonized to an E chord while the second measure is harmonized to an A chord. Seventh chords,\nsuch as A7, have the same three pitches as their underlying triads \xe2\x80\x94 here, an A chord \xe2\x80\x94 plus an additional pitch.\nSee Copland, supra, at 66-67, 105 S.Ct. 471. Finell explained that the unique pitch in a seventh chord \xe2\x80\x9cadd[s] an\nextra color\xe2\x80\x9d to the harmony.\n\nThe harmony changes halfway through the Signature Phrase in \xe2\x80\x9cBlurred Lines\xe2\x80\x9d but\nremains the same in \xe2\x80\x9cGot to Give It Up.\xe2\x80\x9d The lyrics in each phrase are different.\n178\n\n\x0cThe Signature Phrase occurs in different places within each piece. In \xe2\x80\x9cGot to Give It\nUp,\xe2\x80\x9d the Signature Phrase is the very first phrase sung. In \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d the\nSignature Phrase is not sung until 28 seconds later \xe2\x80\x94 after several lines of verse.\nThe various unprotected elements identified by Finell don\xe2\x80\x99t even coincide with one\nanother in that short, four-second snippet. And her narrow focus on these elements\nignored the different harmonies in each phrase. \xe2\x80\x9cTo pull these elements out of a\nsong individually, without also looking at them in combination, is to perform an\nincomplete and distorted musicological analysis.\xe2\x80\x9d Swirsky, 376 F.3d at 848.9\nFootnote 9: The majority fundamentally misunderstands Swirsky on this point. Swirsky did not hold that two\nworks sharing multiple unprotected elements in disparate places are extrinsically similar. Were that the case, the\nentire Western canon would be extrinsically similar, since all of this music contains the same twelve individually\nunprotected notes. The difference between Swirsky and this case is that in Swirsky, there was a coincidence of the\nunprotected elements (chord progressions, rhythm, and pitch sequence) within each song that occurred at the\nsame relative place (the chorus) in both. See Swirsky, 376 F.3d at 848. Here, Finell examined the various elements\nin isolation, which is precisely what we criticized in Swirsky. See 376 F.3d at 848 (\xe2\x80\x9c[N]o approach can completely\ndivorce pitch sequence and rhythm from harmonic chord progression, tempo, and key....\xe2\x80\x9d).\n\nGiven the lack of similarities between the Signature Phrases, there is no basis to\nconclude that they are substantially similar. \xe2\x80\x9cThe most that can be said is that the\ntwo segments bear some relation to one another within a finite world of melodies.\nGiven the limited musical vocabulary available to composers, this is far from enough\nto support an inference of [infringement].\xe2\x80\x9d Johnson v. Gordon, 409 F.3d 12, 22 (1st Cir.\n2005).\n2. The \xe2\x80\x9cHook\xe2\x80\x9d Phrase\nFinell describes the Hook Phrase as the four melodic pitches in \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d\nsung to the lyrics \xe2\x80\x9ckeep on dancin\xe2\x80\x99.\xe2\x80\x9d She opined that \xe2\x80\x9cBlurred Lines\xe2\x80\x9d has similar\nHook Phrases in two different places: one is the four pitches in the Signature Phrase\nsung to the lyrics \xe2\x80\x9ctake a good girl\xe2\x80\x9d; the other is the five pitches sung to the lyrics \xe2\x80\x9cI\nhate these blurred lines.\xe2\x80\x9d\nThere are basic conceptual problems with Finell\xe2\x80\x99s analysis. She describes the same\nfour pitches in \xe2\x80\x9cBlurred Lines\xe2\x80\x9d as being similar to two unrelated phrases in \xe2\x80\x9cGot to\nGive It Up\xe2\x80\x9d \xe2\x80\x94 the Signature Phrase and the Hook Phrase. It is difficult to see how\nanything original in each of these two different phrases could be distilled into the\nsame four-note phrase in \xe2\x80\x9cBlurred Lines.\xe2\x80\x9d\nIn any event, the Hook Phrase in the deposit copy lacks sufficient originality to be\nprotected. Its sequence of four pitches, lasting 2.5 seconds, is common. For example,\nBeyonc\xc3\xa9, Jennifer Hudson, and Anika Noni Rose memorably sang it to the lyrics,\n\xe2\x80\x9cWe\xe2\x80\x99re your dreamgirls.\xe2\x80\x9d See Henry Krieger & Tom Eyen, Dreamgirls measures 2526 (Universal \xe2\x80\x94 Geffin Music 1981).\nEven if the Hook Phrase pitches were protectable, there is no substantial similarity\nbetween its expression in the two songs. See Arnstein v. Edward B. Marks Music Corp.,\n82 F.2d 275, 277 (2d Cir. 1936) (Hand, J.) (\xe2\x80\x9cThe first phrase of the infringing chorus\nconsists of the same four notes as the first phrase of the copyrighted song; that\nparticular sequence can be found in several earlier musical pieces and its spontaneous\nreproduction should be no cause for suspicion.\xe2\x80\x9d).\nAt most, three of the four pitches are the same, and the different pitch is sung to\nwhat Finell described as the \xe2\x80\x9cmoney words\xe2\x80\x9d on \xe2\x80\x9cthe strongest beat.\xe2\x80\x9d The phrase\xe2\x80\x99s\n179\n\n\x0crhythms and underlying harmonies are different. Moreover, the phrases are sung at\ndifferent places in each song. In \xe2\x80\x9cGot to Give It Up,\xe2\x80\x9d the Hook Phrase is sung at the\nend of part 1 in a fade out. In \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d it is sung as the chorus in the middle\nof the song.\n3. Theme \xe2\x80\x9cX\xe2\x80\x9d\nTheme X refers to another four-note melodic sequence. In the deposit copy, Theme\nX is sung to the lyrics \xe2\x80\x9cFancy lady.\xe2\x80\x9d In \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d it is first sung to the lyrics\n\xe2\x80\x9cIf you can\xe2\x80\x99t hear.\xe2\x80\x9d Like the Hook Phrase, Theme X is both unprotectable and\nobjectively dissimilar in the two songs.\nThe pitches and rhythm of Theme X in the deposit copy are identical to those sung\nto \xe2\x80\x9cHappy Birthday\xe2\x80\x9d and numerous other songs. None of the Theme X pitches in\nthe deposit copy are the same as in \xe2\x80\x9cBlurred Lines.\xe2\x80\x9d To see any correspondence\nbetween the two four-note sequences, one would have to shift and invert the pitches,\na feat of musical gymnastics well beyond the skill of most listeners. Where short and\ndistinct musical phrases require such contortions just to show that they are musically\nrelated, there is no basis to find them substantially similar. See Johnson, 409 F.3d at\n22; see also Arnstein, 82 F.2d at 277.\nThe harmonies accompanying Theme X also differ between \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d\nand \xe2\x80\x9cBlurred Lines.\xe2\x80\x9d Structurally, Theme X appears in completely different places in\nthe two songs. In the deposit copy, it repeats several times in succession near the end\nof the piece. In \xe2\x80\x9cBlurred Lines,\xe2\x80\x9d it is the very first line of verse near the beginning of\nthe song and repeats periodically throughout the song.\nB. Other Alleged Similarities\n1. Keyboard Parts\nFinell testified that the keyboard parts in \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d (meaning the chords\nand their rhythms played over the bass line) had \xe2\x80\x9cmany important similarities\xe2\x80\x9d to\nthose in \xe2\x80\x9cBlurred Lines.\xe2\x80\x9d However, there are no keyboard parts in the deposit copy.\nFinell explained that a lead sheet is essentially \xe2\x80\x9cmusical shorthand for musicians,\xe2\x80\x9d\nwho \xe2\x80\x9cwould understand how [the keyboard parts are] to be played.\xe2\x80\x9d But because \xe2\x80\x9c[a]\nsound is protected by copyright law only when it is \xe2\x80\x98fixed in a tangible\nmedium,\xe2\x80\x99\xe2\x80\x9c Newton II, 388 F.3d at 1194 (quoting 17 U.S.C. \xc2\xa7 102(a)), the deposit\ncopy\xe2\x80\x99s unwritten keyboard parts are not protected expression.\nTo the extent the chord indications sufficiently express the keyboard parts, there is\nno substantial similarity between the two works. \xe2\x80\x9cBlurred Lines\xe2\x80\x9d contains only two\nchords throughout the entire piece \xe2\x80\x94 an A chord and an E chord \xe2\x80\x94 that alternate\nevery four measures. The deposit copy contains neither of these chords. The chords\nit does contain \xe2\x80\x94 A7, D7, E7, B7, Dm7, and Am7 \xe2\x80\x94 change in a much more\nirregular pattern. For example, the first 16 measures have a sustained A7 harmony,\nand the next 8 measures change harmonies every measure.\n2. Bass Line\nFinell opined that the bass melodies in \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d and \xe2\x80\x9cBlurred Lines\xe2\x80\x9d are\nsimilar. However, when comparing them, she showed the jury the version of the\n\xe2\x80\x9cGot to Give It Up\xe2\x80\x9d bass line that she had transcribed from the sound recording.\n180\n\n\x0cBecause several notes were different in the deposit copy, her testimony on this issue\nwas of questionable value. See Newton II, 388 F.3d at 1196. It\xe2\x80\x99s also doubtful that the\nunexpressed portions of the baseline beyond the first eight measures of the deposit\ncopy are sufficiently fixed in a tangible medium to warrant protection.\nEven assuming the implied bass line in the deposit copy is sufficiently fixed, it\xe2\x80\x99s the\ntype of expression that is so standard in the genre that it merges with the idea and is\ntherefore unprotectable in and of itself. Cf. Shapiro, Bernstein & Co. v. Miracle Record\nCo., 91 F.Supp. 473, 474 (N.D. Ill. 1950) (concluding that bass line was not\ncopyrightable where it was \xe2\x80\x9cmechanical application of a simple harmonious chord\xe2\x80\x9d).\nAny thin protection that might lie in the \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d bass line would not\nsupport a finding of substantial similarity between these two bass lines given their\ndifferent notes, harmonies, and rhythms.\nThe only similarity between the bass lines is that they repeat the note A in most of\nthe measures. However, in \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d the note is syncopated so that it\nsounds before the downbeat in the second, third, and fourth measures, whereas in\n\xe2\x80\x9cBlurred Lines\xe2\x80\x9d the note is played on the downbeat. Moreover, the note A is the\nroot of the chord in each song (A7 in \xe2\x80\x9cGot to Give It Up,\xe2\x80\x9d A in \xe2\x80\x9cBlurred Lines\xe2\x80\x9d).\nAs the expert for Williams and Thicke testified without contradiction, it is\ncommonplace for the root of a chord to appear in a bass line because it establishes\nthe chord.\n3. Word Painting, Parlando, and Lyrics\nWord painting and parlando are common devices.11 As Finell acknowledged, word\npainting has \xe2\x80\x9cbeen used for many centuries,\xe2\x80\x9d and parlando has been employed for\n\xe2\x80\x9cmany years before ... rap was used as an art form.\xe2\x80\x9d The deposit copy\xe2\x80\x99s use of these\ntechniques in the abstract is not protectable expression, and there is no evidence that\nthe specific applications of these techniques in the two pieces are similar. To say\nthese two songs are substantially similar because they employ devices common to\nsongwriting would be like saying two songs are substantially similar because they\nboth have guitar solos in the middle even though the solos themselves bear no\nresemblance. Similarly, lyrical themes about liberation and sexual activity are not\nprotectable in the abstract.\n11: Word painting is a compositional technique in which the music can be used to illustrate the words in the lyrics,\nsuch as setting the word \xe2\x80\x9chigher\xe2\x80\x9d to an ascending melody. Parlando is spoken word or rap in the middle of a\nsong.\n\nC. Overall Lack of Similarity\nEven considering all of these individually unprotectable elements together, see\nMetcalf, 294 F.3d at 1074, there is no evidentiary basis to conclude that the two works\nare substantially similar. See Guzman v. Hacienda Records & Recording Studio, Inc., 808\nF.3d 1031, 1040 (5th Cir. 2015) (finding no similarity where \xe2\x80\x9cthe alleged\ncompositional similarities running between the songs in their entirety, i.e., their\nmelodies, rhythmic patterns, lyrical themes, and instrumental accompaniment, were\neither common to the ... genre or common in other songs\xe2\x80\x9d).\nThe two pieces have different structures. Finell acknowledged that \xe2\x80\x9cGot to Give It\nUp\xe2\x80\x9d lacks a chorus whereas \xe2\x80\x9cBlurred Lines\xe2\x80\x9d has a \xe2\x80\x9cpretty common structure for a\n\n181\n\n\x0cpopular song\xe2\x80\x9d in that it consists of a verse, pre-chorus, and chorus. The two songs\xe2\x80\x99\nharmonies share no chords.\nThe discrete elements identified by Finell don\xe2\x80\x99t occur at the same time within the\nmusical theme or phrase in each piece. And with the exception of parlando, the\nvarious themes and phrases she identified don\xe2\x80\x99t occur in corresponding places in\neach piece. Thus, whether considered micro- or macroscopically, \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d\nand \xe2\x80\x9cBlurred Lines\xe2\x80\x9d are objectively dissimilar. Williams and Thicke are entitled to\njudgment as a matter of law.\nIV.\nThe majority insists that the verdict is supported by the evidence but tellingly refuses\nto explain what that evidence is. Instead, it defends its decision by arguing that a\ncontrary result is impossible due to Williams and Thicke\xe2\x80\x99s purported procedural\nmissteps [the Thicke Parties, failed to make a Rule 50(a) motion for judgment as a\nmatter of law at trial].\nI agree that we normally are not at liberty to review the district court\xe2\x80\x99s denial of\nsummary judgment after a full trial on the merits. See Ortiz v. Jordan, 562 U.S. 180\n(2011). This rule makes eminent sense. Once a trial has concluded, any issues relating\nto the merits of the parties\xe2\x80\x99 dispute \xe2\x80\x9cshould be determined by the trial record, not\nthe pleadings nor the summary judgment record.\xe2\x80\x9d Id. at 184). However, there is little\ndifference between reviewing a summary judgment ruling and a jury verdict other\nthan the source of the factual record, and here there are no material factual disputes.\nA completed trial does not prevent us from reviewing the denial of summary\njudgment \xe2\x80\x9cwhere the district court made an error of law that, if not made, would\nhave required the district court to grant the motion.\xe2\x80\x9d Escriba v. Foster Poultry Farms,\nInc., 743 F.3d 1236, 1243 (9th Cir. 2014).\nThe majority conveniently ducks any review of the evidence by mischaracterizing the\nfacts as \xe2\x80\x9chotly disputed,\xe2\x80\x9d and accusing me of \xe2\x80\x9cact[ing] as judge, jury, and\nexecutioner,\xe2\x80\x9d by \xe2\x80\x9cweigh[ing] the experts\xe2\x80\x99 credibility, resolv[ing] factual conflicts, and\nset[ting] forth [my] own findings on the extrinsic test\xe2\x80\x9d. But my \xe2\x80\x9cmusicological\nexegesis,\xe2\x80\x9d concerns evidence of extrinsic similarity that Finell presented at trial. No\none disputes that the two works share certain melodic snippets and other\ncompositional elements that Finell identified. The only dispute regarding these\nsimilarities is their legal import \xe2\x80\x94 are the elements protectable, and are the\nsimilarities substantial enough to support liability for infringement? See Mattel, 616\nF.3d at 914 (\xe2\x80\x9cWe review de novo the district court\xe2\x80\x99s determination as to the scope of\ncopyright protection.\xe2\x80\x9d (citing Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th\nCir. 2000))); Benay, 607 F.3d at 624 (\xe2\x80\x9cSubstantial similarity is a fact-specific inquiry,\nbut it \xe2\x80\x98\xe2\x80\x9dmay often be decided as a matter of law.\xe2\x80\x9d\xe2\x80\x99\xe2\x80\x9c (quoting Funky Films, Inc. v. Time\nWarner Entm\xe2\x80\x99t Co., 462 F.3d 1072, 1076 (9th Cir. 2006))).\nBy characterizing these questions as a factual dispute among experts, the majority\nlays bare its misconception about the purpose of expert testimony in music\ninfringement cases. As with any expert witness, a musicologist can\xe2\x80\x99t opine on legal\nconclusions, including the ultimate question here \xe2\x80\x94 substantial similarity. Her role is\nto identify similarities between the two works, describe their nature, and explain\nwhether they are \xe2\x80\x9cquantitatively or qualitatively significant in relation to the\n182\n\n\x0ccomposition as a whole,\xe2\x80\x9d Newton II, 388 F.3d at 1196. The value of such testimony is\nto assist jurors who are unfamiliar with musical notation in comparing two pieces of\nsheet music for extrinsic similarity in the same way that they would compare two\ntextual works.\nThis result would never stand in copyright cases involving works in other media. We\nfrequently conclude as a matter of law that two works of language or visual art fail\nthe extrinsic test for substantial similarity. [Cites cases relating to screenplays,\nphotography, television shows, drawings, advertising (image and phrase), screenplays,\nfilms, novels, video games, and dolls].13 This case should be no different.\nFootnote 13: In faulting my citation of unpublished cases, the majority misses the point. That we choose not to\npublish many of our numerous cases deciding substantial similarity as a matter of law shows only how\nuncontroversial these decisions are when they concern non-musical works.\n\nV.\nThe Gayes, no doubt, are pleased by this outcome. They shouldn\xe2\x80\x99t be. They own\ncopyrights in many musical works, each of which (including \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d)\nnow potentially infringes the copyright of any famous song that preceded it.\nThat is the consequence of the majority\xe2\x80\x99s uncritical deference to music experts.\nAdmittedly, it can be very challenging for judges untrained in music to parse two\npieces of sheet music for extrinsic similarity. But however difficult this exercise, we\ncannot simply defer to the conclusions of experts about the ultimate finding of\nsubstantial similarity.15 While experts are invaluable in identifying and explaining\nelements that appear in both works, judges must still decide whether, as a matter of\nlaw, these elements collectively support a finding of substantial similarity. Here, they\ndon\xe2\x80\x99t, and the verdict should be vacated.\nFootnote 15: Federal Rule of Evidence 706, which allows courts to appoint their own experts, may be useful in\nsituations where the court has little musical expertise and the parties\xe2\x80\x99 experts deliver starkly different assessments\nof two works\xe2\x80\x99 similarity.\n\nI respectfully dissent.\nNotes and questions\n(1) The trial court in Williams v. Gaye applied the Ninth Circuit\xe2\x80\x99s extrinsic/intrinsic approach\nto substantial similarity to determining whether the standard for infringement had been met.\nThe two-stage extrinsic/intrinsic test was initially developed in Sid & Marty Krofft Television\nProductions, Inc. v. McDonald\xe2\x80\x99s Corp., 562 F.2d 1157 (9th Cir. 1977). In explaining the\nextrinsic/intrinsic approach to substantial similarity the majority in Williams v. Gaye states:\nThe extrinsic test is objective. It considers whether two works share a similarity of\nideas and expression as measured by external, objective criteria. Application of the\nextrinsic test requires analytical dissection of a work and expert testimony. An\nanalytical dissection, in turn, requires breaking the works down into their constituent\nelements, and comparing those elements for proof of copying as measured by\n\xe2\x80\x9csubstantial similarity.\xe2\x80\x9d\nThe intrinsic test, on the other hand, is subjective. It asks whether the ordinary,\nreasonable person would find the total concept and feel of the works to be\nsubstantially similar.\n\n183\n\n\x0cAs Pamela Samuelson notes in A Fresh Look at Nonliteral Copyright Infringement, 107\nNorthwestern University Law Review 1821 (2013), the \xe2\x80\x9cextrinsic\xe2\x80\x9d and \xe2\x80\x9cintrinsic\xe2\x80\x9d\nterminology used by the Ninth Circuit \xe2\x80\x9cis inapt and confusing.\xe2\x80\x9d Samuelson continues (at\n1821):\nAs an adjective, \xe2\x80\x9cextrinsic\xe2\x80\x9d means that the thing so described is inessential, not an\ninherent characteristic of the thing\xe2\x80\x99s true nature, or has come from the outside;\nforeign, extraneous, and alien are its synonyms. Characteristics such as colors,\nshapes, and sizes, which Krofft\xe2\x80\x99s first step considers, are, however, inherent\ncharacteristics, not outside or foreign elements. So \xe2\x80\x9cextrinsic\xe2\x80\x9d is an inapt word to\nuse as the name of that first step. \xe2\x80\x9cIntrinsic\xe2\x80\x9d is no more helpful, although perhaps\nless misleading, as a descriptor of the second step. Later cases have suggested that\nthe two steps might be \xe2\x80\x9cmore sensibly described as objective and subjective analyses\nof expression.\xe2\x80\x9d Unfortunately, the Ninth Circuit has nonetheless persisted in the\nextrinsic/intrinsic terminology.\n\n(2) The extrinsic/intrinsic approach breaks the substantial similarity inquiry down into an\nobjective analytical assessment of the works (so-called extrinsic) and a subjective one that focuses\non the gestalt reaction of the ordinary observer (so-called intrinsic). Even once we get past\nthe confusing terminology of extrinsic/intrinsic, how clear is the objective/subjective\ndistinction, really? Immediately after explaining that the intrinsic test is subjective and\nfocuses on the reaction of the ordinary reasonable person, the majority in Williams v. Gaye\nsays:\nBecause the requirement is one of substantial similarity to protected elements of the\ncopyrighted work, it is essential to distinguish between the protected and\nunprotected material in a plaintiff\xe2\x80\x99s work. Still, substantial similarity can be found in\na combination of elements, even if those elements are individually unprotected.\n\nIn these two sentences, the court offers counterbalancing dissection and anti-dissection rules\nto guide the fact-finder\xe2\x80\x99s subjective assessment. The first sentence concedes that the gestalt\nreaction of the ordinary observer can\xe2\x80\x99t be too gestalty, even in the subjective intrinsic analysis,\nthe finder of fact must \xe2\x80\x9cdistinguish between the protected and unprotected material in a\nplaintiff\xe2\x80\x99s work.\xe2\x80\x9d But the court also warns that even though the fact-finder needs to\ndistinguish between protected and unprotected material, \xe2\x80\x9csubstantial similarity can be found\nin a combination of elements, even if those elements are individually unprotected.\xe2\x80\x9d\n(3) In Williams v. Gaye, 885 F. 3d 1150 (9th Cir. 2018), the majority of the Ninth Circuit\nupheld a jury verdict that the song \xe2\x80\x9cBlurred Lines\xe2\x80\x9d by Pharrell Williams, Robin Thicke, and\nClifford Harris, Jr. infringed copyright in Marvin Gaye\xe2\x80\x99s 1977 hit song \xe2\x80\x9cGot To Give It Up.\xe2\x80\x9d\nThe majority held the district court\xe2\x80\x99s order denying the Thicke parties\xe2\x80\x99 motion for summary\njudgment was not reviewable under the circumstances; that the instructions given to the jury\nwere not erroneous; the district court did not abuse its discretion with respect to admitting\nexpert testimony; and the jury\xe2\x80\x99s verdict was against the clear weight of the evidence. Judge\nNguyen dissented on the basis that the similarities between the two works were insufficient\nto support a finding of substantial similarity as a matter of law. Judge Nguyen dismissed the\nGaye parties\xe2\x80\x99 expert evidence as \xe2\x80\x9cequivalent of finding substantial similarity between two\npointillist paintings because both have a few flecks of similarly colored paint.\xe2\x80\x9d The dissent\nwould have held that \xe2\x80\x9ccomparison of the deposit copy of \xe2\x80\x9cGot to Give it Up\xe2\x80\x9d and \xe2\x80\x9cBlurred\nLines\xe2\x80\x9d under the extrinsic test leads to only one conclusion. Williams and Thicke were\nentitled to judgment as a matter of law.\xe2\x80\x9d\n\n184\n\n\x0cDo the majority and the dissent disagree primarily about the law or about the facts?\n\nThe confusing role of similarity in copyright infringement\nProbative similarity versus substantial similarity\nAs noted above, to establish a violation of the reproduction right the plaintiff must show\nboth that the defendant did actually copy the work and that the defendant copied too much.\nThe first issue is copying in fact (or causal connection) and the second is wrongful copying (or improper\nappropriation or some other closely related synonym). This sounds simple and logical, but\ncourts frequently manage to blur the distinction these two issues.\nOne of the many confusing things about the Blurred Lines decision [extracted above] and the\nNinth Circuit\xe2\x80\x99s extrinsic/intrinsic approach in general is that it is not even clear whether:\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\nthe two-part extrinsic/intrinsic test is just a relabeling of the Second Circuit\xe2\x80\x99s two-part\ncopying in fact/wrongful copying analysis, or\nthe extrinsic/intrinsic analysis takes place entirely within the element of wrongful copying\nassuming that copying in fact has already been established, or\nthe extrinsic/intrinsic analysis applies to both copying in fact and wrongful copying.\n\nOne reason why courts get confused between copying in fact and wrongful copying is that a\nfactual determination of similarity can play some role in both issues in many cases.\nSimilarities between A and B may be evidence that there was copying in fact because all\nother things being equal, the closer A is to B, the greater the chances that A was copied\nfrom B. But a certain threshold of similarity is also required to show that if there was\ncopying, it was wrongful.\nConfusion about the test for copyright\nFigure 4 The\ndual role of similarity\ninfringement\n\nCopying"in"fact""\nSimilarity"\nWrongful"copying""\n8"\n\nCourts sometimes lose sight of the distinction between copying in fact and wrongful copying\nand apply a singular threshold of substantial similarity to determine both.\nIn fact, courts regularly lump the entire inquiry, copying in fact and wrongful copying under the\nsingle term \xe2\x80\x9csubstantial similarity.\xe2\x80\x9d51 This not only makes it confusing to read the cases, but\nit also leads courts themselves to conflate the two distinct elements.\nSee, e.g., Murray Hill Publ\xe2\x80\x99ns v. Twentieth Century Fox Film Corp., 361 F.3d 312, 316-21 (6th Cir. 2004);\nWilliams v. Crichton, 84 F.3d 581 (2d Cir. 1996).\n51\n\n185\n\n\x0cTake for example the 2005 decision in Incredible Technologies v. Virtual Technologies, 400 F. 3d\n1007 (7th Cir. 2005), where the court summarized its approach to determining copyright\ninfringement in three sentences:\nTo establish copyright infringement, a plaintiff must prove (1) ownership of a valid\ncopyright, and (2) copying of constituent elements of the work that are original.52\nCopying may be inferred where the defendant had access to the copyrighted work\nand the accused work is substantially similar to the copyrighted work.\n\nThe court\xe2\x80\x99s second sentence addresses copying in fact, noting specifically that copying in fact\ncan be logically inferred from a combination of access and similarity. The Seventh Circuit, at\nleast in this case, does not clearly distinguish between the similarities that support the\ninference of copying and those similarities that establish copying to an unlawful extent.53 The\ndanger in using the same term in relation to copying in fact and wrongful copying becomes\napparent when we consider the court\xe2\x80\x99s final sentence.\nThe test for substantial similarity may itself be expressed in two parts: whether the\ndefendant copied from the plaintiff\xe2\x80\x99s work and whether the copying, if proven, went\nso far as to constitute an improper appropriation.\n\nAccess + Substan-al similarity = Copying\nSubstan-al similarity = Copying + Improper Appropria-on\n\nThis does not make much sense. If copying may be inferred from a combination of access\nand substantial similarity, how can copying also be constitutive of substantial similarity? By\nemploying the term \xe2\x80\x98substantial similarity\xe2\x80\x99 in the context of copying in fact and wrongful\ncopying, the court has managed to suggest that substantial similarity both proves and is\nproved by copying in fact. Taken at face value the court is also saying that substantial\nsimilarity that amounts to improper appropriation also proves copying in fact. This may be\ntrue as a matter of evidence, or it might not be. It depends, among other things, on whether\nthere are other good explanations for the fact that two works share features in common.\nThere is no simple relationship between probative and substantial similarity\nThe following examples will demonstrate that there is no simple relationship between the\nlevel of similarity that supports an inference of copying in fact that which sustains a\nconclusion of wrongful copying. The two kinds of similarity are different and they deserve\ndifferent names: the most logical nomenclature differentiates between probative similarity that\nThe first sentence here is appropriated from the Supreme Court\xe2\x80\x99s decision in Feist, a case where the fact of\ncopying was clearly established and the only controversy was whether names and addresses and their\norganization within a telephone directory were protectable by copyright. The two-step, valid copyright plus\ncopying of original elements test, made some sense in that context, but it is deficient as a general statement.\nThe expression \xe2\x80\x9ccopying of constituent elements of the work that are original\xe2\x80\x9d hints at a distinction between\ncopying in fact and wrongful copying, but it is hardly a clear statement.\n52\n\nCompare to the Second Circuit which requires proof of improper appropriation and actual copying as\ndistinct elements. See e.g. Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir.2003); Laureyssens,964\nF.2d at 140.\n53\n\n186\n\n\x0csupports an inference of copying in fact and substantial similarity which addresses wrongful\ncopying.\nExample 1:\nConsider two photos with more than a passing similarity as depicted below.54 Photographs A\nand B are similar in subject, composition, lighting, and almost any other dimension one cares\nto think about. The only real difference between them appears to be in the photographer\xe2\x80\x99s\nchoice of color filters and the level of contrast, both of which could be changed in postproduction.\nFigure 5: Photographs A and B\n\nSuppose that Photo \xe2\x80\x98A\xe2\x80\x99 was taken in 2006 and made available on the photographer\xe2\x80\x99s website.\nIn 2009, photo \xe2\x80\x98B\xe2\x80\x99 is entered in a newspaper photography competition and now the author\nof A alleges that B infringed her copyright. There is no doubt that if B had been copied from\nA and simply modified in some subtle way, B would be an infringing copy of A. But as it\nturns out two women standing beside one another on a cruise to the San Rafael Glacier in\nthe Northern Patagonian Ice Field took both photos independently at almost the exact same\ntime. Here we have similarity that is enough to reach a threshold of wrongful copying, but\nnot enough to prove copying in fact.\nGiven the subject matter, the possibility that both photos were taken at the same place and\ntime seems only too apparent.55\nExample 2\nBut it is easy to imagine the opposite. Suppose A is well known and widely appreciated work\nof literature. Author B, takes the essential story of A, changes the setting in both time and\nOliver Smith, February 2, 2015, THE TELEGRAPH, \xe2\x80\x9cHow an incredible coincidence sparked a Facebook plagiarism row\xe2\x80\x9d\nhttp://www.telegraph.co.uk/travel/travelnews/11379383/How-an-incredible-coincidence-sparked-aFacebook-plagiarism-row.html. Photo A was taken by Sarah Scurr, a British student living in Santiago, Chile.\nPhoto B was taken by Marisol Ortiz Elfeldt, a Chilean reporter and amateur photographer.\n54\n\nSee, e.g., Ty Inc. v. GMA Accessories, Inc., 132 F.3d 1167, 1170 (7th Cir. 1997). \xe2\x80\x9c[T]wo works may be\nstrikingly similar\xe2\x80\x94may in fact be identical\xe2\x80\x94not because one is copied from the other but because both are\ncopies of the same thing in the public domain. In such a case\xe2\x80\x94imagine two people photographing Niagara\nFalls from the same place at the same time of the day and year and in identical weather\xe2\x80\x94there is no inference\nof access to anything but the public domain, and, equally, no inference of copying from a copyrighted work.\xe2\x80\x9d\n55\n\n187\n\n\x0cculture, adopts a different narrative style and perspective to obtain a different point of view\nbut retains the same essential conflict. To put a little more distance between the works, B\nchanges names and combines characters. B also extends the timeline of the original story, so\nthat her account captures events she imagines might have taken place before and after the\nsequence of events in A. From this process of deliberate mutation, B may produce a work\nthat is thoroughly original but still discernably influenced by A. Here we have a causal\nconnection between the works and we have similarity that is sufficient to establish copying\nin fact, but this is still insufficient to establish wrongful copying.\n***\nIn application, the similarities that establish wrongful copying are often the same as those\nthat tend to prove that there was copying in the first place, but the kinds of similarity are\nfundamentally different. Substantial similarity and probative similarity intersect, but they are\nnot the same, nor is one necessarily a subset of the other.\nProbative similarity is any similarity at all between the works that makes it more likely that\nthe accused work was copied from the plaintiff\xe2\x80\x99s original work. Similarities in subject matter,\ngenre, perspective, general idea, and concept are unlikely to meet this test and they should\nalso be filtered out from any assessment of substantial similarity for reasons to be explained\nshortly. However, probative similarity can be established by identical features that are\ninconsequential and unlikely to be noted by the ordinary observer but for which copying\nseems the more likely explanation than sheer coincidence. For example, the fact that two\nworks contain identical deliberate mistakes is great evidence of copying in fact, but it will\nusually mean nothing in terms of wrongful copying. If two maps feature the same\nnonexistent town, it stands to reason that either one was copied from the other or both were\ncopied from the same source. The duplication of a single errant entry would not cross the\nthreshold of improper appropriation, but it can be strong evidence of copying in fact.\nNonetheless, there is also a significant overlap between probative similarity and substantial\nsimilarity\xe2\x80\x94if two works are sufficiently similar in terms of protectable expression that the\nordinary observer would regard them as the same in their aesthetic appeal, that one\nconclusion may establish that one was indeed copied from the other and that such copying\nwent too far.\nThe Inverse Ratio Rule\xe2\x80\x94\xe2\x80\x9chow is this still a thing?\xe2\x80\x9d\nThe \xe2\x80\x9cinverse ratio\xe2\x80\x9d rule is obviously daft. Access and probative similarity are related in the\nsense that if it is hard to see how the defendant could have copied the plaintiff\xe2\x80\x99s work, it will\nusually take a very high level of similarity to convince a reasonable person that it was copied.\nMost courts refer to this as \xe2\x80\x9cstriking similarity\xe2\x80\x9d. But the reciprocal proposition that if access\nis well proved some diluted level of similarity can establish either copying in fact or wrongful\ncopying does not hold true in the slightest. The \xe2\x80\x9cinverse ratio\xe2\x80\x9d rule is especially dangerous\nand nonsensical in an era when almost all published content is easily accessible via the\nInternet.\nGaye v. Williams illustrates an even graver problem with the \xe2\x80\x9cinverse ratio\xe2\x80\x9d rule. As dissenting\nJudge Nguyen noted:\nWorse still, the majority invokes the oft-criticized \xe2\x80\x9cinverse ratio\xe2\x80\x9d rule to suggest that\nthe Gayes faced a fairly low bar in showing substantial similarity just because\nWilliams and Thicke conceded access to \xe2\x80\x9cGot to Give It Up.\xe2\x80\x9d The issue, however,\n\n188\n\n\x0cisn\xe2\x80\x99t whether Williams and Thicke copied \xe2\x80\x9cGot to Give It Up\xe2\x80\x9d \xe2\x80\x94 there\xe2\x80\x99s plenty of\nevidence they were attempting to evoke Marvin Gaye\xe2\x80\x99s style. Rather, the issue is\nwhether they took too much.\n\nTo apply the \xe2\x80\x9cinverse ratio\xe2\x80\x9d rule to reduce the plaintiff\xe2\x80\x99s burden to establish substantial\nsimilarity in terms of wrongful copying is totally wrongheaded.\nAs the Seventh Circuit explained in Peters v. West, 692 F.3d 629, 635 (7th Cir. 2012):\nOnce a plaintiff establishes that a defendant could have copied her work, she must\nseparately prove\xe2\x80\x94regardless of how good or restricted the opportunity was\xe2\x80\x94that\nthe allegedly infringing work is indeed a copy of her original.\n\nThe ordinary observer test(s)\nAs noted above, probative similarity is anything at all about two works that makes it more\nlikely that one was copied from the other. Probative similarity includes, in some\ncircumstances, that the ordinary observer would regard the works as the same in their\naesthetic appeal. However, although meeting the ordinary observer standard can be part of\nestablishing copying in fact, it is neither necessary nor sufficient for that purpose. In contrast,\nsome reference to the assessment of some kind of observer is indispensable in establishing\nsubstantial similarity required for wrongful copying. The default characteristic of this\nobserver is that they are the \xe2\x80\x9cordinary observer.\xe2\x80\x9d\nCourts have expressly invoked the \xe2\x80\x9cordinary observer\xe2\x80\x9d since at least the 1930s and possibly\nbefore. In Harold Lloyd Corp. v. Witwer, 65 F.2d 1 (9th Cir. 1933), for example, the Ninth\nCircuit emphasized that the substantial similarity determination is to be made from the\nvantage point of an \xe2\x80\x9cordinary observer\xe2\x80\x9d (at 19):\nA copy is that which ordinary observation would cause to be recognized as having been\ntaken from or the reproduction of another.\n\nIn Peter Pan Fabrics v. Martin Weiner, 274 F. 2d 487 (2d Cir. 1960), a case relating to the\ninfringement of copyright in a fabric design, Judge Learned Hand famously phrased the\nordinary observer test thus (at 489):\n[T]he patterns in which these figures are distributed to make up the design as a\nwhole are not identical. However, the ordinary observer, unless he set out to detect\nthe disparities, would be disposed to overlook them, and regard their aesthetic\nappeal as the same. That is enough \xe2\x80\xa6\n\nIn Atari, Inc. v. North American, Etc., 672 F. 2d 607 (7th Cir. 1982), the Seventh Circuit put the\nordinary observer test in these terms (at 614):\nSpecifically, the test is whether the accused work is so similar to the plaintiff\xe2\x80\x99s work\nthat an ordinary reasonable person would conclude that the defendant unlawfully\nappropriated the plaintiff\xe2\x80\x99s protectible expression by taking material of substance\nand value.\n\nAre these tests the same?\nProblems with the ordinary observer test\n(1) The ordinary observer test is applied by conducting a side-by-side comparison of the two\nworks, but that does not always make sense. Consider a novel written in English and an\n189\n\n\x0calleged copy written in French. These works don\xe2\x80\x99t lend themselves to side-by-side\ncomparison and statistically, a person who is fluent in both English and French is\nextraordinary, not ordinary. A simple side-by-side comparison also doesn\xe2\x80\x99t make sense if\nthere are important similarities that relate to unprotectable elements within the works. Thus\neven when courts determine substantial similarity with respect to the ordinary observer, they\nusually supercharge that hypothetical observer with enormous powers of discernment. Some\ncourts do this through a process of abstraction, filtration, and comparison\xe2\x80\x94the AFC\napproach\xe2\x80\x94others do it by invoking the \xe2\x80\x9cmore discerning ordinary observer\xe2\x80\x9d. These are\ndiscussed below.\n(2) Combining the ordinary observer test for copyright infringement with the summary\njudgment standard leads to some interesting mental gymnastics. For a district court judge to\ngrant the defendant\xe2\x80\x99s motion for summary judgment on the basis that there was no wrongful\ncopying, the court must conclude that no reasonable jury would conclude that the ordinary\nobserver would think that the works were sufficiently alike to warrant a finding of\ninfringement. Notice that this A speculating about what B would conclude about what C\nwould think (where A is the judge, B is the hypothetical reasonable jury and C is the\nhypothetical ordinary observer).\nNonetheless, summary judgment on this basis is actually quite common, and for good reason.\nCourts are frequently presented with copyright infringement claims that are entirely devoid\nof merit once superficial similarities based on non-protectable elements are set to one side.\n(3) The ordinary observer standard has lead to undue rigidity on the use of experts in\ncopyright litigation. Using experts to determine what the reaction of the ordinary observer\nwould be strikes many courts as a non sequitur. Most famously, in Arnstein v. Porter, 154 F. 2d\n464 (1946) (at 468), the Second Circuit said that analytical dissection of the two works in\nissue was relevant to establish copying in fact and thus \xe2\x80\x9cthe testimony of experts may be\nreceived to aid the trier of the facts. But, on the issue of wrongful copying\xe2\x80\x94the court used the\nterms \xe2\x80\x9cillicit copying\xe2\x80\x9d and \xe2\x80\x9cunlawful appropriation\xe2\x80\x9d\xe2\x80\x94 the court said:\nOn that issue [wrongful copying] the test is the response of the ordinary lay hearer;\naccordingly, on that issue, \xe2\x80\x98dissection\xe2\x80\x99 and expert testimony are irrelevant.\n\nThis seems wrong. The simple fact is that there is nothing ordinary about the ordinary\nobserver. The ordinary observer is not a person to be found and interviewed by the court; it\nis a legal construct, a lens to be applied when comparing A to B to determine substantial\nsimilarity. There are very few cases where the finder of fact would not be assisted by some\nexpert instruction as to what to look for and what to listen for in the comparison of A to B.\nMoreover, in cases where the subject matter is complex, technical, or simply foreign to the\naverage juror, expert dissection and analysis will the only relevant criteria.\nAs the Northern District of Illinois explained in Francescatti v. Germanotta, No. 11 CV 5270,\n2014 WL 2767231, at *8 (N.D. Ill. June 17, 2014):\nAlthough dissection and expert testimony is not favored, the judicially created\nordinary observer test should not deprive authors of this significant statutory grant\nmerely because the technical requirements of a different medium dictate certain\ndifferences in expression. Without deciding the question, we note that in some cases\nit may be important to educate the trier of fact as to such considerations in order to\npreserve the author\xe2\x80\x99s rights under the Copyright Act.\n\n190\n\n\x0c(4) Why are courts so hostile to the use of experts in assisting with the analysis of wrongful\ncopying? Partly this is a mistrust born of experience. On the plaintiff\xe2\x80\x99s side, experts will note\nevery conceivable similarity and explain why those similarities are what is really important\nabout the works and why the objective dissimilarities are of no consequence. The plaintiff\xe2\x80\x99s\nexpert musicologists in Williams v. Gaye, 885 F. 3d 1150 (2018) are arguably a paradigm\nexample of this problem. Defendant\xe2\x80\x99s experts will likely mirror all the same problems.\nWhen to go beyond the ordinary observer\n[Placeholder for additional discussion]\n\n\xe2\x80\x9cTotal Concept and Feel\xe2\x80\x9d\nEver since the Ninth Circuit\xe2\x80\x99s decision in Roth Greeting Cards v. United Card Co. 429 F.2d 1106,\n1110 (9th Cir. 1970), courts have taken to referring to something called the \xe2\x80\x9ctotal concept\nand feel\xe2\x80\x9d test for substantial similarity. Roth Greeting Cards is a poorly reasoned case resulting\nin a dubious outcome, but the terminology of \xe2\x80\x9ctotal concept and feel\xe2\x80\x9d has proved\nsurprisingly enduring.56 No doubt, courts and fact-finders should consider the overall gestalt\nsimilarity of the copyrighted and accused works, but asking them to focus on total concept\nand feel necessarily steers them away from the real task at hand, identifying overlaps in\nprotectable original expression.\nInvoking the phrase \xe2\x80\x9ctotal concept and feel\xe2\x80\x9d doesn\xe2\x80\x99t just direct the reader\xe2\x80\x99s attention to the\ntotality of the work, it stresses those aspects of the work that are unprotectable as a matter\nof black letter law. As Pamela Samuelson summarizes:\nIndeed, it practically directs the trier of fact to consider conceptual similarities as a\nbasis for infringement, even though concepts have never been protectable by U.S.\ncopyright law. Indeed, \xc2\xa7 102(b) of U.S. copyright law states that \xe2\x80\x9c[i]n no case does\ncopyright protection . . . extend to any . . . concept.\xe2\x80\x9d Strangely enough, no court\napplying the total concept test has noticed that this formulation might run afoul of\nthe strictures of \xc2\xa7 102(b).57\n\nIn Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003),\nthe Second Circuit ventured upon an extended discussion of the use of the total concept and\nfeel test.\n\n56\n\nAs Pamela Samuelson notes this is even more surprising when you consider the following.\nWhile the Roth majority certainly used the total concept phrase, it did not announce this as a test that\nshould be widely used in infringement cases. The phrase was more an off-hand comment than a wellconceived way to think about nonliteral infringement. Indeed, the test the majority purported to apply\nwas \xe2\x80\x9cwhether the work is recognizable by an ordinary observer as having been taken from the\ncopyrighted source.\xe2\x80\x9d It is hence somewhat bizarre that the total concept test has become so widely\nused in copyright cases.\n\nPamela Samuelson, A Fresh Look at Tests for Nonliteral Copyright Infringement, 107 Northwestern University Law\nReview 1821, 1833 (2013).\n57\n\nId.\n\n191\n\n\x0cTufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d\nCir. 2003)\nThis case is about the design of rugs. The images below are not part of the judgment, but they are useful for understanding\nthe case. They were supplied to Professor Robert Brauneis by Bob Clarida, the counsel for Tufenkian. Note that the bluetape frame on the Battilossi Rug indicates the portion of the carpet that Tufenkian used as the basis for the center portion\nof its Floral Heriz Rug.\n\nFigure 6 The Battilossi Rug\n\n192\n\n\x0cFigure 7 Tufenkian Floral Heriz Rug\n\nFigure 8 The Bromley 514 Rug\n\n193\n\n\x0cCircuit Judge Calabresi\nThis copyright infringement case involves two textile designs, each of which\ncombines, with modifications, the \xe2\x80\x9cprimary border\xe2\x80\x9d and the \xe2\x80\x9chalf field\xe2\x80\x9d of two\nunrelated public domain carpets, one a classical Indian Agra and the other a Persian\nantique. Viewed uncritically, the two designs at issue are substantially similar. For the\ndefendant\xe2\x80\x99s rug to infringe upon the plaintiff\xe2\x80\x99s design, however, the defendant\xe2\x80\x99s\ncomposition must be substantially similar to that which is original in the plaintiff\xe2\x80\x99s\nexpression. The district court found no infringement, concluding as a matter of law\nthat whatever substantial similarity there may be emerges from unprotected public\ndomain materials in the allegedly infringed design. We disagree.\nBACKGROUND\nIn March 1995, James Tufenkian, a designer and manufacturer of Tibetan style\ncarpets, filed a copyright registration for the \xe2\x80\x9cFloral Heriz\xe2\x80\x9d (\xe2\x80\x9cHeriz\xe2\x80\x9d) carpet design\nthat is the subject of this lawsuit. He had composed the Heriz two years earlier by\nscanning into his computer two public domain images, one of the \xe2\x80\x9cBattilossi\xe2\x80\x9d carpet\n(a Persian antique), the other of the \xe2\x80\x9cBlau\xe2\x80\x9d carpet (an Indian Agra, designed by\nDorris Blau). The field of the Battilossi rug is a dense, bilateral symmetrical design of\nstylized branching-vine, leaf and flower motifs. Tufenkian selected roughly the\ncentral third of the upper half of this Battilossi field. From this dense pattern, he\nculled out a number of motifs. He then stretched the field slightly in one direction\nand used the thus modified design as the entire field of the Heriz. In the process,\nTufenkian created an asymmetrical pattern, for he used only an off-center portion of\nwhat had been a symmetrical design. From the Blau, he took the principal border,\nwhich, with modifications, became the major border of the Heriz. Finally, he added\ntwo minor borders of his own creation. One of these consists of stick-figure animals,\nthe other of even simpler, castlelike figures.\nTufenkian describes his principal creative contributions as: (1) combining two\nunrelated rug styles; (2) designing and adding the minor borders; (3) selectively\nremoving entire design motifs from the Battilossi so as to create a more \xe2\x80\x98open\xe2\x80\x99\naesthetic from those remaining; (4) converting the symmetrical Battilossi image into a\ndesign \xe2\x80\x9cwith no central focus\xe2\x80\x9d (by copying from only half of the Battilossi field); and\n(5) elongating the Battilossi pattern.\nSometime in 1995, Appellee Bashian retained Appellee Nichols-Marcy, who had\nworked for Tufenkian, to oversee the designing of the \xe2\x80\x9cBromley 514\xe2\x80\x9d (\xe2\x80\x9cBromley\xe2\x80\x9d).\nNichols-Marcy and his Nepalese contractors began work on the Bromley in early\n1996, two years after the Heriz was first marketed. These designers were familiar\nwith the Heriz, and the appellees do not challenge the district court\xe2\x80\x99s determination\nthat some copying of the Heriz actually occurred.\nNonetheless, the appellees contend that the Heriz\xe2\x80\x99s extensive use of designs taken\nfrom the public domain combined with the Bromley\xe2\x80\x99s distinctiveness precludes a\nfinding of infringement. In the latter regard, they point to the following as instances\nof their own creative work that distinguishes the Bromley from the Heriz: (1)\naddition of a second \xe2\x80\x9cbeetle\xe2\x80\x9d (or \xe2\x80\x9cflower\xe2\x80\x9d) element to the field, placed in a roughly\nsymmetrical position to an existing \xe2\x80\x9cbeetle\xe2\x80\x9d shape so as to give the Bromley a more\nbalanced feel than the Heriz; (2) retention of a \xe2\x80\x9cleaf shape\xe2\x80\x9d from the Battilossi that\n194\n\n\x0cTufenkian did not include in the Heriz; (3) removal of a vine-like line segment from\nthe Battilossi that Tufenkian had retained; and (4) greater modification of the Blau\nborder design, with \xe2\x80\x9cdifferent shapes at different angles.\xe2\x80\x9d\nIn November 1999, Tufenkian initiated this lawsuit, claiming copyright infringement\nand seeking various injunctive and monetary remedies. Both parties moved for\nsummary judgment on the issue of copyright infringement. The district court\nconcluded that \xe2\x80\x9cTufenkian infused [the Heriz] with sufficient originality to support\ncopyright protection,\xe2\x80\x9d; that Bashian actually copied the Heriz; but that the Bromley\n514 was not substantially similar to protected expression in the Heriz. The court\ntherefore awarded summary judgment to Bashian.\nThe district court evaluated infringement by comparing the two designs\xe2\x80\x99 \xe2\x80\x9ctotal\nconcept and feel\xe2\x80\x9d (or \xe2\x80\x9coverall aesthetic\xe2\x80\x9d). In so doing the court applied what we\nhave called the \xe2\x80\x9cmore discerning observer\xe2\x80\x9d test, Boisson v. Banian, Ltd., 273 F.3d 262,\n271 (2d Cir.2001), a test intended to emphasize that substantial similarity must exist\nbetween the defendant\xe2\x80\x99s allegedly infringing design and the protectible elements in\nthe plaintiff\xe2\x80\x99s design. Noting that \xe2\x80\x9cthe prominent public domain elements\nincorporated into Floral Heriz ... play a significant role in the overall appearance of\nplaintiff\xe2\x80\x99s work,\xe2\x80\x9d the district court \xe2\x80\x9cfactor[ed] out\xe2\x80\x9d those elements from the\nsubstantial similarity comparison, explaining that to do otherwise \xe2\x80\x9cwould grant\nplaintiff protection to public domain elements that the public has a right to copy.\xe2\x80\x9d\nNonetheless, the court specified that the Heriz contained various \xe2\x80\x98protectible\nelements\xe2\x80\x99 including: \xe2\x80\x9c[the] removal of certain elements to create open space, the\nasymmetrical pattern, the elongation of the design adapted from the body of the\nBattilossi rug, the creation of the castle and stick figure animal borders, and the\nordering and placement of all of these elements into a harmonious whole....\xe2\x80\x9d Id. The\ndistrict court further stated that it would also factor out \xe2\x80\x9cthose elements which are\noriginal to defendants,\xe2\x80\x9d among these the fact that \xe2\x80\x9cdefendants incorporated flower\nelements in the center field not found in plaintiff\xe2\x80\x99s design.\xe2\x80\x9d\nHaving identified the plaintiff\xe2\x80\x99s and the defendants\xe2\x80\x99 original contributions, the\ndistrict court concluded that a finding of lack of infringement was \xe2\x80\x9cineluctable\xe2\x80\x9d: \xe2\x80\x9cthe\nBromley 514\xe2\x80\x99s overall aesthetic is due to the public domain sources and to\ndefendants\xe2\x80\x99 own efforts,\xe2\x80\x9d rather than to any copying of protectible aspects of the\nHeriz. To illustrate the lack of substantial similarity, the district court recited a\nnumber of differences between the rugs, including the fact that \xe2\x80\x9cdefendants\xe2\x80\x99 design\nis symmetrical, while plaintiff\xe2\x80\x99s is asymmetrical, a difference which creates substantial\nchanges in the total concept and feel of the two works, given that both are\nsubstantial copies of the public domain Battilossi.\xe2\x80\x9d While the district court\n\xe2\x80\x9cappreciate[d] that defendants did copy, in modified form, a few elements original to\nplaintiff,\xe2\x80\x9d the court concluded that \xe2\x80\x9cthose elements (especially in their modified\nform) do not change the different total concept and feel of the two works.\xe2\x80\x9d\nDISCUSSION\nI.\nA. Standard of Review\n\n195\n\n\x0cWe review a summary judgment of non-infringement de novo. Our familiar task is to\ndetermine whether a genuine issue as to any material fact exists and whether the\nmoving party was properly entitled to judgment as a matter of law. In making this\ndetermination, we view all inferences in the light most favorable to the non-moving\nparty.\nB. The Test for Copyright Infringement\n\xe2\x80\x9cCopyright infringement is established when the owner of a valid copyright\ndemonstrates unauthorized copying.\xe2\x80\x9d Castle Rock Entm\xe2\x80\x99t, Inc. v. Carol Publ\xe2\x80\x99g Group, Inc.,\n150 F.3d 132, 137-38 (2d Cir. 1998) (internal quotation marks omitted). To\ndemonstrate unauthorized copying, the plaintiff must first \xe2\x80\x9cshow that his work was\nactually copied\xe2\x80\x9d; second, he must establish \xe2\x80\x9csubstantial similarity\xe2\x80\x9d or that \xe2\x80\x9cthe\ncopying amounts to an improper or unlawful appropriation,\xe2\x80\x9d i.e., (i) that it was\nprotected expression in the earlier work that was copied and (ii) that the amount that\nwas copied is \xe2\x80\x9cmore than de minimis.\xe2\x80\x9d Id. at 137-38. The defendant can defeat a\nprima facie showing of infringement by proving that the doctrine of \xe2\x80\x9cfair use\xe2\x80\x9d\npermits her employment of the plaintiff\xe2\x80\x99s design. Id. at 141-46. In the appeal before\nus, however, the defendants do not mount a fair use defense, nor do they contest the\ndistrict court\xe2\x80\x99s findings of ownership and actual copying. Substantial similarity is\ntherefore the only issue we face. But substantial similarity, we emphasize again, must\nbe to that which is protected in the plaintiff\xe2\x80\x99s work.\nC. The Scope of Copyright Protection: Original Expression\n\xe2\x80\x9cOriginality is \xe2\x80\x98the sine qua non of copyright,\xe2\x80\x99\xe2\x80\x9d Boisson, 273 F.3d at 268 (quoting Feist\nPubl\xe2\x80\x99ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991)). It is universally true,\nhowever, that even works which express enough originality to be protected also\ncontain material that is not original, and hence that may be freely used by other\ndesigners. This is not simply an artifact of some rather lenient caselaw on the\noriginality requirement. The principle is more fundamental: all creative works draw\non the common wellspring that is the public domain.\nIn this pool are not only elemental \xe2\x80\x9craw materials,\xe2\x80\x9d like colors, letters, descriptive\nfacts, and the catalogue of standard geometric forms, but also earlier works of art\nthat, due to the passage of time or for other reasons, are no longer copyright\nprotected. Thus the public domain includes, for example, both the generic shape of\nthe letter \xe2\x80\x9cL\xe2\x80\x9d and all of the elaborately more specific \xe2\x80\x9cL\xe2\x80\x99s\xe2\x80\x9d from the hundreds of\nyears of font designs that have fallen into the public domain. See Boisson, 273 F.3d at\n269-71 (considering copyright infringement in \xe2\x80\x9calphabet quilts,\xe2\x80\x9d and treating the\nletters of the alphabet and the spectrum of colors as belonging to the public\ndomain); cf. Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 747 (2d Cir.1998)\n(refusing to grant copyright protection to \xe2\x80\x9cstreet locations, landmass, bodies of water\nand landmarks depicted in a map\xe2\x80\x9d); Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759,\n763-64 (2d Cir.1991) (holding that the plaintiff\xe2\x80\x99s fabric-design copyright did not\nencompass a background pattern copied without modification from a public domain\ntextile); Williams, 84 F.3d at 587 (examining substantial similarity between literary\nworks and excluding \xe2\x80\x9cscenes a faire,\xe2\x80\x9d i.e., \xe2\x80\x9csequences of events that \xe2\x80\x98necessarily\nresult from the choice of a setting or situation,\xe2\x80\x99\xe2\x80\x9c from the scope of the plaintiff\xe2\x80\x99s\nprotectible expression).\n\n196\n\n\x0cD. Conundrums of Infringement by Inexact Copies\nIt has long been settled that \xe2\x80\x9cno plagiarist can excuse the wrong by showing how\nmuch of his work he did not pirate,\xe2\x80\x9d Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49,\n56 (2d Cir.1936) (Hand, J.), and this aphorism applies equally to exact reproduction\nof visual works. As a result, a would-be appropriator who wishes to test the limits of\ncopyright law gains nothing from \xe2\x80\x9cadding on\xe2\x80\x9d to what she has precisely reproduced.\nBut she might prevail insofar as her work transforms the copied expression into a\ndesign that in some respects resembles the original, yet does not actually excerpt\n(\xe2\x80\x9ccut and paste\xe2\x80\x9d) a more-than-de-minimis protected portion of the original. Such\ndesigns may be termed \xe2\x80\x9cinexact copies,\xe2\x80\x9d in recognition of the fact that they alter the\nprior image yet mimic its structure in some fashion.5 Jurists have long been vexed by\nthe task of precisely identifying that which separates inexact copies that infringe from\nthose that do not.6\nFootnote 5: Our intention in using the term \xe2\x80\x9cinexact copies\xe2\x80\x9d is to describe a manner of visual copying analogous\nto the textual copying that is described in Nimmer [on Copyright] as \xe2\x80\x9cnon-literal.\xe2\x80\x9d We recognize, of course, that\nthese designs may feature much that is new, in addition to whatever may be said to be original in the \xe2\x80\x9cinexact\ncopy.\xe2\x80\x9d Terming such a design an \xe2\x80\x9cinexact copy\xe2\x80\x9d is simply a means of drawing attention to the portion of the\ndesign that is relevant to a charge of infringement.\nFootnote 6: Cf. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930) (Hand, J.) (\xe2\x80\x9cUpon any work ... a\ngreat number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.\nThe last may perhaps be no more than the most general statement of what the [work] is about ... but there is a\npoint in the series of abstractions where they are no longer protected....\xe2\x80\x9d).\n\nIn recent years we have often found it productive to assess claims of inexact-copy\ninfringement by comparing the contested design\xe2\x80\x99s \xe2\x80\x9ctotal concept and overall feel\xe2\x80\x9d\nwith that of the allegedly infringed work. Because this was the method used by the\ndistrict court, and because the appellant sharply disputes the district court\xe2\x80\x99s \xe2\x80\x9ctotal\nconcept and feel\xe2\x80\x9d analysis, a few remarks on the history and application of this test\nare in order.\nOur circuit first employed the \xe2\x80\x9ctotal feel\xe2\x80\x9d nomenclature in a case involving children\xe2\x80\x99s\nbooks. See Reyher v. Children\xe2\x80\x99s Television Workshop, 533 F.2d 87, 91-92 (2d Cir.1976).\nReyher characterized this Court\xe2\x80\x99s previous treatment of inexact copying of books,\nmovies, and plays as concerned with the \xe2\x80\x9cthe \xe2\x80\x98pattern\xe2\x80\x99 of the work, i.e., the sequence\nof events and the development of the interplay of characters.\xe2\x80\x9d Id. at 91. But the\nchildren\xe2\x80\x99s books at issue in Reyher were \xe2\x80\x9cnecessarily less complex\xe2\x80\x9d than the works\nwe had previously submitted to \xe2\x80\x9cpattern\xe2\x80\x9d analysis, and, moreover, the sequence of\nevents in the plaintiff\xe2\x80\x99s book consisted of little more than \xe2\x80\x9cscenes a faire\xe2\x80\x9d attendant\nto an underlying idea that was shared with the defendant\xe2\x80\x99s work. Id. at 91-92. In all\nrespects other than the sequence of events, the works were very different:\nReyher\xe2\x80\x99s book presents a picture of family life in the Russian Ukraine and develops\nthe characters of the little girl and her mother. The [defendant\xe2\x80\x99s] story is barren of\nmeaningful setting or character development in its attempt to present its theme. The\ntwo stories are not similar in mood, details or characterization.\n\nId. at 92. Summarizing, we said the works differed in their \xe2\x80\x9ctotal feel.\xe2\x80\x9d Id.\nIn Reyher, \xe2\x80\x9ctotal feel\xe2\x80\x9d functioned as a shorthand way of explaining that \xe2\x80\x94 while a\nchildren\xe2\x80\x99s story whose sequence of events is not protected might nonetheless be\ninfringed by other forms of inexact copying \xe2\x80\x94 no such copying was present in the\nallegedly infringing work. See also Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498,\n197\n\n\x0c500-01 (2d Cir.1982) (explaining the divergent \xe2\x80\x9ctotal concept and feel\xe2\x80\x9d of two toy\nsnowmen with reference to a host of specific differences in the designs).\nSome commentators have worried that the \xe2\x80\x9ctotal concept and feel\xe2\x80\x9d standard may\n\xe2\x80\x9cinvite an abdication of analysis,\xe2\x80\x9d because \xe2\x80\x9cfeel\xe2\x80\x9d can seem a \xe2\x80\x9cwholly amorphous\nreferent.\xe2\x80\x9d Likewise, one may wonder whether a copyright doctrine whose aspiration\nis to protect a work\xe2\x80\x99s \xe2\x80\x9cconcept\xe2\x80\x9d could end up erroneously protecting \xe2\x80\x9cideas.\xe2\x80\x9d But\nour caselaw is not so incautious. Where we have described possible infringement in\nterms of whether two designs have or do not have a substantially similar \xe2\x80\x9ctotal\nconcept and feel,\xe2\x80\x9d we generally have taken care to identify precisely the particular\naesthetic decisions \xe2\x80\x94 original to the plaintiff and copied by the defendant \xe2\x80\x94 that\nmight be thought to make the designs similar in the aggregate. This is evident from\nReyher and Eden Toys, supra, and also from our more recent textile-infringement\ndecisions. Thus in Knitwaves v. Lollytogs Ltd., we explained:\nLollytogs has chosen to feature the same two fall symbols that Knitwaves used,\nleaves and squirrels. Not only do Lollytogs\xe2\x80\x99 renderings of these symbols\nsubstantially resemble Knitwaves\xe2\x80\x99 renderings, but Lollytogs has employed them in\nvirtually the same manner as Knitwaves has (as felt appliques stitched to the\nsweaters\xe2\x80\x99 surface); on strikingly similar backgrounds (\xe2\x80\x9cshadow-striped\xe2\x80\x9d for the Leaf\nSweater, and four-paneled for the Squirrel Cardigan); and in virtually the same color\nscheme.\n\n71 F.3d 996, 1004 (2d Cir.1995). Cf. Boisson, 273 F.3d at 273-74 (finding infringement\non the basis of protectible and similar combinations of letters, colors and patterns in\ntwo alphabet rugs \xe2\x80\x94 in sum, on the basis of the \xe2\x80\x9cenormous amount of sameness\xe2\x80\x9d\nbetween the two designs).7\nFootnote 7: Knitwaves and other recent cases portray this Circuit\xe2\x80\x99s protection of a complex work\xe2\x80\x99s \xe2\x80\x9ctotal concept\nand feel\xe2\x80\x9d as a necessary result of the Supreme Court\xe2\x80\x99s statement in Feist, 499 U.S. at 350, 361-64, that\ncompilations of unprotectible elements merit copyright protection insofar as they contain an original and nonmechanical selection, coordination or arrangement of those elements. See Boisson, 273 F.3d at 272-73; Streetwise\nMaps, 159 F.3d at 748; Knitwaves, 71 F.3d at 1003-04.\n\nEssentially, the total-concept-and-feel locution functions as a reminder that, while\nthe infringement analysis must begin by dissecting the copyrighted work into its\ncomponent parts in order to clarify precisely what is not original, infringement\nanalysis is not simply a matter of ascertaining similarity between components viewed\nin isolation.8\nFootnote 8: Ascertaining the \xe2\x80\x9ccomponent parts\xe2\x80\x9d of the work is, of course, a case-specific inquiry that begins by\nconsidering what is distinctive about a given design. The process is well illustrated in Boisson, 273 F.3d at 272-75.\n\nFor the defendant may infringe on the plaintiff\xe2\x80\x99s work not only through literal\ncopying of a portion of it, but also by parroting properties that are apparent only\nwhen numerous aesthetic decisions embodied in the plaintiff\xe2\x80\x99s work of art \xe2\x80\x94 the\nexcerpting, modifying, and arranging of public domain compositions, if any, together\nwith the development and representation of wholly new motifs and the use of\ntexture and color, etc. \xe2\x80\x94 are considered in relation to one another. The court,\nconfronted with an allegedly infringing work, must analyze the two works closely to\nfigure out in what respects, if any, they are similar, and then determine whether these\nsimilarities are due to protected aesthetic expressions original to the allegedly\ninfringed work, or whether the similarity is to something in original that is free for\nthe taking.\n198\n\n\x0cII.\nThe appellant charges that, in comparing the two designs\xe2\x80\x99 total concept and feel, the\ndistrict court improperly factored out public domain elements from the Heriz and\nthe Bromley. As the above discussion of doctrine indicates, however, the court was\nsurely correct to factor such elements out. For copying is not unlawful if what was\ncopied from the allegedly infringed work was not protected, for example, if the\ncopied material had itself been taken from the public domain. This principle applies,\nmoreover, whether the copied, unprotected expression at issue is a selection,\ncoordination, or arrangement of elements, or whether it is the exact design itself.\nBut in its comparison of the two rugs, the district court failed to consider \xe2\x80\x94 apart\nfrom total concept and feel \xe2\x80\x94 whether material portions of the Bromley infringed\non corresponding parts of the Heriz. Here the court erred. See generally 3 Nimmer\non Copyright \xc2\xa7 13.03[A][1][c] (\xe2\x80\x9c\xe2\x80\x98Total concept and feel\xe2\x80\x99 should not be viewed as a\nsine qua non for infringement \xe2\x80\x94 similarity that is otherwise actionable cannot be\nrendered defensible simply because of a different \xe2\x80\x98concept and feel.\xe2\x80\x99\xe2\x80\x9d\nWhat makes this case perplexing is that, to the judicial observer who has a passing\nfamiliarity with carpet design, many of the plaintiff\xe2\x80\x99s expressive choices may seem to\nbe rather mechanical or conventional acts, which might be deemed to be either nonoriginal or else so weakly original that their copying would appropriate no more than\na de minimis amount of protected expression.10 Consider, for example, the cropping\nand elongating of the Battilossi half-field so as to create a typical \xe2\x80\x9clonger than wide\xe2\x80\x9d\nfield for the Heriz; the use of one primary and two minor borders; the proportions\nbetween borders and field; and the design of the outer minor border. On the other\nhand, the record contains little evidence of what is conventional (and hence, by\nanalogy to \xe2\x80\x9cscenes a faire,\xe2\x80\x9d unprotected) in these respects.\nFootnote 10: Furthermore, one apparently original element in the plaintiff\xe2\x80\x99s design \xe2\x80\x94 the inner minor border \xe2\x80\x94\nis not closely reproduced in the Bromley. True, like the Heriz, the Bromley uses a stick-figure motif in its inner\nborder, but the Bromley stick figures are not particularly similar to their counterparts in the Heriz.\n\nEven the Heriz\xe2\x80\x99s pairing of the Battilossi half-field with the Blau-derived border was,\narguably, a fairly simple exercise. One might contend that the pairing is too minor to\nsurmount even the low threshold for copyright protection, or else conclude that it is\nprotected only against very close copies.11 The question of infringement thus might\nbe thought to turn on subtle differences in the Heriz and Bromley adaptations of the\nBlau border.\nFootnote 11: In suggesting these possibilities, we note only that they are arguable, and we express no opinion as\nto whether the arguments, if made, would prove correct. We do believe, however, that the district court probably\nerred in categorically dismissing as an unprotected \xe2\x80\x9cidea\xe2\x80\x9d the plaintiff\xe2\x80\x99s combination of the Battilossi half-field\nand Blau-ish border. The plaintiff\xe2\x80\x99s particular combination of these two rugs is an expression, albeit one\nprotected by a thin copyright. Cf. Beaudin v. Ben & Jerry\xe2\x80\x99s Homemade, Inc., 95 F.3d 1, 2 (2d Cir. 1996) (\xe2\x80\x9cWhere the\nquantum of originality is slight and the resulting copyright is \xe2\x80\x98thin,\xe2\x80\x99 infringement will be established only by very\nclose copying....\xe2\x80\x9d).\n\nWhether the Bromley infringes on the Heriz, however, need not depend on variation\nbetween the primary borders, or on a determination of the extent to which various\nfeatures of the Heriz design are conventions. There is one substantial respect in\nwhich the creator of the Heriz made distinctly idiosyncratic and particular design\ndecisions \xe2\x80\x94 decisions whose effect permeates the entire field of the Heriz \xe2\x80\x94 and in\nthis respect the Bromley is a virtually exact copy of the Heriz. The plaintiff not only\n199\n\n\x0ccropped and elongated the Battillossi half-field, he also selectively eliminated\nnumerous design motifs, creating a more open, less busy aesthetic.\nOf course, mere simplification of an ornate public domain carpet into a mass market\nknock-off may not be protectible.12 But the plaintiff\xe2\x80\x99s half-field modification was not\na uniform or homogeneous simplification akin to removing all serifs from a font,\nblurring the petals on all flowers, or eliminating every third leaf on a stem. Rather,\nthe plaintiff seems to have engaged in a selective and particularized culling of a leaf\nhere, a complex of leaves and flowers there, and so forth. And close visual inspection\nof the two rugs confirms that the Bromley precisely mimics the Heriz in nearly all of\nthese choices.\nFootnote 12: Compare in this regard the use of the \xe2\x80\x9cmerger\xe2\x80\x9d doctrine in Computer Assocs. Int\xe2\x80\x99l, 982 F.2d at 707-10\n(applying \xe2\x80\x9cmerger\xe2\x80\x9d doctrine to computer code features dictated by efficiency and external functional constraints).\n\nThis non-mechanical adaptation of individually unprotectible elements from the\npublic domain is precisely the type of \xe2\x80\x9coriginal selection\xe2\x80\x9d that the Supreme Court\nindicated was protectible expression in Feist. There, the Court clarified that a\ntelephone directory contained protectible expression insofar as the compiler had\n\xe2\x80\x9cselected, coordinated, or arranged [its] uncopyrightable facts in an original way.\xe2\x80\x9d\n499 U.S. at 362. The Court cautioned, however, that the protection given is \xe2\x80\x9cthin,\xe2\x80\x9d id.\nat 349, because the scope of the copyright \xe2\x80\x9cis limited to the particular selection or\narrangement,\xe2\x80\x9d and a \xe2\x80\x9csubsequent [author] remains free to use [the public domain\nelements] to aid in preparing a competing work, so long as the competing work does\nnot feature the same selection and arrangement,\xe2\x80\x9d id. at 349-51.13\nFootnote 13: There may arise visual-arts cases in which the \xe2\x80\x9cselection, coordination, and arrangement\xe2\x80\x9d of public\ndomain elements is so aesthetically complex and sophisticated that the copyright is more than \xe2\x80\x9cthin.\xe2\x80\x9d As\nmediums of expression, mosaic and montage can support artistry of high order. But in the case before us the\nselective deletion of elements from the Battilossi, while idiosyncratic, was relatively simple and supports only a\nthin copyright. Cf. Beaudin, 95 F.3d at 2.\n\nWe conclude that this is one of those relatively unusual cases in which the infringing\nwork has copied the original and \xe2\x80\x9cparticular\xe2\x80\x9d or \xe2\x80\x9csame\xe2\x80\x9d selections embodied in the\nallegedly infringed upon work. The number of motifs present (or absent) in the\nBromley field which mirror those the Heriz selected (or deleted) in an original way\nfrom the Battilossi is overwhelming. And the structural layout of these elements is\nessentially the same in both designs.\nIt should be noted that while the Bromley field is based on a near-exact copy of the\nHeriz\xe2\x80\x99s original selections from the Battilossi, the Bromley does depart from the\nHeriz in one salient respect. Specifically, the Bromley field has a second, anchoring\n\xe2\x80\x9cbeetle\xe2\x80\x9d or \xe2\x80\x9cflower\xe2\x80\x9d element, which conveys a sense of balance that is absent in the\nHeriz. This addition, and the resulting faux symmetry, was important to the district\ncourt\xe2\x80\x99s determination that the \xe2\x80\x9ctotal concept and feel\xe2\x80\x9d of the Bromley was not\nsubstantially similar to that of the Heriz. Whatever the possible relevance of the\nBromley\xe2\x80\x99s second beetle element to a comparison of the two rugs\xe2\x80\x99 \xe2\x80\x9coverall feel\xe2\x80\x9d \xe2\x80\x94\nan issue we need not decide today \xe2\x80\x94 this addition does not alter the fact that the\nrest of the Bromley field is a near-exact copy of the Heriz field, and therefore\ninfringing. To hold otherwise would be rather like holding that one who closely\ncopies a long poem can do so without prima facie infringement if she replaces one\n(admittedly significant) stanza with verse of her own invention and thereby alters the\n\n200\n\n\x0cpoem\xe2\x80\x99s \xe2\x80\x9cfeel.\xe2\x80\x9d Cf. Sheldon, 81 F.2d at 56 (\xe2\x80\x9c[N]o plagiarist can excuse the wrong by\nshowing how much of his work he did not pirate.\xe2\x80\x9d)\nIII.\nFor the forgoing reasons, we hold that the Bromley is substantially similar to the\nHeriz. We therefore VACATE the judgment of the district court and REMAND for\nfurther proceedings.\nNotes and questions\n(1) In Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir.\n2003), the Second Circuit reversed the district court\xe2\x80\x99s finding that one rug did not infringe\nupon another similar rug.\n(2) , Notice that the Second Circuit in Tufenkian does not treat \xe2\x80\x9ctotal concept and feel\xe2\x80\x9d as a\ntest for infringement, but merely as part of the infringement analysis; in this view, \xe2\x80\x9ctotal\nconcept and feel\xe2\x80\x9d functions as a reminder that courts should not take dissection too far. At\n134 the court said:\nEssentially, the total-concept-and-feel locution functions as a reminder that, while\nthe infringement analysis must begin by dissecting the copyrighted work into its\ncomponent parts in order to clarify precisely what is not original, infringement\nanalysis is not simply a matter of ascertaining similarity between components viewed\nin isolation.\n\nThe Second Circuit is not concerned that \xe2\x80\x9ctotal concept and feel\xe2\x80\x9d is an invitation to the\n\xe2\x80\x9cabdication of analysis\xe2\x80\x9d as some have suggested, because its consideration of total concept\nand feel is balanced with and preceded by analytical dissection. At 134, the court responds to\nits critics:\nBut our caselaw is not so incautious. Where we have described possible\ninfringement in terms of whether two designs have or do not have a substantially\nsimilar \xe2\x80\x9ctotal concept and feel,\xe2\x80\x9d we generally have taken care to identify precisely\nthe particular aesthetic decisions \xe2\x80\x94 original to the plaintiff and copied by the\ndefendant \xe2\x80\x94 that might be thought to make the designs similar in the aggregate.\n\nIs that enough?\n\nThe abstraction, filtration, and comparison test\nIn Computer Associates Intern., Inc. v. Altai, Inc., 982 F. 2d 693 (2d Cir. 1992), the Second Circuit\nrecognized that the ordinary observer test generally applied to determine that substantial\nsimilarity was unlikely to be of much use in the context of computer software. At 713, the\ncourt said:\n\xe2\x80\xa6 in deciding the limits to which expert opinion may be employed in ascertaining\nthe substantial similarity of computer programs, we cannot disregard the highly\ncomplicated and technical subject matter at the heart of these claims. Rather, we\nrecognize the reality that computer programs are likely to be somewhat\nimpenetrable by lay observers \xe2\x80\x94 whether they be judges or juries \xe2\x80\x94 and, thus,\nseem to fall outside the category of works contemplated by those who engineered\nthe Arnstein test.\n\n201\n\n\x0cIn place of an ordinary observer test, the court announced an approach that has become\nknown as the \xe2\x80\x9cabstraction, filtration, and comparison\xe2\x80\x9d test. The AFC test is widely used in\ncomputer software cases and occasionally in other contexts.\nAs its name suggests, the AFC test has three steps. As the court explained in Computer\nAssociates (at 706),\n\xe2\x80\xa6 we think that district courts would be well-advised to undertake a three-step\nprocedure, based on the abstractions test utilized by the district court, in order to\ndetermine whether the non-literal elements of two or more computer programs are\nsubstantially similar. This approach breaks no new ground; rather, it draws on such\nfamiliar copyright doctrines as merger, scenes a faire, and public domain. \xe2\x80\xa6\nIn ascertaining substantial similarity under this approach, a court would first break\ndown the allegedly infringed program into its constituent structural parts. Then, by\nexamining each of these parts for such things as incorporated ideas, expression that\nis necessarily incidental to those ideas, and elements that are taken from the public\ndomain, a court would then be able to sift out all non-protectable material. Left with\na kernel, or possible kernels, of creative expression after following this process of\nelimination, the court\xe2\x80\x99s last step would be to compare this material with the\nstructure of an allegedly infringing program. The result of this comparison will\ndetermine whether the protectable elements of the programs at issue are\nsubstantially similar so as to warrant a finding of infringement.\n\nUsing this AFC approach, the court was able to set aside similarities based on high-level\nabstractions, standard programming techniques, and any aspects of the software that would\nhave been dictated by external factors. Without this kind of systematic dissection, courts\nwould be far too quick to conclude that two programs performing the same function in the\nsame environment were substantially similar.\n\nAdditional illustrative cases\n[This is a placeholder for brief discussions of additional illustrative cases such as\nRentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018)]\n\n202\n\n\x0c6. AN OVERVIEW OF COPYRIGHT LIMITATIONS AND EXCEPTIONS\nHow to think about copyright limitations and exceptions\n\xe2\x80\x9cTrue limitations and exceptions\xe2\x80\x9d versus \xe2\x80\x9cinherent limitations\xe2\x80\x9d\nEvery copyright system creates space for certain limitations and exceptions. The field, scope,\nnature, and design of these exceptions vary widely. The processes by which limitations and\nexceptions are created are almost equally as varied.\nIn the United States, there are many specific limitations and exceptions directed at particular\nacts, particular actors, and particular circumstances; but there are also significant common\nlaw limitations and exceptions such as the fair use doctrine.\nCopyright limitations and exceptions may be legislative in nature, the result of executive\naction, the outcome of delegated rule-making authority, or simply a matter of judicial\ndetermination. As the scope and duration of copyright has expanded over the years, the\nimportance of limitations and exceptions has increased.\nCopyright law contains a number of policy levers that determine the scope of the rights of\ncopyright owners. These include:\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\nthe threshold of substantial similarity,\nthe definition of performance,\nthe definition of public,\nthe merger doctrine,\nthe idea expression distinction, scenes a faire, the non-copyrightability of systems, processes\nand methods of operation;\nthe volitional act requirement,\nthe first sale doctrine (and copyright exhaustion more broadly).\nthe scope of secondary liability,\nthe scope and qualifications for notice and take-down safeharbor, and\nthe doctrine of copyright misuse.\n\nIf you take the Blackstonian view of property (\xe2\x80\x9csole and despotic dominion\xe2\x80\x9d) and apply it to\ncopyright, copyright is a right to the absolute control over every use of every word of a\ncopyrighted book and every pixel of a copyrighted picture. Obviously, no sane person thinks\nabout copyright this way. Copyright consists of a broad set of rights given the authors for a\nparticular purpose \xe2\x80\x93 the fact that singing in the shower does not amount to copyright\ninfringement is not loophole or an exemption, it simply reflects the fundamentally limited\nnature of the performance right. As an exercise in taxonomy, it makes sense to think of\nsome features of copyright law as inherent in the definition of the rights themselves and\nothers as true limitations and exceptions. Such \xe2\x80\x98inherent limitations\xe2\x80\x99 would certainly include\nthe idea-expression distinction, but also arguably extend to longstanding applications of the\nfair use doctrine.\nRules v. Standards\n[Placeholder for a brief explanation of the ways in which copyright scholars misunderstand\nand abuse the literature on rules versus standards.]\n\n203\n\n\x0cCopyright limitations\nagreements\n\nand\n\nexceptions\n\nrequired\n\nby\n\ninternational\n\n[Placeholder for discussion of Berne and TRIPs requirements]\n\nSignificant limitations and exceptions to copyright in the United States\nStatutory licenses\nThe Copyright Act of 1976 contains statutory licensing provisions relating to cable and\nsatellite retransmission of broadcast television, the public performance of sound recordings\nover the Internet or via other forms of digital transmission, coin-operated jukeboxes, and the\nuse of certain works by public broadcasters. Each of these provisions is the result of a\ncomplicated legislative process, and the resulting text often dense and impenetrable.\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\n\xc2\xa7111. Limitations on exclusive rights: Secondary transmissions of broadcast programming by\ncable\n\xc2\xa7112. Limitations on exclusive rights: Ephemeral recordings\n\xc2\xa7114. Scope of exclusive rights in sound recordings\n\xc2\xa7115. Scope of exclusive rights in nondramatic musical works: Compulsory license for\nmaking and distributing phonorecords\n\xc2\xa7116. Negotiated licenses for public performances by means of coin-operated phonorecord\nplayers\n\xc2\xa7118. Scope of exclusive rights: Use of certain works in connection with noncommercial\nbroadcasting\n\xc2\xa7119. Limitations on exclusive rights: Secondary transmissions of distant television\nprogramming by satellite\n\xc2\xa7122. Limitations on exclusive rights: Secondary transmissions of local television\nprogramming by satellite\n\nCodifying inherent limitations\nThe Copyright Act of 1976 also codifies at least two significant \xe2\x80\x9cinherent limitations\xe2\x80\x9d on\ncopyright. As noted above, these are provisions that codify limits in copyright that are in\nsome sense inherent to the definition of the rights themselves. For example, Section 105\nexcludes United States Government works from copyright subject matter and Section 109\ncodifies the common law first sale doctrine (a topic discussed in more detail in another\nchapter). Both of these provisions could be regarded as codifying inherent limitations in the\nscope of copyright rather than as true limitations and exceptions. The same could be said of\nSection 113 and Section 120, which address limits on copyright with respect to pictorial,\ngraphic, and sculptural works and architectural works respectively.\nTrue limitations and exceptions\nFour sections of the Act stand out as \xe2\x80\x9ctrue exceptions and limitations\xe2\x80\x9d in the terms set out\nabove. These provisions overlap with the more general application of the fair use doctrine,\nbut it is important to note such codified fair uses are not subject to the fair use balancing test\n(discussed below) and are permissible regardless of the harm to the rights owner.\nSection 110 of the Copyright Act contains a number of other exceptions to the performance\nand display rights. These exceptions relate to church services, veterans halls, non-profit\n204\n\n\x0cpublic performances, incidental performances of broadcast radio in small shops and\nrestaurants, the performance of sound recordings in record stores, performance in the\ncourse of a transmission for the visually disabled, and more. The bulk of the Section 110\nlimitations are true limitations and exceptions, although the provision (sometimes referred to\nas the boom-box exception) could easily be seen as part of the definition of what truly\nconstitutes a public performance.\nSection 108 contains a specific set of exemptions for library photocopying. [Placeholder for\nmore detailed summary]\nSection 117 authorizes the owner of computer software to make a copy or an adaptation of\nthat software as an essential step in the utilization of the computer program or for\nmaintenance or repair. [Placeholder for more detailed summary]\nSection 121 allows \xe2\x80\x98authorized entities\xe2\x80\x99 to reproduce and/or distribute certain works in\nspecialized formats exclusively for use by blind or other persons with disabilities.\nSection 1008 of provides that \xe2\x80\x9cno action may be brought under this title alleging\ninfringement of copyright based on the manufacture, importation, or distribution of a digital\naudio recording device, a digital audio recording medium, an analog recording device, or an\nanalog recording medium, or based on the noncommercial use by a consumer of such a\ndevice or medium for making digital musical recordings or analog musical recordings.\xe2\x80\x9d This\nsection was added to the Act in 1992 by the Audio Home Recording Act (\xe2\x80\x9cAHRA\xe2\x80\x9d). The\nAHRA was a legislative response to the new technology of digital audio tape.\nWhere does fair use fit in?\nIn its modern context, fair use is a flexible standard that limits the scope of copyright\nprotection and renders certain actions relating to copyrighted works noninfringing. Activities\nthat courts have regarded as fair use that may have otherwise been infringing include:\nquoting a significant portion of a work for the purpose of criticism, illustration, comment, or\nclarification; parodying a work; and copying part of a work in the course of classroom\nactivities.58\nFair use is necessary, in part, because licensing and other private ordering mechanisms do\nnot provide a solution for cases involving high transaction costs, strategic holdouts, and\ninadvertent copying. The fair use doctrine is particularly important in situations where the\ncosts of obtaining permission outweigh the benefits of the use. The doctrine also plays a\nmediating role in situations where the copyright owner withholds permission for reasons\nthat society finds unacceptable. For example, as illustrated by Campbell v. Acuff-Rose Music, Inc.,\n510 U.S. 569 (1994), a copyright owner usually cannot deny permission to copy in order to\nstifle parody, criticism, or social debate.\nThe fair use doctrine does a lot of work in the modern American copyright system. In many\nways fair use functions as an inherent limitation on copyright, similar to the idea-expression\ndichotomy or the requirement of substantial similarity. However, in other respects the fair\nuse doctrine produces a set of rules through case law that look more like true limitations and\nexceptions. There is much more that could be said about this topic, but we will forego an\nextended theoretical discussion and move directly into the relevant fair use case law.\nSee U.S. COPYRIGHT OFFICE, REPORT OF THE\nTHE U.S. COPYRIGHT LAW (1961).\n58\n\nREGISTER OF COPYRIGHTS ON THE GENERAL REVISION OF\n\n205\n\n\x0cInternational constraints on copyright limitations and exceptions\n[The current section is a placeholder for a more in-depth discussion to be developed at a later date.]\n\nThe Three Step Test\nThe Berne Convention, the TRIPs Agreement, and a number of other multilateral and\nbilateral agreements contain some version of the \xe2\x80\x9cthree-step\xe2\x80\x9d test for evaluating copyright\nlimitations and exceptions.\nBerne Convention (Paris Text 1971) Article 9\n(1) Authors of literary and artistic works protected by this Convention shall have the\nexclusive right of authorizing the reproduction of these works, in any manner or\nform.\n(2) It shall be a matter for legislation in the countries of the Union to permit the\nreproduction of such works in certain special cases, provided that such reproduction\ndoes not conflict with a normal exploitation of the work and does not unreasonably\nprejudice the legitimate interests of the author.\nTRIPs Agreement. Article 13. Limitations and Exceptions\nMembers shall confine limitations or exceptions to exclusive rights to certain special\ncases which do not conflict with a normal exploitation of the work and do not\nunreasonably prejudice the legitimate interests of the right holder.\n\nIt is worth noting that the Berne convention itself contains a number of significant\nlimitations and exceptions such as those relating to the reporting and broadcasting of public\nspeeches. The Berne Convention also contains special provisions relating to developing\ncountries in the Appendix to the Convention. These provisions are incorporated into the\nTRIPs Agreement as well.\nWorld Trade Organization Panel Decision re: US \xe2\x80\x93 SECTION 110(5) COPYRIGHT\nACT (DS160)\nNo doubt, some individual limitations and exceptions on copyright may fall foul of the three\nstep test. The European Union successfully objected to section 110(5) of the Copyright Act\non this basis in a dispute resolution proceeding before the WTO in 2000. Section 110 of the\nUnited States Copyright Act provides for limitations on exclusive rights granted to copyright\nholders for their copyrighted work, in the form of exemptions for broadcast by non-right\nholders of certain performances and displays, namely, \xe2\x80\x9chomestyle exemption\xe2\x80\x9d (for \xe2\x80\x9cdramatic\xe2\x80\x9d\nmusical works) and \xe2\x80\x9cbusiness exemption\xe2\x80\x9d (works other than \xe2\x80\x9cdramatic\xe2\x80\x9d musical works).\nThe Panel concluded that the \xe2\x80\x9chomestyle exemption\xe2\x80\x9d was an acceptable copyright exception\nunder the requirements of Art. 13 because it was confined to \xe2\x80\x9ccertain special cases\xe2\x80\x9d, did not\nconflict with a normal exploitation of the work, and did not cause unreasonable prejudice to\nthe legitimate interests of the right holders.\nHowever, the Panel found that the \xe2\x80\x9cbusiness exemption\xe2\x80\x9d did not meet these requirements\nbecause its scope was too broad \xe2\x80\x93 the provisions could apply to 70 percent of eating and\ndrinking establishments and 45 percent of retail establishments in the United States \xe2\x80\x93 and\n\n206\n\n\x0cbecause the exemption deprived the owners of musical works the chance to earn royalties\nfrom broadcasts of their works on radio and television.\nHow Restrictive is the Three-Step Test?\nThis is a particularly salient question for countries considering adopting any kind of openended standard equivalent to the American fair use doctrine or the English, Australian, and\nCanadian provisions on fair dealing.\nAlthough it is occasionally raised for rhetorical flair, the compatibility of fair use with various\ninternational agreements should not be a matter of serious concern for three reasons:\n1. Drafting history of Berne Article 9(2)\n2. Subsequent international agreements and state practice\n3. The United States position on the compatibility of fair use with Berne Article 9(2)\nThe drafting history of Berne Article 9(2) reveals that it was not intended as a rigid\nprohibition on limitations and exceptions to copyright, but rather as an abstract open\nformula capable of encompassing a wide range of exceptions.\nMartin Senftleben has made a detailed study of the history of the three step test, beginning\nwith its adoption in 1967. 59 Senftleben\xe2\x80\x99s research shows that an early draft of 9(2) used the\nlanguage \xe2\x80\x9cin certain particular cases where the reproduction is not contrary to the legitimate\ninterests of the author.\xe2\x80\x9d This text was modified at the suggestion of the United Kingdom\ndelegation to the now familiar language \xe2\x80\x94 \xe2\x80\x9cin certain special cases where the reproduction\ndoes not unreasonably prejudice the legitimate interests of the authors.\xe2\x80\x9d\nAlthough fair dealing in the U.K. by the late 1960\xe2\x80\x99s was arguably narrower than fair use in\nthe U.S., it was nonetheless an abstract standard (applied to particular circumstances)\nrequiring judicial application and development. It is inconceivable that the U.K. intended to\nabandon fair dealing when it suggested that limitations and exceptions be limited to \xe2\x80\x9ccertain\nspecial cases\xe2\x80\x9d.\nRead as a single sentence, Article 9(2) is a general statement that does as much to enable\nlimitations and exceptions as it does to confine them. As is so often the case in international\nagreements, this generality was necessary in order to reconcile the many different types of\nexceptions various nations had already adopted.60\nSecond, subsequent international agreements and state practice confirm this understanding.\nVersions of the three step test have been incorporated into international agreements such as\nTRIPs, the WIPO Copyright treaty, NAFTA, and United States Free Trade Agreements with\nAustralia, Bahrain, Chile, Jordan, Morocco, Singapore, and South Korea. In 1996, the\n\nSee generally, Martin Senftleben, Copyright, Limitations, and the Three-Step Test: Analysis of the Three-Step Test in\nInternational and EC Copyright Law, Kluwer Law International, 2004.\n59\n\nThe literature on this topic is extensive. For the leading account, see, Martin Senftleben, COPYRIGHT,\nLIMITATIONS, AND THE THREE-STEP TEST: ANALYSIS OF THE THREE-STEP TEST IN INTERNATIONAL AND EC\nCOPYRIGHT LAW, KLUWER LAW INTERNATIONAL, 2004; see also Declaration on a Balanced Interpretation of the\n\xe2\x80\x9cThree Step Test\xe2\x80\x9d in Copyright Law released by leading legal scholars from the Max Planck Institute and other\nleading\ninstitutions,\nJuly\n2008,\nat:\nhttp://www.ip.mpg.de/files/pdf2/declaration_three_step_test_final_english1.pdf\n60\n\n207\n\n\x0csignatories to the WIPO Copyright Treaty released the following \xe2\x80\x98Agreed Statement\nConcerning Article 10 WIPO Copyright Treaty\xe2\x80\x99:\nIt is understood that the provisions of Article 10 permit Contracting Parties to carry\nforward and appropriately extend into the digital environment limitations and\nexceptions in their national laws which have been considered acceptable under the\nBerne Convention.\n\nSimilarly, these provisions should be understood to permit Contracting Parties to devise new\nexceptions and limitations that are appropriate in the digital network environment.61\nThird, the United States takes the position that nothing in existing United States copyright\nlaw, as interpreted by the federal courts of appeals, would be inconsistent with the three-step\ntest.62 The United States made a number of changes to its law when it joined the Berne\nConvention in 1989. However, the fair use doctrine does not appear to have been\nconsidered as an obstacle to Berne compliance at that time. It is hard to imagine that the\nUnited States would have agreed to accede to the Berne Convention if it believed that such a\ncentral aspect of its copyright law was not Berne compatible. It is inconceivable that the\nUnited States would actively promote the incorporation of a three step test into TRIPs in\n1994, the WCT in 1996, and FTAs with Australia, Bahrain, Chile, Jordan, Morocco,\nSingapore, and South Korea (among others) if the fair use doctrine presented a fundamental\nconflict with that test.\n\nAgreed Statements Concerning the WIPO Copyright Treaty, Statement Concerning Article 10, WIPO\nDiplomatic Conference, WIPO Doc. No. CRNR/DC/96 (1996).\n61\n\nSee, Letter of Peter Jaszi, Michael Carroll and Sean Flynn to United States Trade Representative,\nAmbassador\nRonald\nKirk,\nSeptember\n8,\n2012.\nAvailable\nat\nhttp://infojustice.org/wpcontent/uploads/2012/09/PIJIP-letter-to-Kirk-September-8-2012.pdf.\n62\n\n208\n\n\x0c7. EXPRESSIVE FAIR USE\nThe modern era of fair use in the United States\nThe state of fair use prior to Campbell v. Acuff-Rose Music\nCampbell v. Acuff-Rose Music, Inc., 510 US 569 (1994) was a major turning point in the modern\ndoctrine of fair use. So much so that cases decided prior to Campbell must be read with\ncaution. To understand the confused state of fair use jurisprudence prior to the Supreme\nCourt\xe2\x80\x99s 1994 intervention in Campbell v. Acuff-Rose requires a digression into the facts and\nreasoning of two other fair use cases decided by the Supreme Court.\nSony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984)\nThe Sony Betamax machine was the first mass-market video cassette recorder. The Betamax\nwent on sale in the United States in 1975; a year later two film studios, Universal City\nStudios and Walt Disney Productions, filed a law suit alleging that consumers were using the\nBetamax to infringe their copyrights and that Sony Corporation, the manufacturer of the\ndevice, was responsible for any copyright infringement made possible by the new machine.\nBefore the Supreme Court could determine the manufacturer\xe2\x80\x99s liability, it first had to\ndetermine whether the consumers who used the Betamax machines in their own homes were\ninfringing copyright in the first place. The Sony v. Universal City Studios was initially argued\nbefore the Court in January of 1983, but the issues proved to be so fraught that the Justices\nheld the case over for a term and scheduled it for re-argument in October 1983. In\nDecember the following year the Supreme Court finally issued its ruling.\nIn the Sony Betamax case, the Supreme Court held by a five to four majority that noncommercial consumer time-shifting of free-to-air broadcast television was fair use. In other\nwords, although consumers had no right to use the VCR to permanent copies of broadcasts,\nthey did have the right to make temporary copies so that they could watch programs at a\nmore convenient time. The majority opinion, authored by Justice Stevens, found timeshifting in these circumstances was fair use for two principle reasons. First, because timeshifting merely enabled viewers to see works which they had been invited to watch in their\nentirety free of charge, the fact that the entire work was reproduced, did not have its\nordinary effect of militating against a finding of fair use. Second, because the plaintiffs had\noffered no convincing evidence of market harm, the non-commercial use of the VCR by\nconsumers should be considered fair use. The merits and significance of this decision as it\nrelates to the VCR will be addressed later on in this book.\nHarper & Row v. Nation Enterprises, 471 U.S. 539 (1985)\nHarper & Row v. The Nation took place in the aftermath of the Watergate Crisis and the\nensuing resignation of President Richard M. Nixon. Nixon\xe2\x80\x99s suspected involvement with the\ncover-up of the politically motivated burglary of the Democratic National Headquarters at\nthe Watergate hotel complex led to dramatic confrontations between the President and the\nother branches of government. With impeachment by the House of Representatives and\nconviction by the Senate appearing all but certain, Nixon resigned as President on August 9,\n1974. On September 8, 1974, his successor, President Gerald Ford, pardoned him of any and\nall crimes relating to Watergate even though he not yet been indicted.\n209\n\n\x0cA Time to Heal, President Ford\xe2\x80\x99s memoir of his personal and political life was due to be\npublished in mid-1979. Ford\xe2\x80\x99s publisher had given Time Magazine exclusive advanced access\nto the book for a fee of $25,000 (about $90,000 in 2018 dollars) and Time was licensed to\npublish excerpts in its mid-April issue, a week before the memoir was to be released publicly.\nHowever, Time\xe2\x80\x99s story was scooped by another magazine, The Nation, which published an\narticle entitled, The Ford Memoirs, Behind the Pardon on April 3, 1979. Victor Navasky, The\nNation\xe2\x80\x99s editor, had been given temporary access to a draft of Ford\xe2\x80\x99s memoir from an\nundisclosed source. Navasky worked quickly to produce a 2250 word article quoting and\nparaphrasing from a number of sections of the memoirs, focusing on the most newsworthy\naspect of the book, Ford\xe2\x80\x99s account of the Nixon pardon which he considered to be \xe2\x80\x9ca real\nhot news story.\xe2\x80\x9d Having been preempted by The Nation, Time abandoned its story and\nwithheld the second half of its payment under the contract with Ford\xe2\x80\x99s publisher, Harper &\nRow. Harper & Row, in turn, sued the Nation for copyright infringement.\nIn Harper & Row v. Nation Enterprises, the majority of the Supreme Court held that various\nquotes and paraphrases taken from A Time to Heal by the defendants were substantial\nenough to infringe copyright and were not protected by the fair use doctrine. The Supreme\nCourt majority saw The Nation as a bad actor in possession of a \xe2\x80\x9cpurloined manuscript.\xe2\x80\x9d\nWriting for the majority, Justice O\xe2\x80\x99Connor gave no credence to The Nation\xe2\x80\x99s assertion of a\nnews reporting privilege. Instead, she emphasized how the magazine had gone beyond\nmerely reporting the facts and usurped the most valuable portions of Ford\xe2\x80\x99s original\nexpression prior to publication. For the majority, Time\xe2\x80\x99s cancellation of its own article and\nrefusal to pay the second installment under the contract were a direct consequence of being\nscooped by the defendant. These facts proved beyond any doubt that the defendant\xe2\x80\x99s\nconduct had an adverse market effect. This market effect was, according to the majority,\nundoubtedly the single most important element of fair use.\nCampbell v. Acuff-Rose and its legacy\nCampbell v. Acuff-Rose Music, Inc., 510 US 569 (1994)\nJustice Souter delivered the opinion of the Court.\nWe are called upon to decide whether 2 Live Crew\xe2\x80\x99s commercial parody of Roy\nOrbison\xe2\x80\x99s song, \xe2\x80\x9cOh, Pretty Woman,\xe2\x80\x9d may be a fair use within the meaning of the\nCopyright Act of 1976, 17 U. S. C. \xc2\xa7 107. Although the District Court granted\nsummary judgment for 2 Live Crew, the Court of Appeals reversed, holding the\ndefense of fair use barred by the song\xe2\x80\x99s commercial character and excessive\nborrowing. Because we hold that a parody\xe2\x80\x99s commercial character is only one\nelement to be weighed in a fair use enquiry, and that insufficient consideration was\ngiven to the nature of parody in weighing the degree of copying, we reverse and\nremand.\nI\nIn 1964, Roy Orbison and William Dees wrote a rock ballad called \xe2\x80\x9cOh, Pretty\nWoman\xe2\x80\x9d and assigned their rights in it to respondent Acuff-Rose Music, Inc. See\nAppendix A, infra. Acuff-Rose registered the song for copyright protection.\nPetitioners Luther R. Campbell, Christopher Wongwon, Mark Ross, and David\nHobbs are collectively known as 2 Live Crew, a popular rap music group. In 1989,\n210\n\n\x0cCampbell wrote a song entitled \xe2\x80\x9cPretty Woman,\xe2\x80\x9d which he later described in an\naffidavit as intended, \xe2\x80\x9cthrough comical lyrics, to satirize the original work. . . .\xe2\x80\x9d On\nJuly 5, 1989, 2 Live Crew\xe2\x80\x99s manager informed Acuff-Rose that 2 Live Crew had\nwritten a parody of \xe2\x80\x9cOh, Pretty Woman,\xe2\x80\x9d that they would afford all credit for\nownership and authorship of the original song to Acuff-Rose, Dees, and Orbison,\nand that they were willing to pay a fee for the use they wished to make of it.\nEnclosed with the letter were a copy of the lyrics and a recording of 2 Live Crew\xe2\x80\x99s\nsong. Acuff-Rose\xe2\x80\x99s agent refused permission, stating that \xe2\x80\x9cI am aware of the success\nenjoyed by \xe2\x80\x98The 2 Live Crews\xe2\x80\x99, but I must inform you that we cannot permit the use\nof a parody of \xe2\x80\x98Oh, Pretty Woman.\xe2\x80\x99\xe2\x80\x9d Nonetheless, in June or July 1989, 2 Live Crew\nreleased records, cassette tapes, and compact discs of \xe2\x80\x9cPretty Woman\xe2\x80\x9d in a collection\nof songs entitled \xe2\x80\x9cAs Clean As They Wanna Be.\xe2\x80\x9d The albums and compact discs\nidentify the authors of \xe2\x80\x9cPretty Woman\xe2\x80\x9d as Orbison and Dees and its publisher as\nAcuff-Rose.\nAlmost a year later, after nearly a quarter of a million copies of the recording had\nbeen sold, Acuff-Rose sued 2 Live Crew and its record company, Luke Skyywalker\nRecords, for copyright infringement. The District Court granted summary judgment\nfor 2 Live Crew, reasoning that the commercial purpose of 2 Live Crew\xe2\x80\x99s song was\nno bar to fair use; that 2 Live Crew\xe2\x80\x99s version was a parody, which \xe2\x80\x9cquickly\ndegenerates into a play on words, substituting predictable lyrics with shocking ones\xe2\x80\x9d\nto show \xe2\x80\x9chow bland and banal the Orbison song\xe2\x80\x9d is; that 2 Live Crew had taken no\nmore than was necessary to \xe2\x80\x9cconjure up\xe2\x80\x9d the original in order to parody it; and that\nit was \xe2\x80\x9cextremely unlikely that 2 Live Crew\xe2\x80\x99s song could adversely affect the market\nfor the original.\xe2\x80\x9d The District Court weighed these factors and held that 2 Live\nCrew\xe2\x80\x99s song made fair use of Orbison\xe2\x80\x99s original.\nThe Court of Appeals for the Sixth Circuit reversed and remanded. 972 F. 2d 1429,\n1439 (1992). Although it assumed for the purpose of its opinion that 2 Live Crew\xe2\x80\x99s\nsong was a parody of the Orbison original, the Court of Appeals thought the District\nCourt had put too little emphasis on the fact that \xe2\x80\x9cevery commercial use . . . is\npresumptively . . . unfair,\xe2\x80\x9d Sony Corp. of America v. Universal City Studios, Inc., 464 U. S.\n417, 451 (1984), and it held that \xe2\x80\x9cthe admittedly commercial nature\xe2\x80\x9d of the parody\n\xe2\x80\x9crequires the conclusion\xe2\x80\x9d that the first of four factors relevant under the statute\nweighs against a finding of fair use. Next, the Court of Appeals determined that, by\n\xe2\x80\x9ctaking the heart of the original and making it the heart of a new work,\xe2\x80\x9d 2 Live Crew\nhad, qualitatively, taken too much. Finally, after noting that the effect on the\npotential market for the original (and the market for derivative works) is\n\xe2\x80\x9cundoubtedly the single most important element of fair use,\xe2\x80\x9d Harper & Row,\nPublishers, Inc. v. Nation Enterprises, 471 U. S. 539, 566 (1985), the Court of Appeals\nfaulted the District Court for \xe2\x80\x9crefusing to indulge the presumption\xe2\x80\x9d that \xe2\x80\x9charm for\npurposes of the fair use analysis has been established by the presumption attaching\nto commercial uses.\xe2\x80\x9d In sum, the court concluded that its \xe2\x80\x9cblatantly commercial\npurpose . . . prevents this parody from being a fair use.\xe2\x80\x9d\nWe granted certiorari to determine whether 2 Live Crew\xe2\x80\x99s commercial parody could\nbe a fair use.\nII\n\n211\n\n\x0cIt is uncontested here that 2 Live Crew\xe2\x80\x99s song would be an infringement of AcuffRose\xe2\x80\x99s rights in \xe2\x80\x9cOh, Pretty Woman,\xe2\x80\x9d under the Copyright Act of 1976, 17 U. S. C. \xc2\xa7\n106, but for a finding of fair use through parody. From the infancy of copyright\nprotection, some opportunity for fair use of copyrighted materials has been thought\nnecessary to fulfill copyright\xe2\x80\x99s very purpose, \xe2\x80\x9c[t]o promote the Progress of Science\nand useful Arts. . . .\xe2\x80\x9d U. S. Const., Art. I, \xc2\xa7 8, cl. 8.5\nFootnote 5: The exclusion of facts and ideas from copyright protection serves that goal as well. See \xc2\xa7 102(b) (\xe2\x80\x9cIn\nno case does copyright protection for an original work of authorship extend to any idea, procedure, process,\nsystem, method of operation, concept, principle, or discovery...\xe2\x80\x9d); Feist Publications, Inc. v. Rural Telephone Service Co.,\n499 U. S. 340, 359 (1991) (\xe2\x80\x9c[F]acts contained in existing works may be freely copied\xe2\x80\x9d); Harper & Row, Publishers,\nInc. v. Nation Enterprises, 471 U. S. 539, 547 (1985) (copyright owner\xe2\x80\x99s rights exclude facts and ideas, and fair use).\n\nFor as Justice Story explained, \xe2\x80\x9c[i]n truth, in literature, in science and in art, there are,\nand can be, few, if any, things, which in an abstract sense, are strictly new and\noriginal throughout. Every book in literature, science and art, borrows, and must\nnecessarily borrow, and use much which was well known and used before.\xe2\x80\x9d Emerson v.\nDavies, 8 F. Cas. 615, 619 (No. 4,436) (CCD Mass. 1845). Similarly, Lord\nEllenborough expressed the inherent tension in the need simultaneously to protect\ncopyrighted material and to allow others to build upon it when he wrote, \xe2\x80\x9cwhile I\nshall think myself bound to secure every man in the enjoyment of his copy-right, one\nmust not put manacles upon science.\xe2\x80\x9d Carey v. Kearsley 170 Eng. Rep. 679, 681 (K. B.\n1803). In copyright cases brought under the Statute of Anne of 1710, English courts\nheld that in some instances \xe2\x80\x9cfair abridgements\xe2\x80\x9d would not infringe an author\xe2\x80\x99s rights,\nand although the First Congress enacted our initial copyright statute, Act of May 31,\n1790, 1 Stat. 124, without any explicit reference to \xe2\x80\x9cfair use,\xe2\x80\x9d as it later came to be\nknown, the doctrine was recognized by the American courts nonetheless.\nIn Folsom v. Marsh, 9 F. Cas. 342 (No. 4,901) (CCD Mass. 1841), Justice Story distilled\nthe essence of law and methodology from the earlier cases: \xe2\x80\x9clook to the nature and\nobjects of the selections made, the quantity and value of the materials used, and the\ndegree in which the use may prejudice the sale, or diminish the profits, or supersede\nthe objects, of the original work.\xe2\x80\x9d Id., at 348. Thus expressed, fair use remained\nexclusively judge-made doctrine until the passage of the 1976 Copyright Act, in\nwhich Justice Story\xe2\x80\x99s summary is discernible:\n\xc2\xa7 107. Limitations on exclusive rights: Fair use\nNotwithstanding the provisions of sections 106 and 106A, the fair use of a\ncopyrighted work, including such use by reproduction in copies or phonorecords or\nby any other means specified by that section, for purposes such as criticism,\ncomment, news reporting, teaching (including multiple copies for classroom use),\nscholarship, or research, is not an infringement of copyright. In determining\nwhether the use made of a work in any particular case is a fair use the factors to be\nconsidered shall include\xe2\x80\x94\n(1) the purpose and character of the use, including whether such use is of a\ncommercial nature or is for non-profit educational purposes;\n(2) the nature of the copyrighted work;\n(3) the amount and substantiality of the portion used in relation to the copyrighted\nwork as a whole; and\n\n212\n\n\x0c(4) the effect of the use upon the potential market for or value of the copyrighted\nwork.\nThe fact that a work is unpublished shall not itself bar a finding of fair use if such\nfinding is made upon consideration of all the above factors.\n\nCongress meant \xc2\xa7 107 \xe2\x80\x9cto restate the present judicial doctrine of fair use, not to\nchange, narrow, or enlarge it in any way\xe2\x80\x9d and intended that courts continue the\ncommon-law tradition of fair use adjudication. H. R. Rep. No. 94-1476, p. 66 (1976)\n(hereinafter House Report); S. Rep. No. 94-473, p. 62 (1975) (hereinafter Senate\nReport). The fair use doctrine thus \xe2\x80\x9cpermits [and requires] courts to avoid rigid\napplication of the copyright statute when, on occasion, it would stifle the very\ncreativity which that law is designed to foster.\xe2\x80\x9d Stewart v. Abend, 495 U. S. 207, 236\n(1990) (internal quotation marks and citation omitted).\nThe task is not to be simplified with bright-line rules, for the statute, like the doctrine\nit recognizes, calls for case-by-case analysis. Harper & Row, 471 U. S., at 560; Sony,\n464 U.S., at 448, and n. 31; House Report, pp. 65-66; Senate Report, p. 62. The text\nemploys the terms \xe2\x80\x9cincluding\xe2\x80\x9d and \xe2\x80\x9csuch as\xe2\x80\x9d in the preamble paragraph to indicate\nthe \xe2\x80\x9cillustrative and not limitative\xe2\x80\x9d function of the examples given, \xc2\xa7 101; see Harper\n& Row, supra, at 561, which thus provide only general guidance about the sorts of\ncopying that courts and Congress most commonly had found to be fair uses. Nor\nmay the four statutory factors be treated in isolation, one from another. All are to be\nexplored, and the results weighed together, in light of the purposes of copyright.10\nFootnote 10: Because the fair use enquiry often requires close questions of judgment as to the extent of\npermissible borrowing in cases involving parodies (or other critical works), courts may also wish to bear in mind\nthat the goals of the copyright law, \xe2\x80\x9cto stimulate the creation and publication of edifying matter,\xe2\x80\x9d Leval, Toward a\nFair Use Standard, 103 HARVARD LAW REVIEW 1105, 1134 (1990) (hereinafter Leval), are not always best served by\nautomatically granting injunctive relief when parodists are found to have gone beyond the bounds of fair use. See\n17 U. S. C. \xc2\xa7 502(a) (court \xe2\x80\x9cmay . . . grant . . . injunctions on such terms as it may deem reasonable to prevent or\nrestrain infringement\xe2\x80\x9d) (emphasis added); Leval 1132 (while in the \xe2\x80\x9cvast majority of cases, [an injunctive] remedy\nis justified because most infringements are simple piracy,\xe2\x80\x9d such cases are \xe2\x80\x9cworlds apart from many of those\nraising reasonable contentions of fair use\xe2\x80\x9d where \xe2\x80\x9cthere may be a strong public interest in the publication of the\nsecondary work [and] the copyright owner\xe2\x80\x99s interest may be adequately protected by an award of damages for\nwhatever infringement is found\xe2\x80\x9d); Abend v. MCA, Inc., 863 F. 2d 1465, 1479 (CA9 1988) (finding \xe2\x80\x9cspecial\ncircumstances\xe2\x80\x9d that would cause \xe2\x80\x9cgreat injustice\xe2\x80\x9d to defendants and \xe2\x80\x9cpublic injury\xe2\x80\x9d were injunction to issue),\naff\xe2\x80\x99d sub nom. Stewart v. Abend, 495 U. S. 207 (1990).\n\nA\nThe first factor in a fair use enquiry is \xe2\x80\x9cthe purpose and character of the use,\nincluding whether such use is of a commercial nature or is for nonprofit educational\npurposes.\xe2\x80\x9d \xc2\xa7 107(1). This factor draws on Justice Story\xe2\x80\x99s formulation, \xe2\x80\x9cthe nature\nand objects of the selections made.\xe2\x80\x9d Folsom v. Marsh, supra, at 348. The enquiry here\nmay be guided by the examples given in the preamble to \xc2\xa7 107, looking to whether\nthe use is for criticism, or comment, or news reporting, and the like, see \xc2\xa7 107. The\ncentral purpose of this investigation is to see, in Justice Story\xe2\x80\x99s words, whether the\nnew work merely \xe2\x80\x9csupersede[s] the objects\xe2\x80\x9d of the original creation, Folsom v. Marsh,\nsupra, at 348; accord, Harper & Row, supra, at 562 (\xe2\x80\x9csupplanting\xe2\x80\x9d the original), or\ninstead adds something new, with a further purpose or different character, altering\nthe first with new expression, meaning, or message; it asks, in other words, whether\nand to what extent the new work is \xe2\x80\x9ctransformative.\xe2\x80\x9d Leval 1111. Although such\ntransformative use is not absolutely necessary for a finding of fair use, Sony, supra, at\n\n213\n\n\x0c455, n. 40,11 the goal of copyright, to promote science and the arts, is generally\nfurthered by the creation of transformative works. Such works thus lie at the heart of\nthe fair use doctrine\xe2\x80\x99s guarantee of breathing space within the confines of copyright,\nsee, e.g., Sony, supra, at 478-480 (Blackmun, J., dissenting), and the more\ntransformative the new work, the less will be the significance of other factors, like\ncommercialism, that may weigh against a finding of fair use.\nFootnote 11: The obvious statutory exception to this focus on transformative uses is the straight reproduction of\nmultiple copies for classroom distribution.\n\nThis Court has only once before even considered whether parody may be fair use,\nand that time issued no opinion because of the Court\xe2\x80\x99s equal division. Benny v. Loew\xe2\x80\x99s\nInc., 239 F. 2d 532 (CA9 1956), aff\xe2\x80\x99d sub nom. Columbia Broadcasting System, Inc. v.\nLoew\xe2\x80\x99s Inc., 356 U. S. 43 (1958). Suffice it to say now that parody has an obvious\nclaim to transformative value, as Acuff-Rose itself does not deny. Like less ostensibly\nhumorous forms of criticism, it can provide social benefit, by shedding light on an\nearlier work, and, in the process, creating a new one. We thus line up with the courts\nthat have held that parody, like other comment or criticism, may claim fair use under\n\xc2\xa7 107. See, e.g., Fisher v. Dees, 794 F. 2d 432 (CA9 1986) (\xe2\x80\x9cWhen Sonny Sniffs Glue,\xe2\x80\x9d\na parody of \xe2\x80\x9cWhen Sunny Gets Blue,\xe2\x80\x9d is fair use); Elsmere Music, Inc. v. National\nBroadcasting Co., 482 F. Supp. 741 (SDNY), aff\xe2\x80\x99d, 623 F. 2d 252 (CA2 1980) (\xe2\x80\x9cI Love\nSodom,\xe2\x80\x9d a \xe2\x80\x9cSaturday Night Live\xe2\x80\x9d television parody of \xe2\x80\x9cI Love New York,\xe2\x80\x9d is fair\nuse); see also House Report, p. 65; Senate Report, p. 61 (\xe2\x80\x9c[U]se in a parody of some of\nthe content of the work parodied\xe2\x80\x9d may be fair use).\nThe germ of parody lies in the definition of the Greek parodeia, quoted in Judge\nNelson\xe2\x80\x99s Court of Appeals dissent, as \xe2\x80\x9ca song sung alongside another.\xe2\x80\x9d 972 F. 2d, at\n1440, quoting 7 Encyclopedia Britannica 768 (15th ed. 1975). Modern dictionaries\naccordingly describe a parody as a \xe2\x80\x9cliterary or artistic work that imitates the\ncharacteristic style of an author or a work for comic effect or ridicule,\xe2\x80\x9d or as a\n\xe2\x80\x9ccomposition in prose or verse in which the characteristic turns of thought and\nphrase in an author or class of authors are imitated in such a way as to make them\nappear ridiculous.\xe2\x80\x9d For the purposes of copyright law, the nub of the definitions, and\nthe heart of any parodist\xe2\x80\x99s claim to quote from existing material, is the use of some\nelements of a prior author\xe2\x80\x99s composition to create a new one that, at least in part,\ncomments on that author\xe2\x80\x99s works. See, e.g., Fisher v. Dees, supra, at 437; MCA, Inc. v.\nWilson, 677 F. 2d 180, 185 (CA2 1981). If, on the contrary, the commentary has no\ncritical bearing on the substance or style of the original composition, which the\nalleged infringer merely uses to get attention or to avoid the drudgery in working up\nsomething fresh, the claim to fairness in borrowing from another\xe2\x80\x99s work diminishes\naccordingly (if it does not vanish), and other factors, like the extent of its\ncommerciality, loom larger.14\nFootnote 14: A parody that more loosely targets an original than the parody presented here may still be\nsufficiently aimed at an original work to come within our analysis of parody. If a parody whose wide\ndissemination in the market runs the risk of serving as a substitute for the original or licensed derivatives\n(see infra, at 590-594, discussing factor four), it is more incumbent on one claiming fair use to establish the extent\nof transformation and the parody\xe2\x80\x99s critical relationship to the original. By contrast, when there is little or no risk\nof market substitution, whether because of the large extent of transformation of the earlier work, the new work\xe2\x80\x99s\nminimal distribution in the market, the small extent to which it borrows from an original, or other factors, taking\nparodic aim at an original is a less critical factor in the analysis, and looser forms of parody may be found to be\nfair use, as may satire with lesser justification for the borrowing than would otherwise be required.\n\n214\n\n\x0cParody needs to mimic an original to make its point, and so has some claim to use\nthe creation of its victim\xe2\x80\x99s (or collective victims\xe2\x80\x99) imagination, whereas satire can\nstand on its own two feet and so requires justification for the very act of borrowing.15\nFootnote 15: Satire has been defined as a work \xe2\x80\x9cin which prevalent follies or vices are assailed with ridicule,\xe2\x80\x9d 14\nOxford English Dictionary at 500, or are \xe2\x80\x9cattacked through irony, derision, or wit,\xe2\x80\x9d American Heritage\nDictionary at 1604.\n\nThe fact that parody can claim legitimacy for some appropriation does not, of course,\ntell either parodist or judge much about where to draw the line. Like a book review\nquoting the copyrighted material criticized, parody may or may not be fair use, and\npetitioners\xe2\x80\x99 suggestion that any parodic use is presumptively fair has no more\njustification in law or fact than the equally hopeful claim that any use for news\nreporting should be presumed fair, see Harper & Row, 471 U.S., at 561. The Act has\nno hint of an evidentiary preference for parodists over their victims, and no\nworkable presumption for parody could take account of the fact that parody often\nshades into satire when society is lampooned through its creative artifacts, or that a\nwork may contain both parodic and nonparodic elements. Accordingly, parody, like\nany other use, has to work its way through the relevant factors, and be judged case\nby case, in light of the ends of the copyright law.\nHere, the District Court held, and the Court of Appeals assumed, that 2 Live Crew\xe2\x80\x99s\n\xe2\x80\x9cPretty Woman\xe2\x80\x9d contains parody, commenting on and criticizing the original work,\nwhatever it may have to say about society at large. As the District Court remarked,\nthe words of 2 Live Crew\xe2\x80\x99s song copy the original\xe2\x80\x99s first line, but then \xe2\x80\x9cquickly\ndegenerate into a play on words, substituting predictable lyrics with shocking ones\nthat derisively demonstrate how bland and banal the Orbison song seems to them.\xe2\x80\x9d\nJudge Nelson, dissenting below, came to the same conclusion, that the 2 Live Crew\nsong \xe2\x80\x9cwas clearly intended to ridicule the white-bread original\xe2\x80\x9d and \xe2\x80\x9creminds us that\nsexual congress with nameless streetwalkers is not necessarily the stuff of romance\nand is not necessarily without its consequences. The singers (there are several) have\nthe same thing on their minds as did the lonely man with the nasal voice, but here\nthere is no hint of wine and roses.\xe2\x80\x9d Although the majority below had difficulty\ndiscerning any criticism of the original in 2 Live Crew\xe2\x80\x99s song, it assumed for\npurposes of its opinion that there was some.\nWe have less difficulty in finding that critical element in 2 Live Crew\xe2\x80\x99s song than the\nCourt of Appeals did, although having found it we will not take the further step of\nevaluating its quality. The threshold question when fair use is raised in defense of\nparody is whether a parodic character may reasonably be perceived.16\nFootnote 16: The only further judgment, indeed, that a court may pass on a work goes to an assessment of\nwhether the parodic element is slight or great, and the copying small or extensive in relation to the parodic\nelement, for a work with slight parodic element and extensive copying will be more likely to merely \xe2\x80\x9csupersede\nthe objects\xe2\x80\x9d of the original. See infra, at 586-594, discussing factors three and four.\n\nWhether, going beyond that, parody is in good taste or bad does not and should not\nmatter to fair use. As Justice Holmes explained, \xe2\x80\x9cit would be a dangerous\nundertaking for persons trained only to the law to constitute themselves final judges\nof the worth of [a work], outside of the narrowest and most obvious limits. At the\none extreme some works of genius would be sure to miss appreciation. Their very\nnovelty would make them repulsive until the public had learned the new language in\nwhich their author spoke.\xe2\x80\x9d Bleistein v. Donaldson Lithographing Co., 188 U. S. 239, 251\n215\n\n\x0c(1903) (circus posters have copyright protection); cf. Yankee Publishing Inc. v. News\nAmerica Publishing, Inc., 809 F. Supp. 267, 280 (SDNY 1992) (Leval, J.) (\xe2\x80\x9cFirst\nAmendment protections do not apply only to those who speak clearly, whose jokes\nare funny, and whose parodies succeed\xe2\x80\x9d) (trademark case).\nWhile we might not assign a high rank to the parodic element here, we think it fair to\nsay that 2 Live Crew\xe2\x80\x99s song reasonably could be perceived as commenting on the\noriginal or criticizing it, to some degree. 2 Live Crew juxtaposes the romantic\nmusings of a man whose fantasy comes true, with degrading taunts, a bawdy demand\nfor sex, and a sigh of relief from paternal responsibility. The later words can be taken\nas a comment on the naivete of the original of an earlier day, as a rejection of its\nsentiment that ignores the ugliness of street life and the debasement that it signifies.\nIt is this joinder of reference and ridicule that marks off the author\xe2\x80\x99s choice of\nparody from the other types of comment and criticism that traditionally have had a\nclaim to fair use protection as transformative works.17\nFootnote 17: We note in passing that 2 Live Crew need not label their whole album, or even this song, a parody\nin order to claim fair use protection, nor should 2 Live Crew be penalized for this being its first parodic essay.\nParody serves its goals whether labeled or not, and there is no reason to require parody to state the obvious (or\neven the reasonably perceived).\n\nThe Court of Appeals, however, immediately cut short the enquiry into 2 Live\nCrew\xe2\x80\x99s fair use claim by confining its treatment of the first factor essentially to one\nrelevant fact, the commercial nature of the use. The court then inflated the\nsignificance of this fact by applying a presumption ostensibly culled from Sony, that\n\xe2\x80\x9cevery commercial use of copy-righted material is presumptively unfair. . . .\xe2\x80\x9d Sony,\n464 U.S., at 451. In giving virtually dispositive weight to the commercial nature of\nthe parody, the Court of Appeals erred.\nThe language of the statute makes clear that the commercial or nonprofit educational\npurpose of a work is only one element of the first factor enquiry into its purpose and\ncharacter. Section 107(1) uses the term \xe2\x80\x9cincluding\xe2\x80\x9d to begin the dependent clause\nreferring to commercial use, and the main clause speaks of a broader investigation\ninto \xe2\x80\x9cpurpose and character.\xe2\x80\x9d As we explained in Harper & Row, Congress resisted\nattempts to narrow the ambit of this traditional enquiry by adopting categories of\npresumptively fair use, and it urged courts to preserve the breadth of their\ntraditionally ample view of the universe of relevant evidence. 471 U. S., at 561; House\nReport, p. 66. Accordingly, the mere fact that a use is educational and not for profit\ndoes not insulate it from a finding of infringement, any more than the commercial\ncharacter of a use bars a finding of fairness. If, indeed, commerciality carried\npresumptive force against a finding of fairness, the presumption would swallow\nnearly all of the illustrative uses listed in the preamble paragraph of \xc2\xa7 107, including\nnews reporting, comment, criticism, teaching, scholarship, and research, since these\nactivities \xe2\x80\x9care generally conducted for profit in this country.\xe2\x80\x9d Harper & Row, supra, at\n592 (Brennan, J., dissenting). Congress could not have intended such a rule, which\ncertainly is not inferable from the common-law cases, arising as they did from the\nworld of letters in which Samuel Johnson could pronounce that \xe2\x80\x9c[n]o man but a\nblockhead ever wrote, except for money.\xe2\x80\x9d 3 Boswell\xe2\x80\x99s Life of Johnson 19 (G. Hill ed.\n1934).\n\n216\n\n\x0cSony itself called for no hard evidentiary presumption. There, we emphasized the\nneed for a \xe2\x80\x9csensitive balancing of interests,\xe2\x80\x9d 464 U.S., at 455, n. 40, noted that\nCongress had \xe2\x80\x9ceschewed a rigid, bright-line approach to fair use,\xe2\x80\x9d id., at 449, n. 31,\nand stated that the commercial or nonprofit educational character of a work is \xe2\x80\x9cnot\nconclusive,\xe2\x80\x9d id., at 448-449, but rather a fact to be \xe2\x80\x9cweighed along with other[s] in\nfair use decisions,\xe2\x80\x9d id., at 449, n. 32 (quoting House Report, p. 66). The Court of\nAppeals\xe2\x80\x99 elevation of one sentence from Sony to a per se rule thus runs as much\ncounter to Sony itself as to the long common-law tradition of fair use adjudication.\nRather, as we explained in Harper & Row, Sony stands for the proposition that the\n\xe2\x80\x9cfact that a publication was commercial as opposed to nonprofit is a separate factor\nthat tends to weigh against a finding of fair use.\xe2\x80\x9d 471 U.S., at 562. But that is all, and\nthe fact that even the force of that tendency will vary with the context is a further\nreason against elevating commerciality to hard presumptive significance. The use, for\nexample, of a copyrighted work to advertise a product, even in a parody, will be\nentitled to less indulgence under the first factor of the fair use enquiry than the sale\nof a parody for its own sake, let alone one performed a single time by students in\nschool. See generally Fisher v. Dees, 794 F. 2d, at 437; Maxtone-Graham v. Burtchaell, 803\nF. 2d 1253, 1262 (CA2 1986); Sega Enterprises Ltd. v. Accolade, Inc., 977 F. 2d 1510,\n1522 (CA9 1992).18\nFootnote 18: Finally, regardless of the weight one might place on the alleged infringer\xe2\x80\x99s state of mind, compare\nHarper & Row, 471 U. S., at 562 (fair use presupposes good faith and fair dealing) (quotation marks omitted), with\nFolsom v. Marsh, 9 F. Cas. 342, 349 (No. 4,901) (CCD Mass. 1841) (good faith does not bar a finding of\ninfringement); Leval 1126-1127 (good faith irrelevant to fair use analysis), we reject Acuff-Rose\xe2\x80\x99s argument that 2\nLive Crew\xe2\x80\x99s request for permission to use the original should be weighed against a finding of fair use. Even if\ngood faith were central to fair use, 2 Live Crew\xe2\x80\x99s actions do not necessarily suggest that they believed their\nversion was not fair use; the offer may simply have been made in a good-faith effort to avoid this litigation. If the\nuse is otherwise fair, then no permission need be sought or granted. Thus, being denied permission to use a work\ndoes not weigh against a finding of fair use. See Fisher v. Dees, 794 F. 2d 432, 437 (CA9 1986).\n\nB\nThe second statutory factor, \xe2\x80\x9cthe nature of the copy-righted work,\xe2\x80\x9d \xc2\xa7 107(2), draws\non Justice Story\xe2\x80\x99s expression, the \xe2\x80\x9cvalue of the materials used.\xe2\x80\x9d Folsom v. Marsh, 9 F.\nCas., at 348. This factor calls for recognition that some works are closer to the core\nof intended copyright protection than others, with the consequence that fair use is\nmore difficult to establish when the former works are copied. We agree with both\nthe District Court and the Court of Appeals that the Orbison original\xe2\x80\x99s creative\nexpression for public dissemination falls within the core of the copyright\xe2\x80\x99s protective\npurposes. This fact, however, is not much help in this case, or ever likely to help\nmuch in separating the fair use sheep from the infringing goats in a parody case,\nsince parodies almost invariably copy publicly known, expressive works.\nC\nThe third factor asks whether \xe2\x80\x9cthe amount and substantiality of the portion used in\nrelation to the copyrighted work as a whole,\xe2\x80\x9d \xc2\xa7 107(3) (or, in Justice Story\xe2\x80\x99s words,\n\xe2\x80\x9cthe quantity and value of the materials used,\xe2\x80\x9d Folsom v. Marsh, supra, at 348) are\nreasonable in relation to the purpose of the copying. Here, attention turns to the\npersuasiveness of a parodist\xe2\x80\x99s justification for the particular copying done, and the\nenquiry will harken back to the first of the statutory factors, for, as in prior cases, we\nrecognize that the extent of permissible copying varies with the purpose and\ncharacter of the use. See Sony, supra, at 449-450 (reproduction of entire work \xe2\x80\x9cdoes\n217\n\n\x0cnot have its ordinary effect of militating against a finding of fair use\xe2\x80\x9d as to home\nvideotaping of television programs); Harper & Row, supra, at 564 (\xe2\x80\x9c[E]ven substantial\nquotations might qualify as fair use in a review of a published work or a news\naccount of a speech\xe2\x80\x9d but not in a scoop of a soon-to-be-published memoir). The\nfacts bearing on this factor will also tend to address the fourth, by revealing the\ndegree to which the parody may serve as a market substitute for the original or\npotentially licensed derivatives. See Leval 1123.\nThe District Court considered the song\xe2\x80\x99s parodic purpose in finding that 2 Live\nCrew had not helped themselves overmuch. The Court of Appeals disagreed, stating\nthat \xe2\x80\x9c[w]hile it may not be inappropriate to find that no more was taken than\nnecessary, the copying was qualitatively substantial. . . . We conclude that taking the\nheart of the original and making it the heart of a new work was to purloin a\nsubstantial portion of the essence of the original.\xe2\x80\x9d\nThe Court of Appeals is of course correct that this factor calls for thought not only\nabout the quantity of the materials used, but about their quality and importance, too.\nIn Harper & Row, for example, the Nation had taken only some 300 words out of\nPresident Ford\xe2\x80\x99s memoirs, but we signaled the significance of the quotations in\nfinding them to amount to \xe2\x80\x9cthe heart of the book,\xe2\x80\x9d the part most likely to be\nnewsworthy and important in licensing serialization. 471 U.S., at 564-566, 568\n(internal quotation marks omitted). We also agree with the Court of Appeals that\nwhether \xe2\x80\x9ca substantial portion of the infringing work was copied verbatim\xe2\x80\x9d from the\ncopyrighted work is a relevant question, for it may reveal a dearth of transformative\ncharacter or purpose under the first factor, or a greater likelihood of market harm\nunder the fourth; a work composed primarily of an original, particularly its heart,\nwith little added or changed, is more likely to be a merely superseding use, fulfilling\ndemand for the original.\nWhere we part company with the court below is in applying these guides to parody,\nand in particular to parody in the song before us. Parody presents a difficult case.\nParody\xe2\x80\x99s humor, or in any event its comment, necessarily springs from recognizable\nallusion to its object through distorted imitation. Its art lies in the tension between a\nknown original and its parodic twin. When parody takes aim at a particular original\nwork, the parody must be able to \xe2\x80\x9cconjure up\xe2\x80\x9d at least enough of that original to\nmake the object of its critical wit recognizable. See, e.g., Elsmere Music, 623 F. 2d, at\n253, n. 1; Fisher v. Dees, 794 F. 2d, at 438-439. What makes for this recognition is\nquotation of the original\xe2\x80\x99s most distinctive or memorable features, which the\nparodist can be sure the audience will know. Once enough has been taken to assure\nidentification, how much more is reasonable will depend, say, on the extent to which\nthe song\xe2\x80\x99s overriding purpose and character is to parody the original or, in contrast,\nthe likelihood that the parody may serve as a market substitute for the original. But\nusing some characteristic features cannot be avoided.\nWe think the Court of Appeals was insufficiently appreciative of parody\xe2\x80\x99s need for\nthe recognizable sight or sound when it ruled 2 Live Crew\xe2\x80\x99s use unreasonable as a\nmatter of law. It is true, of course, that 2 Live Crew copied the characteristic opening\nbass riff (or musical phrase) of the original, and true that the words of the first line\ncopy the Orbison lyrics. But if quotation of the opening riff and the first line may be\nsaid to go to the \xe2\x80\x9cheart\xe2\x80\x9d of the original, the heart is also what most readily conjures\n218\n\n\x0cup the song for parody, and it is the heart at which parody takes aim. Copying does\nnot become excessive in relation to parodic purpose merely because the portion\ntaken was the original\xe2\x80\x99s heart. If 2 Live Crew had copied a significantly less\nmemorable part of the original, it is difficult to see how its parodic character would\nhave come through. See Fisher v. Dees, supra, at 439.\nThis is not, of course, to say that anyone who calls himself a parodist can skim the\ncream and get away scot free. In parody, as in news reporting, see Harper & Row,\nsupra, context is everything, and the question of fairness asks what else the parodist\ndid besides go to the heart of the original. It is significant that 2 Live Crew not only\ncopied the first line of the original, but thereafter departed markedly from the\nOrbison lyrics for its own ends. 2 Live Crew not only copied the bass riff and\nrepeated it, but also produced otherwise distinctive sounds, interposing \xe2\x80\x9cscraper\xe2\x80\x9d\nnoise, over-laying the music with solos in different keys, and altering the drum beat.\nThis is not a case, then, where \xe2\x80\x9ca substantial portion\xe2\x80\x9d of the parody itself is\ncomposed of a \xe2\x80\x9cverbatim\xe2\x80\x9d copying of the original. It is not, that is, a case where the\nparody is so insubstantial, as compared to the copying, that the third factor must be\nresolved as a matter of law against the parodists.\nSuffice it to say here that, as to the lyrics, we think the Court of Appeals correctly\nsuggested that \xe2\x80\x9cno more was taken than necessary,\xe2\x80\x9d but just for that reason, we fail\nto see how the copying can be excessive in relation to its parodic purpose, even if the\nportion taken is the original\xe2\x80\x99s \xe2\x80\x9cheart.\xe2\x80\x9d As to the music, we express no opinion\nwhether repetition of the bass riff is excessive copying, and we remand to permit\nevaluation of the amount taken, in light of the song\xe2\x80\x99s parodic purpose and character,\nits transformative elements, and considerations of the potential for market\nsubstitution sketched more fully below.\nD\nThe fourth fair use factor is \xe2\x80\x9cthe effect of the use upon the potential market for or\nvalue of the copyrighted work.\xe2\x80\x9d \xc2\xa7 107(4). It requires courts to consider not only the\nextent of market harm caused by the particular actions of the alleged infringer, but\nalso \xe2\x80\x9cwhether unrestricted and widespread conduct of the sort engaged in by the\ndefendant . . . would result in a substantially adverse impact on the potential market\xe2\x80\x9d\nfor the original. Harper & Row, 471 U. S., at 569; Senate Report, p. 65; Folsom v. Marsh,\n9 F. Cas., at 349. The enquiry \xe2\x80\x9cmust take account not only of harm to the original\nbut also of harm to the market for derivative works.\xe2\x80\x9d Harper & Row, supra, at 568.\nSince fair use is an affirmative defense,20 its proponent would have difficulty carrying\nthe burden of demonstrating fair use without favorable evidence about relevant\nmarkets.21\nFootnote 20: Harper & Row, 471 U. S., at 561; H. R. Rep. No. 102-836, p. 3, n. 3 (1992).\nFootnote 21: Even favorable evidence, without more, is no guarantee of fairness. Judge Leval gives the example\nof the film producer\xe2\x80\x99s appropriation of a composer\xe2\x80\x99s previously unknown song that turns the song into a\ncommercial success; the boon to the song does not make the film\xe2\x80\x99s simple copying fair. Leval 1124, n. 84. This\nfactor, no less than the other three, may be addressed only through a \xe2\x80\x9csensitive balancing of interests.\xe2\x80\x9d Sony Corp.\nof America v. Universal City Studios, Inc., 464 U. S. 417, 455, n. 40 (1984). Market harm is a matter of degree, and the\nimportance of this factor will vary, not only with the amount of harm, but also with the relative strength of the\nshowing on the other factors.\n\n219\n\n\x0cIn moving for summary judgment, 2 Live Crew left themselves at just such a\ndisadvantage when they failed to address the effect on the market for rap derivatives,\nand confined themselves to uncontroverted submissions that there was no likely\neffect on the market for the original. They did not, however, thereby subject\nthemselves to the evidentiary presumption applied by the Court of Appeals. In\nassessing the likelihood of significant market harm, the Court of Appeals quoted\nfrom language in Sony that \xe2\x80\x9c\xe2\x80\x98[i]f the intended use is for commercial gain, that\nlikelihood may be presumed. But if it is for a noncommercial purpose, the likelihood\nmust be demonstrated.\xe2\x80\x99\xe2\x80\x9d The court reasoned that because \xe2\x80\x9cthe use of the\ncopyrighted work is wholly commercial, . . . we presume that a likelihood of future\nharm to Acuff-Rose exists.\xe2\x80\x9d In so doing, the court resolved the fourth factor against\n2 Live Crew, just as it had the first, by applying a presumption about the effect of\ncommercial use, a presumption which as applied here we hold to be error.\nNo \xe2\x80\x9cpresumption\xe2\x80\x9d or inference of market harm that might find support in Sony is\napplicable to a case involving something beyond mere duplication for commercial\npurposes. Sony\xe2\x80\x99s discussion of a presumption contrasts a context of verbatim\ncopying of the original in its entirety for commercial purposes, with the\nnoncommercial context of Sony itself (home copying of television programming). In\nthe former circumstances, what Sony said simply makes common sense: when a\ncommercial use amounts to mere duplication of the entirety of an original, it clearly\n\xe2\x80\x9csupersede[s] the objects,\xe2\x80\x9d Folsom v. Marsh, supra, at 348, of the original and serves as\na market replacement for it, making it likely that cognizable market harm to the\noriginal will occur. Sony, supra, at 451. But when, on the contrary, the second use is\ntransformative, market substitution is at least less certain, and market harm may not\nbe so readily inferred. Indeed, as to parody pure and simple, it is more likely that the\nnew work will not affect the market for the original in a way cognizable under this\nfactor, that is, by acting as a substitute for it (\xe2\x80\x9csuperseding its objects\xe2\x80\x9d). This is so\nbecause the parody and the original usually serve different market functions.\nWe do not, of course, suggest that a parody may not harm the market at all, but\nwhen a lethal parody, like a scathing theater review, kills demand for the original, it\ndoes not produce a harm cognizable under the Copyright Act. Because \xe2\x80\x9cparody may\nquite legitimately aim at garroting the original, destroying it commercially as well as\nartistically,\xe2\x80\x9d B. Kaplan, An Unhurried View of Copyright 69 (1967), the role of the\ncourts is to distinguish between \xe2\x80\x9cbiting criticism that merely suppresses demand and\ncopyright infringement, which usurps it.\xe2\x80\x9d Fisher v. Dees, 794 F. 2d, at 438.\nThis distinction between potentially remediable displacement and unremediable\ndisparagement is reflected in the rule that there is no protectible derivative market\nfor criticism. The market for potential derivative uses includes only those that\ncreators of original works would in general develop or license others to develop. Yet\nthe unlikelihood that creators of imaginative works will license critical reviews or\nlampoons of their own productions removes such uses from the very notion of a\npotential licensing market. \xe2\x80\x9cPeople ask . . . for criticism, but they only want praise.\xe2\x80\x9d S.\nMaugham, Of Human Bondage 241 (Penguin ed. 1992). Thus, to the extent that the\nopinion below may be read to have considered harm to the market for parodies of\n\xe2\x80\x9cOh, Pretty Woman,\xe2\x80\x9d the court erred.22\n\n220\n\n\x0cFootnote 22: We express no opinion as to the derivative markets for works using elements of an original as\nvehicles for satire or amusement, making no comment on the original or criticism of it.\n\nIn explaining why the law recognizes no derivative market for critical works,\nincluding parody, we have, of course, been speaking of the later work as if it had\nnothing but a critical aspect (i. e., \xe2\x80\x9cparody pure and simple\xe2\x80\x9d). But the later work may\nhave a more complex character, with effects not only in the arena of criticism but\nalso in protectible markets for derivative works, too. In that sort of case, the law\nlooks beyond the criticism to the other elements of the work, as it does here. 2 Live\nCrew\xe2\x80\x99s song comprises not only parody but also rap music, and the derivative market\nfor rap music is a proper focus of enquiry, see Harper & Row, supra, at 568. Evidence\nof substantial harm to it would weigh against a finding of fair use, because the\nlicensing of derivatives is an important economic incentive to the creation of\noriginals. Of course, the only harm to derivatives that need concern us, as discussed\nabove, is the harm of market substitution. The fact that a parody may impair the\nmarket for derivative uses by the very effectiveness of its critical commentary is no\nmore relevant under copyright than the like threat to the original market.24\nFootnote 24: In some cases it may be difficult to determine whence the harm flows. In such cases, the other fair\nuse factors may provide some indicia of the likely source of the harm. A work whose overriding purpose and\ncharacter is parodic and whose borrowing is slight in relation to its parody will be far less likely to cause\ncognizable harm than a work with little parodic content and much copying.\n\nAlthough 2 Live Crew submitted uncontroverted affidavits on the question of\nmarket harm to the original, neither they, nor Acuff-Rose, introduced evidence or\naffidavits addressing the likely effect of 2 Live Crew\xe2\x80\x99s parodic rap song on the\nmarket for a nonparody, rap version of \xe2\x80\x9cOh, Pretty Woman.\xe2\x80\x9d And while Acuff-Rose\nwould have us find evidence of a rap market in the very facts that 2 Live Crew\nrecorded a rap parody of \xe2\x80\x9cOh, Pretty Woman\xe2\x80\x9d and another rap group sought a\nlicense to record a rap derivative, there was no evidence that a potential rap market\nwas harmed in any way by 2 Live Crew\xe2\x80\x99s parody, rap version. The fact that 2 Live\nCrew\xe2\x80\x99s parody sold as part of a collection of rap songs says very little about the\nparody\xe2\x80\x99s effect on a market for a rap version of the original, either of the music alone\nor of the music with its lyrics. The District Court essentially passed on this issue,\nobserving that Acuff-Rose is free to record \xe2\x80\x9cwhatever version of the original it\ndesires,\xe2\x80\x9d the Court of Appeals went the other way by erroneous presumption.\nContrary to each treatment, it is impossible to deal with the fourth factor except by\nrecognizing that a silent record on an important factor bearing on fair use disentitled\nthe proponent of the defense, 2 Live Crew, to summary judgment. The evidentiary\nhole will doubtless be plugged on remand.\nIII\nIt was error for the Court of Appeals to conclude that the commercial nature of 2\nLive Crew\xe2\x80\x99s parody of \xe2\x80\x9cOh, Pretty Woman\xe2\x80\x9d rendered it presumptively unfair. No\nsuch evidentiary presumption is available to address either the first factor, the\ncharacter and purpose of the use, or the fourth, market harm, in determining\nwhether a transformative use, such as parody, is a fair one. The court also erred in\nholding that 2 Live Crew had necessarily copied excessively from the Orbison\noriginal, considering the parodic purpose of the use. We therefore reverse the\njudgment of the Court of Appeals and remand the case for further proceedings\nconsistent with this opinion.\n221\n\n\x0cIt is so ordered.\nAPPENDIX A TO OPINION OF THE COURT\n\xe2\x80\x9cOh, Pretty Woman\xe2\x80\x9d by Roy Orbison and William Dees\nPretty Woman, walking down the street,\nPretty Woman, the kind I like to meet,\nPretty Woman, I don\xe2\x80\x99t believe you, you\xe2\x80\x99re not the truth,\nNo one could look as good as you Mercy\nPretty Woman, won\xe2\x80\x99t you pardon me,\nPretty Woman, I couldn\xe2\x80\x99t help but see,\nPretty Woman, that you look lovely as can be Are you lonely just like me?\nPretty Woman, stop a while,\nPretty Woman, talk a while,\nPretty Woman give your smile to me\nPretty Woman, yeah, yeah, yeah\nPretty Woman, look my way,\nPretty Woman, say you\xe2\x80\x99ll stay with me\n\xe2\x80\x98Cause I need you, I\xe2\x80\x99ll treat you right\nCome to me baby, Be mine tonight\nPretty Woman, don\xe2\x80\x99t walk on by,\nPretty Woman, don\xe2\x80\x99t make me cry,\nPretty Woman, don\xe2\x80\x99t walk away,\nHey, O. K.\nIf that\xe2\x80\x99s the way it must be, O. K.\nI guess I\xe2\x80\x99ll go on home, it\xe2\x80\x99s late\nThere\xe2\x80\x99ll be tomorrow night, but wait!\nWhat do I see\nIs she walking back to me?\nYeah, she\xe2\x80\x99s walking back to me!\nOh, Pretty Woman.\n\nAPPENDIX B TO OPINION OF THE COURT\n\xe2\x80\x9cPretty Woman\xe2\x80\x9d as Recorded by 2 Live Crew\nPretty woman walkin\xe2\x80\x99 down the street\nPretty woman girl you look so sweet\nPretty woman you bring me down to that knee\n\n222\n\n\x0cPretty woman you make me wanna beg please\nOh, pretty woman\nBig hairy woman you need to shave that stuff\nBig hairy woman you know I bet it\xe2\x80\x99s tough\nBig hairy woman all that hair it ain\xe2\x80\x99t legit\n\xe2\x80\x98Cause you look like \xe2\x80\x98Cousin It\xe2\x80\x99\nBig hairy woman\nBald headed woman girl your hair won\xe2\x80\x99t grow\nBald headed woman you got a teeny weeny afro\nBald headed woman you know your hair could look nice\nBald headed woman first you got to roll it with rice\nBald headed woman here, let me get this hunk of biz for ya\nYa know what I\xe2\x80\x99m saying you look better than rice a roni\nOh bald headed woman\nBig hairy woman come on in\nAnd don\xe2\x80\x99t forget your bald headed friend\nHey pretty woman let the boys Jump in\nTwo timin\xe2\x80\x99 woman girl you know you ain\xe2\x80\x99t right\nTwo timin\xe2\x80\x99 woman you\xe2\x80\x99s out with my boy last night\nTwo timin\xe2\x80\x99 woman that takes a load off my mind\nTwo timin\xe2\x80\x99 woman now I know the baby ain\xe2\x80\x99t mine\nOh, two timin\xe2\x80\x99 woman\nOh pretty woman\n\nNotes and questions\n(1) The transformative use revolution/restoration:\nIn Campbell v. Acuff-Rose, the Supreme Court granted certiorari to review the Sixth Circuit\xe2\x80\x99s\nrather extreme conclusion that fair use afforded virtually no protection for commercial\nparody. The Court could have ruled narrowly by simply walking back some of its illconsidered comments in Sony and Harper & Row and explaining how and why the Sixth\nCircuit had gone too far. Instead, the Court seized the opportunity to set a major course\ncorrection in the doctrine of fair use that came just in time for copyright to meet some of\nthe challenges of the Internet age. In Campbell v. Acuff-Rose, a unanimous Supreme Court\nabandoned much of the language in Sony and Harper & Row and adopted a new vocabulary\ncentered on the concept of transformative use. This new language of transformative use\ncrystallized a positive theory of fair use that the Court derived from the purpose of copyright\nlaw and the structure of the modern copyright act.\nAs Judge Pierre Leval explained in a review essay on the legacy of Campbell v. Acuff-Rose,\n223\n\n\x0cCampbell\xe2\x80\x99s touchstone is copyright\xe2\x80\x99s touchstone. The objectives of fair use are the\nobjectives of copyright. A copyright law that did not allow for fair use, as fair use is\nconceived in Campbell, would fail to satisfy copyright\xe2\x80\x99s objectives. Coming just\nbefore the dawn of the Internet, Campbell was either prescient, or at least lucky, in\nformulating a mode of analysis that would serve to produce sound answers to\nquestions that have arisen in droves in our digital age. 63\n\n(2) Judge Pierre Leval offers a concise summary of some of the most important implications\nof Campbell v. Acuff-Rose:\nCampbell [] taught us not to search for answers in the words of the statute, as\nCongress made clear in its report that it was not undertaking to tell us what fair use\nis. Campbell re-emphasized Story\xe2\x80\x99s focus on whether the secondary work diminishes\nthe profits and \xe2\x80\x9c\xe2\x80\x98supersede[s] the objects\xe2\x80\x99 of the original.\xe2\x80\x9d It rejected the utility of\nbright-line rules--especially the misconceived bias against commercial uses. It cast\ndoubt on the continuing validity of Harper & Row\xe2\x80\x99s assertion of a good faith\nrequirement.64\n\nHow far does the concept of transformative use extend?\nUsing the copyright owner\xe2\x80\x99s expression to say something about that expression is necessarily\na use for a different purpose, thus it is inevitably transformative in purpose. But a\ntransformative purpose by itself is no guarantee of fair use. As the Campbell decision notes:\nfinding that a work was intended as a parody, for example, is just the beginning of the\nrequired analysis, and the use must still \xe2\x80\x9cwork its way through the relevant factors, and be\njudged case by case, in light of the ends of copyright law.\xe2\x80\x9d\nIn addition to considering the defendant\xe2\x80\x99s transformative purpose, a court must consider\nwhether the defendant\xe2\x80\x99s use was reasonable in light of that purpose and whether such uses\nare likely to have an adverse effect on the cognizable market interests of the copyright owner.\nIn other words, a court must consider purpose, congruity with that purpose, and effect.\nHowever, if a court finds that a defendant\xe2\x80\x99s purpose is transformative and the amount used\nis reasonable in light of that purpose, a finding of fair use is all but assured. Market effect\nremains an important consideration, but it is also usually a foregone conclusion in these\ncircumstances. It is very unlikely that a reasonable use for a transformative purpose would\nhave an adverse effect on the value of the copyright owners work in any cognizable market.\nAs the Supreme Court noted in Campbell (at 593 n. 24):\nA work whose overriding purpose and character is parodic and whose borrowing is\nslight in relation to its parody will be far less likely to cause cognizable harm than a\nwork with little parodic content and much copying.\n\nLikewise the second fair use factor is not disregarded in the analysis above, it is simply\nsubsumed. The nature of the work is a vital input to any consideration of the reasonableness\nof the amount used in light of the defendant\xe2\x80\x99s transformative purpose.\nBut what is reasonable?\n\n63\n\nPierre N. Leval, Campbell As Fair Use Blueprint?, 90 WASH. L. REV. 597, 602 (2015).\n\n64\n\nId. at 601.\n\n224\n\n\x0cMattel Inc. v. Walking Mountain Products, 353 F.3d 792 (9th Cir. 2003)\nIn 1997, an artist named Thomas Forsythe developed a series of photographs entitled Food\nChain Barbie, depicting Mattel\xe2\x80\x99s famous Barbie doll in various absurd and often sexualized\npositions. As the Malted Barbie and Oyster Dive photos reproduced below illustrate, Forsythe\xe2\x80\x99s\nworks typically involved naked Barbie dolls imperiled by vintage household appliances.\nThomas Forsyth\xe2\x80\x99s Malted Barbie & Oyster Dive\n\nFor decades Mattel has promoted Barbie as an icon of beauty, wealth, and glamour and the\nideal American woman. Others see Barbie as the quintessential representative of a consumer\nculture obsessed by idealized and unobtainable notions of beauty and perfection. According\nto the Copyright Act, however, the Barbie doll is a sculptural work entitled to copyright\nprotection. Mattel zealously promotes its concept of Barbie and is quick to use copyright and\ntrademark law to try to suppress alternative less charitable views.\nIn Mattel Inc. v. Walking Mountain Products, Mattel argued that Forsythe\xe2\x80\x99s Food Chain Barbie\nseries violated its copyright in the Barbie sculptures. The Ninth Circuit court of appeals\ndisagreed. Although each of the photos in the Food Chain Barbie series arguably reproduced\nthree-dimensional Barbie, albeit in two-dimensional form, the reproduction was not\ninfringement, but fair use.\nThe court held that the defendant\xe2\x80\x99s use of iconic Barbie image was transformative in the\nsense that it added \xe2\x80\x9csomething new, with a further purpose or different character, altering\nthe first with new expression, meaning, or message.\xe2\x80\x9d The various Food Chain Barbie images\nconveyed the image of Barbie, but they also changed the meaning of that image by exposing\nBarbie to absurd and dangerous domestic situations. As the court summarized (at 802):\nForsythe turns this image on its head, so to speak, \xe2\x80\xa6 His lighting, background,\nprops, and camera angles all serve to create a context for Mattel\xe2\x80\x99s copyrighted work\nthat transform Barbie\xe2\x80\x99s meaning. Forsythe presents the viewer with a different set of\nassociations and a different context for this plastic figure. In some of Forsythe\xe2\x80\x99s\nphotos, Barbie is about to be destroyed or harmed by domestic life in the form of\nkitchen appliances, yet continues displaying her well known smile, disturbingly\noblivious to her predicament. As portrayed in some of Forsythe\xe2\x80\x99s photographs, the\nappliances are substantial and overwhelming, while Barbie looks defenseless. In\nother photographs, Forsythe conveys a sexualized perspective of Barbie by showing\nthe nude doll in sexually suggestive contexts. It is not difficult to see the\ncommentary that Forsythe intended or the harm that he perceived in Barbie\xe2\x80\x99s\ninfluence on gender roles and the position of women in society.\n\nIn other words, Forsythe did more than simply drop Barbie in a blender; his choice of setting,\nlighting, and camera angle in each photo created a new work that quite clearly comments on\nthe objectification of women and the conventional beauty myth associated with Barbie.\n225\n\n\x0cMattel argued that Forsythe should not be entitled to fair use because he had copied the\nentirety of the Barbie figure in some photos. The toy company suggested that whatever\ncritical purpose Forsythe intended could have been realized by limiting his photos less than a\ncomplete image of Barbie\xe2\x80\x94severed heads, for example? But as the court explained, visual\nworks are often less amenable to segmentation than textual works. Forsythe\xe2\x80\x99s use of the\nwhole doll was entirely reasonable in the circumstances because, rather than dismembering\nthe doll, Forsythe added to it \xe2\x80\x9cby creating a context around it and capturing that context in a\nphotograph.\xe2\x80\x9d The court also noted that the two-dimensional photo of a three dimensional\nobject scarcely constitutes a verbatim copy in any event. However, there is no indication that\nthe court would have decided the case any differently had the artist\xe2\x80\x99s medium of choice been\nsculpture rather than photography.\nThe Food Chain Barbie case demonstrates that the reasonableness of the amount of the\ncopyright owner\xe2\x80\x99s original expression used by the defendant in a new work will be assessed\nin light of the defendant\xe2\x80\x99s transformative purpose, the nature of the work itself, and also\nwith a view to how the defendant has changed the work. Courts should not make arbitrary\ndistinctions based on whether those changes are in the form of subtraction or addition. The\ncase also shows how certain works require greater appropriations to convey their essence.\nMoreover, certain genres of criticism justifiably require more extensive takings than others.\nIf the defendant\xe2\x80\x99s purpose is transformative in the sense of commenting upon or criticizing\nthe original, there is no requirement that she pursue that goal in a given genre or that she\ntake the absolute minimum amount of the copyrighted work possible within any given genre.\nAs the Ninth Circuit explained (at 802),\nUndoubtedly, one could make similar statements through other means about society,\ngender roles, sexuality, and perhaps even social class. But Barbie, and all the\nassociations she has acquired through Mattel\xe2\x80\x99s impressive marketing success,\nconveys these messages in a particular way that is ripe for social comment.\n\nSuntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270 (11th Cir. 2001)\nMargaret Mitchell\xe2\x80\x99s 1936 novel, Gone With the Wind, is a cultural icon with an enduring hold\non our collective imagination of the American South during the Civil War and\nReconstruction. Its lasting appeal notwithstanding, Gone With the Wind is a controversial\nbook, in part because Mitchell\xe2\x80\x99s white characters are unapologetically racist and her nonwhite characters are one-dimensional reflections of that racism. In Mitchell\xe2\x80\x99s novel, the\nantebellum South is idealized and the end of slavery is lamented. As Scarlett O\xe2\x80\x99Hara, the\nbook\xe2\x80\x99s focal character, says: \xe2\x80\x9cThe more I see of emancipation the more criminal I think it is.\nIt\xe2\x80\x99s just ruined the darkies.\xe2\x80\x9d\nAlice Randall\xe2\x80\x99s 2001 novel, The Wind Done Gone, retells this classic story from the perspective\nof Scarlet\xe2\x80\x99s African-American half-sister, Cynara, and in doing so attempts to rebut the\nperspective, judgments, and mythology of the original work. In the course of this retelling,\nThe Wind Done Gone takes the characters, plot, and major scenes from the original and recasts\nthem. Although the narrative style and language of Randall\xe2\x80\x99s book is quite different to the\noriginal, at a more abstract level of character, plot, and location, it borrows heavily from\nGone With the Wind, especially in the latter book\xe2\x80\x99s first half.\nMitchell\xe2\x80\x99s literary estate viewed The Wind Done Gone as an act of piracy and sought to prevent\nits publication. On appeal from a lower court injunction, the court of appeals for the\nEleventh Circuit agreed that Randall had borrowed liberally from Gone With the Wind, but in\n226\n\n\x0cthe court\xe2\x80\x99s assessment, as a specific criticism of and rejoinder to the original, The Wind Done\nGone was a transformative parody. The court had no trouble in seeing the dividing line\nbetween a legitimate parody and an infringing derivative work. Randall had not simply used\nGone With the Wind to extend the story for its own sake, or as a platform for a general\ncommentary on the Civil-War-era American South. Rather, like other effective parodies, she\nhad conscripted the elements of the original to make war against itself. As the court\nsummarized (at 1270):\n\xe2\x80\xa6 Randall\xe2\x80\x99s work flips Gone With the Wind\xe2\x80\x99s traditional race roles, portrays powerful\nwhites as stupid or feckless, and generally sets out to demystify Gone With the Wind\nand strip the romanticism from Mitchell\xe2\x80\x99s specific account of this period of our\nhistory.\n\nThe Wind Done Gone had taken quite liberally from Gone With the Wind, but it had done so in a\nthoroughly transformative manner \xe2\x80\x9cshedding light on an earlier work, and, in the process,\ncreating a new one.\xe2\x80\x9d\nNot unlike Mattel in the Food Chain Barbie case, the plaintiffs in Suntrust, argued that Randall\nhad taken too much of the original work because she could have made the same critical\npoints in a way that required much less borrowing from the original. The plaintiffs argument\nwas rooted in the misconception that fair use operates as a grudging exception to copyright.\nOn the contrary, repurposing an author\xe2\x80\x99s original expression to create a new work with a\nnew meaning or message does as much to fulfill the purpose of copyright law as did the\ncreation of the original work. Randall chose to convey her criticisms of Gone With The Wind\nby creating a mirror world in which \xe2\x80\x9cevery black character is given some redeeming quality\n\xe2\x80\x94 whether depth, wit, cunning, beauty, strength, or courage \xe2\x80\x94 that their Gone With the Wind\nanalogues lacked.\xe2\x80\x9d The fact that there were more parsimonious choices available was\nirrelevant to the fair use analysis. What mattered was that where Mitchell\xe2\x80\x99s original\nexpression was appropriated, it was invested with a new meaning or message.\nA parody must be consistently transformative, but there is no requirement that parodists\ntake the bare minimum amount of copyright material necessary to achieve their ends. Nor is\nthere any requirement that the original work should be the sole subject of the parody. In\nCampbell, the Court said that all that was required was that the defendant\xe2\x80\x99s work \xe2\x80\x9cloosely\ntarget an original\xe2\x80\x9d as long as the parody \xe2\x80\x9creasonably could be perceived as commenting on\nthe original or criticizing it, to some degree.\xe2\x80\x9d\nIn different contexts, excessive borrowing by a would-be parody might call into question\nwhether the overriding purpose and character of the use was genuinely transformative. One\ncould not simply stamp the word parody on a bestselling novel and reprint it with impunity.\nLikewise, excessive borrowing in a well intended, but poorly executed parody might serve as\na market substitute for the original and thus fall outside the protection of fair use. Although\nRandall had taken quite substantially from the original, in the eyes of the court, there was\nnothing extraneous to her parodic purpose. As Judge Marcus summarized in his concurrence\n(at 1280):\nEven a cursory comparison of the two texts reveals that The Wind Done Gone\nprofoundly alters what it borrows\xe2\x80\x94indeed, at times beyond recognition. To catch\nsome of Randall\xe2\x80\x99s allusions, even a reader familiar with Mitchell\xe2\x80\x99s work may need to\nrefer to the original text. To create a successful parody, an author must keep certain\nelements constant while inverting or exaggerating other variables; generally there is\n\n227\n\n\x0can incongruity between the borrowed and the new elements. In Randall\xe2\x80\x99s book, the\nratio of the former to the latter is very low, and the incongruity between them wide.\n\n***\nAs both the Wind Done Gone and Food Chain Barbie illustrate, there are no exact quantitative\nthresholds to determine if how much borrowing is reasonable in light of the defendant\xe2\x80\x99s\npurpose. However, what is clear is that a defendant\xe2\x80\x99s claimed fair use does not depend on\nher having adopted a particular style or genre of criticism or having reproduced the bare\nminimum of the author\xe2\x80\x99s original expression to convey that criticism. Even extensive\nborrowings can be justified if they are predominantly transformative. Although some earlier\ncases, such as Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., state that \xe2\x80\x9cthe parodist is\npermitted a fair use of a copyrighted work if it takes no more than is necessary to \xe2\x80\x98recall\xe2\x80\x99 or\n\xe2\x80\x98conjure up\xe2\x80\x99 the object of his parody.\xe2\x80\x9d It would be more accurate to hold, as the court did in\nSuntrust, that once enough has been taken to \xe2\x80\x98conjure up\xe2\x80\x99 the original in the minds of the\nreadership, any further taking must be consistent with the new work\xe2\x80\x99s transformative aims.\n\nTransformative use and appropriation art\n[Placeholder for a general introduction]\nCariou v. Prince, 714 F. 3d 694 (2d Cir. 2013)\nCircuit Judge Barrington D. Parker\nIn 2000, Patrick Cariou published Yes Rasta, a book of classical portraits and\nlandscape photographs that he took over the course of six years spent living among\nRastafarians in Jamaica. Richard Prince altered and incorporated several of Cariou\xe2\x80\x99s\nYes Rasta photographs into a series of paintings and collages, called Canal Zone, that\nhe exhibited in 2007 and 2008, first at the Eden Rock hotel in Saint Barth\xc3\xa9lemy (\xe2\x80\x9cSt.\nBarth\xe2\x80\x99s\xe2\x80\x9d) and later at New York\xe2\x80\x99s Gagosian Gallery. In addition, Gagosian published\nand sold an exhibition catalog that contained reproductions of Prince\xe2\x80\x99s paintings and\nimages from Prince\xe2\x80\x99s workshop.\nCariou sued Prince and Gagosian, alleging that Prince\xe2\x80\x99s Canal Zone works and\nexhibition catalog infringed on Cariou\xe2\x80\x99s copyrights in the incorporated Yes Rasta\nphotographs. The defendants raised a fair use defense. After the parties cross-moved\nfor summary judgment, the United States District Court for the Southern District of\nNew York (Batts, J.) granted Cariou\xe2\x80\x99s motion, denied the defendants\xe2\x80\x99, and entered a\npermanent injunction. It compelled the defendants to deliver to Cariou all infringing\nworks that had not yet been sold, for him to destroy, sell, or otherwise dispose of.\nPrince and Gagosian principally contend on appeal that Prince\xe2\x80\x99s work is\ntransformative and constitutes fair use of Cariou\xe2\x80\x99s copyrighted photographs, and that\nthe district court imposed an incorrect legal standard when it concluded that, in\norder to qualify for a fair use defense, Prince\xe2\x80\x99s work must \xe2\x80\x9ccomment on Cariou, on\nCariou\xe2\x80\x99s Photos, or on aspects of popular culture closely associated with Cariou or\nthe Photos.\xe2\x80\x9d Cariou v. Prince, 784 F.Supp.2d 337, 349 (S.D.N.Y.2011). We agree with\nAppellants that the law does not require that a secondary use comment on the\n228\n\n\x0coriginal artist or work, or popular culture, and we conclude that twenty-five of\nPrince\xe2\x80\x99s artworks do make fair use Cariou\xe2\x80\x99s copyrighted photographs. With regard to\nthe remaining five artworks, we remand to the district court, applying the proper\nstandard, to consider in the first instance whether Prince is entitled to a fair use\ndefense.\nBACKGROUND\nThe relevant facts, drawn primarily from the parties\xe2\x80\x99 submissions in connection with\ntheir cross-motions for summary judgment, are undisputed. Cariou is a professional\nphotographer who, over the course of six years in the mid-1990s, lived and worked\namong Rastafarians in Jamaica. The relationships that Cariou developed with them\nallowed him to take a series of portraits and landscape photographs that Cariou\npublished in 2000 in a book titled Yes Rasta. As Cariou testified, Yes Rasta is\n\xe2\x80\x9cextreme classical photography [and] portraiture,\xe2\x80\x9d and he did not \xe2\x80\x9cwant that book to\nlook pop culture at all.\xe2\x80\x9d\nCariou\xe2\x80\x99s publisher, PowerHouse Books, Inc., printed 7,000 copies of Yes Rasta, in a\nsingle printing. Like many, if not most, such works, the book enjoyed limited\ncommercial success. The book is currently out of print. As of January 2010,\nPowerHouse had sold 5,791 copies, over sixty percent of which sold below the\nsuggested retail price of sixty dollars. PowerHouse has paid Cariou, who holds the\ncopyrights to the Yes Rasta photographs, just over $8,000 from sales of the book.\nExcept for a handful of private sales to personal acquaintances, he has never sold or\nlicensed the individual photographs.\nPrince is a well-known appropriation artist. The Tate Gallery has defined\nappropriation art as \xe2\x80\x9cthe more or less direct taking over into a work of art a real\nobject or even an existing work of art.\xe2\x80\x9d Prince\xe2\x80\x99s work, going back to the mid-1970s,\nhas involved taking photographs and other images that others have produced and\nincorporating them into paintings and collages that he then presents, in a different\ncontext, as his own. He is a leading exponent of this genre and his work has been\ndisplayed in museums around the world, including New York\xe2\x80\x99s Solomon R.\nGuggenheim Museum and Whitney Museum, San Francisco\xe2\x80\x99s Museum of Modern\nArt, Rotterdam\xe2\x80\x99s Museum Boijmans van Beuningen, and Basel\xe2\x80\x99s Museum fur\nGegenwartskunst. As Prince has described his work, he \xe2\x80\x9ccompletely tr[ies] to change\n[another artist\xe2\x80\x99s work] into something that\xe2\x80\x99s completely different.\xe2\x80\x9d\nPrince first came across a copy of Yes Rasta in a bookstore in St. Barth\xe2\x80\x99s in 2005.\nBetween December 2007 and February 2008, Prince had a show at the Eden Rock\nhotel in St. Barth\xe2\x80\x99s that included a collage, titled Canal Zone (2007), comprising 35\nphotographs torn out of Yes Rasta and pinned to a piece of plywood. Prince altered\nthose photographs significantly, by among other things painting \xe2\x80\x9clozenges\xe2\x80\x9d over\ntheir subjects\xe2\x80\x99 facial features and using only portions of some of the images. In June\n2008, Prince purchased three additional copies of Yes Rasta. He went on to create\nthirty additional artworks in the Canal Zone series, twenty-nine of which incorporated\npartial or whole images from Yes Rasta.3\nFootnote 3: Images of the Prince artworks, along with the Yes Rasta photographs incorporated therein, appear in\nthe Appendix to this opinion. The Appendix is available at http://www.ca2.uscourts.gov/11-1197apx.htm.\n\n229\n\n\x0cThe portions of Yes Rasta photographs used, and the amount of each artwork that\nthey constitute, vary significantly from piece to piece. In certain works, such as James\nBrown Disco Ball, Prince affixed headshots from Yes Rasta onto other appropriated\nimages, all of which Prince placed on a canvas that he had painted. In these, Cariou\xe2\x80\x99s\nwork is almost entirely obscured. The Prince artworks also incorporate photographs\nthat have been enlarged or tinted, and incorporate photographs appropriated from\nartists other than Cariou as well. Yes Rasta is a book of photographs measuring\napproximately 9.5\xe2\x80\x9d \xc3\x97 12\xe2\x80\x9d. Prince\xe2\x80\x99s artworks, in contrast, comprise inkjet printing\nand acrylic paint, as well as pasted-on elements, and are several times that size. For\ninstance, Graduation measures 72 3/4&\xe2\x80\x9d \xc3\x97 52 1/2\xe2\x80\x9d and James Brown Disco Ball\n100 1/2\xe2\x80\x9d \xc3\x97 104 1/2\xe2\x80\x9d. The smallest of the Prince artworks measures 40\xe2\x80\x9d \xc3\x97 30\xe2\x80\x9d, or\napproximately ten times as large as each page of Yes Rasta.\nRichard Prince, James Brown Disco Ball\n\nIn other works, such as Graduation, Cariou\xe2\x80\x99s original work is readily apparent: Prince\ndid little more than paint blue lozenges over the subject\xe2\x80\x99s eyes and mouth, and paste\na picture of a guitar over the subject\xe2\x80\x99s body.\nPatrick Carious, Photograph from Yes Rasta, p. 118\nRichard Prince, Graduation\n\nBetween November 8 and December 20, 2008, the Gallery put on a show featuring\ntwenty-two of Prince\xe2\x80\x99s Canal Zone artworks, and also published and sold an\nexhibition catalog from the show. The catalog included all of the Canal Zone\nartworks (including those not in the Gagosian show) except for one, as well as,\namong other things, photographs showing Yes Rasta photographs in Prince\xe2\x80\x99s studio.\nPrince never sought or received permission from Cariou to use his photographs.\nPrior to the Gagosian show, in late August, 2008, a gallery owner named Cristiane\nCelle contacted Cariou and asked if he would be interested in discussing the\npossibility of an exhibit in New York City. Celle did not mention Yes Rasta, but did\nexpress interest in photographs Cariou took of surfers, which he published in 1998\nin the aptly titled Surfers. Cariou responded that Surfers would be republished in\n2008, and inquired whether Celle might also be interested in a book Cariou had\nrecently completed on gypsies. The two subsequently met and discussed Cariou\xe2\x80\x99s\nexhibiting work in Celle\xe2\x80\x99s gallery, including prints from Yes Rasta. They did not\nselect a date or photographs to exhibit, nor did they finalize any other details about\nthe possible future show.\nAt some point during the Canal Zone show at Gagosian, Celle learned that Cariou\xe2\x80\x99s\nphotographs were \xe2\x80\x9cin the show with Richard Prince.\xe2\x80\x9d Celle then phoned Cariou and,\nwhen he did not respond, Celle mistakenly concluded that he was \xe2\x80\x9cdoing something\nwith Richard Prince.... [Maybe] he\xe2\x80\x99s not pursuing me because he\xe2\x80\x99s doing something\nbetter, bigger with this person.... [H]e didn\xe2\x80\x99t want to tell the French girl I\xe2\x80\x99m not\ndoing it with you, you know, because we had started a relation and that would have\nbeen bad.\xe2\x80\x9d At that point, Celle decided that she would not put on a \xe2\x80\x9cRasta show\xe2\x80\x9d\nbecause it had been \xe2\x80\x9cdone already,\xe2\x80\x9d and that any future Cariou exhibition she put on\nwould be of photographs from Surfers. Celle remained interested in exhibiting prints\nfrom Surfers, but Cariou never followed through.\n\n230\n\n\x0cAccording to Cariou, he learned about the Gagosian Canal Zone show from Celle in\nDecember 2008. On December 30, 2008, he sued Prince, the Gagosian Gallery, and\nLawrence Gagosian, raising claims of copyright infringement. The defendants\nasserted a fair use defense, arguing that Prince\xe2\x80\x99s artworks are transformative of\nCariou\xe2\x80\x99s photographs and, accordingly, do not violate Cariou\xe2\x80\x99s copyrights. See, e.g.,\nCampbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-79 (1994). Ruling on the parties\xe2\x80\x99\nsubsequently-filed cross-motions for summary judgment, the district court (Batts, J.)\n\xe2\x80\x9cimposed a requirement that the new work in some way comment on, relate to the\nhistorical context of, or critically refer back to the original works\xe2\x80\x9d in order to be\nqualify as fair use, and stated that \xe2\x80\x9cPrince\xe2\x80\x99s Paintings are transformative only to the\nextent that they comment on the Photos.\xe2\x80\x9d Cariou v. Prince, 784 F.Supp.2d 337, 348-49\n(S.D.N.Y.2011). The court concluded that \xe2\x80\x9cPrince did not intend to comment on\nCariou, on Cariou\xe2\x80\x99s Photos, or on aspects of popular culture closely associated with\nCariou or the Photos when he appropriated the Photos,\xe2\x80\x9d and for that reason rejected\nthe defendants\xe2\x80\x99 fair use defense and granted summary judgment to Cariou. The\ndistrict court also granted sweeping injunctive relief, ordering the defendants to\n\xe2\x80\x9cdeliver up for impounding, destruction, or other disposition, as Cariou determines,\nall infringing copies of the Photographs, including the Paintings and unsold copies of\nthe Canal Zone exhibition book, in their possession.\xe2\x80\x9d4\nFootnote 4: At oral argument, counsel for Cariou indicated that he opposes the destruction of any of the works\nof art that are the subject of this litigation.\n\nThis appeal followed.\nDISCUSSION\nI.\nWe review a grant of summary judgment de novo. The well known standards for\nsummary judgment set forth in Rule 56(c) apply. See Fed.R.Civ.P. 56. Although fair\nuse is a mixed question of law and fact, this court has on numerous occasions\nresolved fair use determinations at the summary judgment stage where ... there are\nno genuine issues of material fact. This case lends itself to that approach.\nII.\nThe purpose of the copyright law is \xe2\x80\x9cto promote the Progress of Science and useful\nArts....\xe2\x80\x9d U.S. Const., Art. I, \xc2\xa7 8, cl. 8. As Judge Pierre Leval of this court has\nexplained, \xe2\x80\x9cthe copyright is not an inevitable, divine, or natural right that confers on\nauthors the absolute ownership of their creations. It is designed rather to stimulate\nactivity and progress in the arts for the intellectual enrichment of the public.\xe2\x80\x9d Pierre\nN. Leval, Toward a Fair Use Standard, 103 HARV. L.REV. 1105, 1107 (1990)\n(hereinafter \xe2\x80\x9cLeval\xe2\x80\x9d). Fair use is \xe2\x80\x9cnecessary to fulfill [that] very purpose.\xe2\x80\x9d Campbell,\n510 U.S. at 575. Because \xe2\x80\x9c\xe2\x80\x98excessively broad protection would stifle, rather than\nadvance, the law\xe2\x80\x99s objective,\xe2\x80\x99\xe2\x80\x9d fair use doctrine \xe2\x80\x9cmediates between\xe2\x80\x9d \xe2\x80\x9cthe property\nrights [copyright law] establishes in creative works, which must be protected up to a\npoint, and the ability of authors, artists, and the rest of us to express them \xe2\x80\x94 or\nourselves by reference to the works of others, which must be protected up to a\npoint.\xe2\x80\x9d Blanch, 467 F.3d at 250 (brackets omitted) (quoting Leval at 1109).\n\n231\n\n\x0cThe doctrine was codified in the Copyright Act of 1976, which lists four nonexclusive factors that must be considered in determining fair use. Under the statute,\n[T]he fair use of a copyrighted work ... for purposes such as criticism, comment,\nnews reporting, teaching (including multiple copies for classroom use), scholarship,\nor research, is not an infringement of copyright. In determining whether the use\nmade of a work in any particular case is a fair use the factors to be considered shall\ninclude \xe2\x80\x94\n(1) the purpose and character of the use, including whether such use is of a\ncommercial nature or is for nonprofit educational purposes;\n(2) the nature of the copyrighted work;\n(3) the amount and substantiality of the portion used in relation to the copyrighted\nwork as a whole; and\n(4) the effect of the use upon the potential market for or value of the copyrighted\nwork.\n\n17 U.S.C. \xc2\xa7 107. As the statute indicates, and as the Supreme Court and our court\nhave recognized, the fair use determination is an open-ended and context-sensitive\ninquiry. Campbell, 510 U.S. at 577-78; Blanch, 467 F.3d at 251. The statute \xe2\x80\x9cemploys\nthe terms \xe2\x80\x98including\xe2\x80\x99 and \xe2\x80\x98such as\xe2\x80\x99 in the preamble paragraph to indicate the\nillustrative and not limitative function of the examples given, which thus provide\nonly general guidance about the sorts of copying that courts and Congress most\ncommonly had found to be fair uses.\xe2\x80\x9d Campbell, 510 U.S. at 577-78. The \xe2\x80\x9cultimate\ntest of fair use ... is whether the copyright law\xe2\x80\x99s goal of \xe2\x80\x98promoting the Progress of\nScience and useful Arts\xe2\x80\x99 would be better served by allowing the use than by\npreventing it.\xe2\x80\x9d Castle Rock, 150 F.3d at 141.\nThe first statutory factor to consider, which addresses the manner in which the\ncopied work is used, is \xe2\x80\x9cthe heart of the fair use inquiry.\xe2\x80\x9d Blanch, 467 F.3d at 251.\nWe ask\nwhether the new work merely \xe2\x80\x98supersedes the objects\xe2\x80\x99 of the original creation, or\ninstead adds something new, with a further purpose or different character, altering\nthe first with new expression, meaning, or message, ... in other words, whether and\nto what extent the new work is transformative.... Transformative works ... lie at the\nheart of the fair use doctrine\xe2\x80\x99s guarantee of breathing space....\n\nCampbell, 510 U.S. at 579. \xe2\x80\x9cIf \xe2\x80\x98the secondary use adds value to the original \xe2\x80\x94 if [the\noriginal work] is used as raw material, transformed in the creation of new\ninformation, new aesthetics, new insights and understandings \xe2\x80\x94 this is the very type\nof activity that the fair use doctrine intends to protect for the enrichment of society.\xe2\x80\x99\xe2\x80\x9d\nCastle Rock, 150 F.3d at 142 (quoting Leval 1111). For a use to be fair, it \xe2\x80\x9cmust be\nproductive and must employ the quoted matter in a different manner or for a\ndifferent purpose from the original.\xe2\x80\x9d Leval at 1111.\nThe district court imposed a requirement that, to qualify for a fair use defense, a\nsecondary use must \xe2\x80\x9ccomment on, relate to the historical context of, or critically\nrefer back to the original works.\xe2\x80\x9d Cariou, 784 F.Supp.2d at 348. Certainly, many types\nof fair use, such as satire and parody, invariably comment on an original work\nand/or on popular culture. For example, the rap group 2 Live Crew\xe2\x80\x99s parody of Roy\n\n232\n\n\x0cOrbison\xe2\x80\x99s \xe2\x80\x9cOh, Pretty Woman\xe2\x80\x9d \xe2\x80\x9cwas clearly intended to ridicule the white-bread\noriginal.\xe2\x80\x9d Campbell, 510 U.S. at 582. Much of Andy Warhol\xe2\x80\x99s work, including work\nincorporating appropriated images of Campbell\xe2\x80\x99s soup cans or of Marilyn Monroe,\ncomments on consumer culture and explores the relationship between celebrity\nculture and advertising. As even Cariou concedes, however, the district court\xe2\x80\x99s legal\npremise was not correct. The law imposes no requirement that a work comment on\nthe original or its author in order to be considered transformative, and a secondary\nwork may constitute a fair use even if it serves some purpose other than those\n(criticism, comment, news reporting, teaching, scholarship, and research) identified\nin the preamble to the statute. Instead, as the Supreme Court as well as decisions\nfrom our court have emphasized, to qualify as a fair use, a new work generally must\nalter the original with \xe2\x80\x9cnew expression, meaning, or message.\xe2\x80\x9d Campbell, 510 U.S. at\n579; see also Blanch, 467 F.3d at 253 (original must be employed \xe2\x80\x9cin the creation of\nnew information, new aesthetics, new insights and understandings\xe2\x80\x9d (quotation marks\nomitted)); Castle Rock, 150 F.3d at 142.\nHere, our observation of Prince\xe2\x80\x99s artworks themselves convinces us of the\ntransformative nature of all but five, which we discuss separately below. These\ntwenty-five of Prince\xe2\x80\x99s artworks manifest an entirely different aesthetic from Cariou\xe2\x80\x99s\nphotographs. Where Cariou\xe2\x80\x99s serene and deliberately composed portraits and\nlandscape photographs depict the natural beauty of Rastafarians and their\nsurrounding environs, Prince\xe2\x80\x99s crude and jarring works, on the other hand, are hectic\nand provocative. Cariou\xe2\x80\x99s black-and-white photographs were printed in a 9 1/2\xe2\x80\x9d \xc3\x97\n12\xe2\x80\x9d book. Prince has created collages on canvas that incorporate color, feature\ndistorted human and other forms and settings, and measure between ten and nearly a\nhundred times the size of the photographs. Prince\xe2\x80\x99s composition, presentation, scale,\ncolor palette, and media are fundamentally different and new compared to the\nphotographs, as is the expressive nature of Prince\xe2\x80\x99s work. See Campbell, 510 U.S. at\n579.\nPrince\xe2\x80\x99s deposition testimony further demonstrates his drastically different approach\nand aesthetic from Cariou\xe2\x80\x99s. Prince testified that he \xe2\x80\x9c[doesn\xe2\x80\x99t] have any really interest\nin what [another artist\xe2\x80\x99s] original intent is because ... what I do is I completely try to\nchange it into something that\xe2\x80\x99s completely different.... I\xe2\x80\x99m trying to make a kind of\nfantastic, absolutely hip, up to date, contemporary take on the music scene.\xe2\x80\x9d As the\ndistrict court determined, Prince\xe2\x80\x99s Canal Zone artworks relate to a \xe2\x80\x9cpost-apocalyptic\nscreenplay\xe2\x80\x9d Prince had planned, and \xe2\x80\x9cemphasize themes of Prince\xe2\x80\x99s planned\nscreenplay of equality of the sexes; highlight \xe2\x80\x98the three relationships in the world,\nwhich are men and women, men and men, and women and women\xe2\x80\x99; and portray a\ncontemporary take on the music scene.\xe2\x80\x9d\nThe district court based its conclusion that Prince\xe2\x80\x99s work is not transformative in\nlarge part on Prince\xe2\x80\x99s deposition testimony that he \xe2\x80\x9cdo[es]n\xe2\x80\x99t really have a message,\xe2\x80\x9d\nthat he was not \xe2\x80\x9ctrying to create anything with a new meaning or a new message,\xe2\x80\x9d\nand that he \xe2\x80\x9cdo[es]n\xe2\x80\x99t have any ... interest in [Cariou\xe2\x80\x99s] original intent.\xe2\x80\x9d Cariou, 784\nF.Supp.2d at 349. On appeal, Cariou argues that we must hold Prince to his\ntestimony and that we are not to consider how Prince\xe2\x80\x99s works may reasonably be\nperceived unless Prince claims that they were satire or parody. No such rule exists,\nand we do not analyze satire or parody differently from any other transformative use.\n\n233\n\n\x0cIt is not surprising that, when transformative use is at issue, the alleged infringer\nwould go to great lengths to explain and defend his use as transformative. Prince did\nnot do so here. However, the fact that Prince did not provide those sorts of\nexplanations in his deposition \xe2\x80\x94 which might have lent strong support to his\ndefense \xe2\x80\x94 is not dispositive. What is critical is how the work in question appears to\nthe reasonable observer, not simply what an artist might say about a particular piece\nor body of work. Prince\xe2\x80\x99s work could be transformative even without commenting\non Cariou\xe2\x80\x99s work or on culture, and even without Prince\xe2\x80\x99s stated intention to do so.\nRather than confining our inquiry to Prince\xe2\x80\x99s explanations of his artworks, we\ninstead examine how the artworks may \xe2\x80\x9creasonably be perceived\xe2\x80\x9d in order to assess\ntheir transformative nature. Campbell, 510 U.S. at 582; Leibovitz v. Paramount Pictures\nCorp., 137 F.3d 109, 113-14 (2d Cir.1998) (evaluating parodic nature of advertisement\nin light of how it \xe2\x80\x9cmay reasonably be perceived\xe2\x80\x9d). The focus of our infringement\nanalysis is primarily on the Prince artworks themselves, and we see twenty-five of\nthem as transformative as a matter of law.\nIn this respect, the Seventh Circuit\xe2\x80\x99s recent decision in Brownmark Films, LLC v.\nComedy Partners, 682 F.3d 687 (7th Cir.2012), is instructive. There, the court rejected\nthe appellant\xe2\x80\x99s argument that copyright infringement claims cannot be disposed of at\nthe motion-to-dismiss stage, and affirmed the district court\xe2\x80\x99s dismissal of such a\nclaim under Fed.R.Civ.P. 12(b)(6). Considering whether an episode of the animated\ntelevision show South Park presented a parody (and therefore a protected fair use) of\na viral internet video titled \xe2\x80\x9cWhat What (In The Butt),\xe2\x80\x9d the court concluded that\n\xe2\x80\x9c[w]hen the two works ... are viewed side-by-side, the South Park episode is clearly a\nparody of the original ... video.\xe2\x80\x9d Id. at 692. For that reason, \xe2\x80\x9cthe only two pieces of\nevidence needed to decide the question of fair use in [Brownmark were] the original\nversion of [the video] and the episode at issue.\xe2\x80\x9d Id. at 690.\nHere, looking at the artworks and the photographs side-by-side, we conclude that\nPrince\xe2\x80\x99s images, except for those we discuss separately below, have a different\ncharacter, give Cariou\xe2\x80\x99s photographs a new expression, and employ new aesthetics\nwith creative and communicative results distinct from Cariou\xe2\x80\x99s. Our conclusion\nshould not be taken to suggest, however, that any cosmetic changes to the\nphotographs would necessarily constitute fair use. A secondary work may modify the\noriginal without being transformative. For instance, a derivative work that merely\npresents the same material but in a new form, such as a book of synopses of\ntelevisions shows, is not transformative. See Castle Rock, 150 F.3d at 143; Twin Peaks\nProds., Inc. v. Publ\xe2\x80\x99ns Int\xe2\x80\x99l, Ltd., 996 F.2d 1366, 1378 (2d Cir.1993). In twenty-five of\nhis artworks, Prince has not presented the same material as Cariou in a different\nmanner, but instead has \xe2\x80\x9cadd[ed] something new\xe2\x80\x9d and presented images with a\nfundamentally different aesthetic. Leibovitz, 137 F.3d at 114.\nThe first fair use factor \xe2\x80\x94 the purpose and character of the use \xe2\x80\x94 also requires that\nwe consider whether the allegedly infringing work has a commercial or nonprofit\neducational purpose. See, e.g., Blanch, 467 F.3d at 253. That being said, \xe2\x80\x9cnearly all of\nthe illustrative uses listed in the preamble paragraph of \xc2\xa7 107, including news\nreporting, comment, criticism, teaching, scholarship, and research... are generally\nconducted for profit.\xe2\x80\x9d Campbell, 510 U.S. at 584. \xe2\x80\x9cThe commercial/nonprofit\ndichotomy concerns the unfairness that arises when a secondary user makes\n\n234\n\n\x0cunauthorized use of copyrighted material to capture significant revenues as a direct\nconsequence of copying the original work.\xe2\x80\x9d American Geophysical Union v. Texaco Inc.,\n60 F.3d 913, 922 (2d Cir.1994). This factor must be applied with caution because, as\nthe Supreme Court has recognized, Congress \xe2\x80\x9ccould not have intended\xe2\x80\x9d a rule that\ncommercial uses are presumptively unfair. Campbell, 510 U.S. at 584. Instead, \xe2\x80\x9c[t]he\nmore transformative the new work, the less will be the significance of other factors,\nlike commercialism, that may weigh against a finding of fair use.\xe2\x80\x9d Id. at 579.\nAlthough there is no question that Prince\xe2\x80\x99s artworks are commercial, we do not place\nmuch significance on that fact due to the transformative nature of the work.\nWe turn next to the fourth statutory factor, the effect of the secondary use upon the\npotential market for the value of the copyrighted work, because such discussion\nfurther demonstrates the significant differences between Prince\xe2\x80\x99s work, generally,\nand Cariou\xe2\x80\x99s. Much of the district court\xe2\x80\x99s conclusion that Prince and Gagosian\ninfringed on Cariou\xe2\x80\x99s copyrights was apparently driven by the fact that Celle decided\nnot to host a Yes Rasta show at her gallery once she learned of the Gagosian Canal\nZone show. The district court determined that this factor weighs against Prince\nbecause he \xe2\x80\x9chas unfairly damaged both the actual and potential markets for Cariou\xe2\x80\x99s\noriginal work and the potential market for derivative use licenses for Cariou\xe2\x80\x99s original\nwork.\xe2\x80\x9d Cariou, 784 F.Supp.2d at 353.\nContrary to the district court\xe2\x80\x99s conclusion, the application of this factor does not\nfocus principally on the question of damage to Cariou\xe2\x80\x99s derivative market. We have\nmade clear that \xe2\x80\x9cour concern is not whether the secondary use suppresses or even\ndestroys the market for the original work or its potential derivatives, but whether the\nsecondary use usurps the market of the original work.\xe2\x80\x9d Blanch, 467 F.3d at 258\n(quotation marks omitted) (emphasis added); NXIVM Corp. v. Ross Inst., 364 F.3d\n471, 481-82 (2d Cir.2004). \xe2\x80\x9cThe market for potential derivative uses includes only\nthose that creators of original works would in general develop or license others to\ndevelop.\xe2\x80\x9d Campbell, 510 U.S. at 592. Our court has concluded that an accused\ninfringer has usurped the market for copyrighted works, including the derivative\nmarket, where the infringer\xe2\x80\x99s target audience and the nature of the infringing content\nis the same as the original. For instance, a book of trivia about the television show\nSeinfeld usurped the show\xe2\x80\x99s market because the trivia book \xe2\x80\x9csubstitute[d] for a\nderivative market that a television program copyright owner ... would in general\ndevelop or license others to develop.\xe2\x80\x9d Castle Rock, 150 F.3d at 145 (quotation marks\nomitted). Conducting this analysis, we are mindful that \xe2\x80\x9c[t]he more transformative\nthe secondary use, the less likelihood that the secondary use substitutes for the\noriginal,\xe2\x80\x9d even though \xe2\x80\x9cthe fair use, being transformative, might well harm, or even\ndestroy, the market for the original.\xe2\x80\x9d Id.\nAs discussed above, Celle did not decide against putting on a Yes Rasta show because\nit had already been done at Gagosian, but rather because she mistakenly believed that\nCariou had collaborated with Prince on the Gagosian show. Although certain of\nPrince\xe2\x80\x99s artworks contain significant portions of certain of Cariou\xe2\x80\x99s photographs,\nneither Prince nor the Canal Zone show usurped the market for those photographs.\nPrince\xe2\x80\x99s audience is very different from Cariou\xe2\x80\x99s, and there is no evidence that\nPrince\xe2\x80\x99s work ever touched \xe2\x80\x94 much less usurped \xe2\x80\x94 either the primary or derivative\nmarket for Cariou\xe2\x80\x99s work. There is nothing in the record to suggest that Cariou\n\n235\n\n\x0cwould ever develop or license secondary uses of his work in the vein of Prince\xe2\x80\x99s\nartworks. Nor does anything in the record suggest that Prince\xe2\x80\x99s artworks had any\nimpact on the marketing of the photographs. Indeed, Cariou has not aggressively\nmarketed his work, and has earned just over $8,000 in royalties from Yes Rasta since\nits publication. He has sold four prints from the book, and only to personal\nacquaintances.\nPrince\xe2\x80\x99s work appeals to an entirely different sort of collector than Cariou\xe2\x80\x99s. Certain\nof the Canal Zone artworks have sold for two million or more dollars. The invitation\nlist for a dinner that Gagosian hosted in conjunction with the opening of the Canal\nZone show included a number of the wealthy and famous such as the musicians JayZ and Beyonce Knowles, artists Damien Hirst and Jeff Koons, professional football\nplayer Tom Brady, model Gisele Bundchen, Vanity Fair editor Graydon Carter,\nVogue editor Anna Wintour, authors Jonathan Franzen and Candace Bushnell, and\nactors Robert DeNiro, Angelina Jolie, and Brad Pitt. Prince sold eight artworks for a\ntotal of $10,480,000, and exchanged seven others for works by painter Larry Rivers\nand by sculptor Richard Serra. Cariou on the other hand has not actively marketed\nhis work or sold work for significant sums, and nothing in the record suggests that\nanyone will not now purchase Cariou\xe2\x80\x99s work, or derivative non-transformative works\n(whether Cariou\xe2\x80\x99s own or licensed by him) as a result of the market space that\nPrince\xe2\x80\x99s work has taken up. This fair use factor therefore weighs in Prince\xe2\x80\x99s favor.\nThe next statutory factor that we consider, the nature of the copyrighted work, \xe2\x80\x9ccalls\nfor recognition that some works are closer to the core of intended copyright\nprotection than others, with the consequence that fair use is more difficult to\nestablish when the former works are copied.\xe2\x80\x9d Campbell, 510 U.S. at 586. We consider\n\xe2\x80\x9c\xe2\x80\x98(1) whether the work is expressive or creative, ... with a greater leeway being\nallowed to a claim of fair use where the work is factual or informational, and (2)\nwhether the work is published or unpublished, with the scope for fair use involving\nunpublished works being considerably narrower.\xe2\x80\x99\xe2\x80\x9d Blanch, 467 F.3d at 256.\nHere, there is no dispute that Cariou\xe2\x80\x99s work is creative and published. Accordingly,\nthis factor weighs against a fair use determination. However, just as with the\ncommercial character of Prince\xe2\x80\x99s work, this factor \xe2\x80\x9cmay be of limited usefulness\nwhere,\xe2\x80\x9d as here, \xe2\x80\x9cthe creative work of art is being used for a transformative purpose.\xe2\x80\x9d\nBill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 612 (2d Cir.2006).\nThe final factor that we consider in our fair use inquiry is \xe2\x80\x9cthe amount and\nsubstantiality of the portion used in relation to the copyrighted work as a whole.\xe2\x80\x9d 17\nU.S.C. \xc2\xa7 107(3). We ask \xe2\x80\x9cwhether the quantity and value of the materials used[] are\nreasonable in relation to the purpose of the copying.\xe2\x80\x9d Blanch, 467 F.3d at 257\n(quotation marks omitted). In other words, we consider the proportion of the\noriginal work used, and not how much of the secondary work comprises the original.\nMany of Prince\xe2\x80\x99s works use Cariou\xe2\x80\x99s photographs, in particular the portrait of the\ndreadlocked Rastafarian at page 118 of Yes Rasta, the Rastafarian on a burro at pages\n83 to 84, and the dreadlocked and bearded Rastafarian at page 108, in whole or\nsubstantial part. In some works, such as Charlie Company, Prince did not alter the\nsource photograph very much at all. In others, such as Djuana Barnes, Natalie\nBarney, Renee Vivien and Romaine Brooks take over the Guanahani, the entire\n\n236\n\n\x0csource photograph is used but is also heavily obscured and altered to the point that\nCariou\xe2\x80\x99s original is barely recognizable. Although \xe2\x80\x9c[n]either our court nor any of our\nsister circuits has ever ruled that the copying of an entire work favors fair use[,]....\ncourts have concluded that such copying does not necessarily weigh against fair use\nbecause copying the entirety of a work is sometimes necessary to make a fair use of\nthe image.\xe2\x80\x9d Bill Graham, 448 F.3d at 613. \xe2\x80\x9cThe third-factor inquiry must take into\naccount that the extent of permissible copying varies with the purpose and character\nof the use.\xe2\x80\x9d Id.\nThe district court determined that Prince\xe2\x80\x99s \xe2\x80\x9ctaking was substantially greater than\nnecessary.\xe2\x80\x9d Cariou, 784 F.Supp.2d at 352. We are not clear as to how the district\ncourt could arrive at such a conclusion. In any event, the law does not require that\nthe secondary artist may take no more than is necessary. See Campbell, 510 U.S. at\n588; Leibovitz, 137 F.3d at 114. We consider not only the quantity of the materials\ntaken but also \xe2\x80\x9ctheir quality and importance\xe2\x80\x9d to the original work. Campbell, 510 U.S.\nat 587. The secondary use \xe2\x80\x9cmust be [permitted] to \xe2\x80\x98conjure up\xe2\x80\x99 at least enough of the\noriginal\xe2\x80\x9d to fulfill its transformative purpose. Id. at 588 (emphasis added); Leibovitz,\n137 F.3d at 114. Prince used key portions of certain of Cariou\xe2\x80\x99s photographs. In\ndoing that, however, we determine that in twenty-five of his artworks, Prince\ntransformed those photographs into something new and different and, as a result,\nthis factor weighs heavily in Prince\xe2\x80\x99s favor.\nAs indicated above, there are five artworks that, upon our review, present closer\nquestions. Specifically, Graduation, Meditation, Canal Zone (2008), Canal Zone\n(2007), and Charlie Company do not sufficiently differ from the photographs of\nCariou\xe2\x80\x99s that they incorporate for us confidently to make a determination about their\ntransformative nature as a matter of law. Although the minimal alterations that\nPrince made in those instances moved the work in a different direction from\nCariou\xe2\x80\x99s classical portraiture and landscape photos, we can not say with certainty at\nthis point whether those artworks present a \xe2\x80\x9cnew expression, meaning, or message.\xe2\x80\x9d\nCampbell, 510 U.S. at 579.\nCertainly, there are key differences in those artworks compared to the photographs\nthey incorporate. Graduation, for instance, is tinted blue, and the jungle background\nis in softer focus than in Cariou\xe2\x80\x99s original. Lozenges painted over the subject\xe2\x80\x99s eyes\nand mouth \xe2\x80\x94 an alteration that appears frequently throughout the Canal Zone\nartworks \xe2\x80\x94 make the subject appear anonymous, rather than as the strong individual\nwho appears in the original. Along with the enlarged hands and electric guitar that\nPrince pasted onto his canvas, those alterations create the impression that the subject\nis not quite human. Cariou\xe2\x80\x99s photograph, on the other hand, presents a human being\nin his natural habitat, looking intently ahead. Where the photograph presents\nsomeone comfortably at home in nature, Graduation combines divergent elements\nto create a sense of discomfort. However, we cannot say for sure whether\nGraduation constitutes fair use or whether Prince has transformed Cariou\xe2\x80\x99s work\nenough to render it transformative.\nWe have the same concerns with Meditation, Canal Zone (2007), Canal Zone (2008),\nand Charlie Company. Each of those artworks differs from, but is still similar in key\naesthetic ways, to Cariou\xe2\x80\x99s photographs. In Meditation, Prince again added lozenges\nand a guitar to the same photograph that he incorporated into Graduation, this time\n237\n\n\x0ccutting the subject out of his background, switching the direction he is facing, and\ntaping that image onto a blank canvas. In Canal Zone (2007), Prince created a\ngridded collage using 31 different photographs of Cariou\xe2\x80\x99s, many of them in whole\nor significant part, with alterations of some of those photographs limited to lozenges\nor cartoonish appendages painted or drawn on. Canal Zone (2008) incorporates six\nphotographs of Cariou\xe2\x80\x99s in whole or in part, including the same subject as\nMeditation and Graduation. Prince placed the subject, with lozenges and guitar, on a\nbackground comprising components of various landscape photographs, taped\ntogether. The cumulative effect is of the subject in a habitat replete with lush\ngreenery, not dissimilar from many of Cariou\xe2\x80\x99s Yes Rasta photographs. And Charlie\nCompany prominently displays four copies of Cariou\xe2\x80\x99s photograph of a Rastafarian\nriding a donkey, substantially unaltered, as well as two copies of a seated nude\nwoman with lozenges covering all six faces. Like the other works just discussed,\nCharlie Company is aesthetically similar to Cariou\xe2\x80\x99s original work because it\nmaintains the pastoral background and individual focal point of the original\nphotograph \xe2\x80\x94 in this case, the man on the burro. While the lozenges, repetition of\nthe images, and addition of the nude female unarguably change the tenor of the piece,\nit is unclear whether these alterations amount to a sufficient transformation of the\noriginal work of art such that the new work is transformative.\nWe believe the district court is best situated to determine, in the first instance,\nwhether such relatively minimal alterations render Graduation, Meditation, Canal\nZone (2007), Canal Zone (2008), and Charlie Company fair uses (including whether\nthe artworks are transformative) or whether any impermissibly infringes on Cariou\xe2\x80\x99s\ncopyrights in his original photographs. We remand for that determination.\nCONCLUSION\nFor the reasons discussed, we hold that all except five (Graduation, Meditation,\nCanal Zone (2007), Canal Zone (2008), and Charlie Company) of Prince\xe2\x80\x99s artworks\nmake fair use of Cariou\xe2\x80\x99s photographs. We express no view as to whether the five\nare also entitled to a fair use defense. We REMAND with respect to those five so\nthat the district court, applying the proper standard, can determine in the first\ninstance whether any of them infringes on Cariou\xe2\x80\x99s copyrights or whether Prince is\nentitled to a fair use defense with regard to those artworks as well. The judgment of\nthe district court is REVERSED in part and VACATED in part.5\nFootnote 5: Because we reverse the district court with regard to the twenty-five of the artworks, and leave open\nthe question of fair use with regard to the remaining five, we vacate the district court\xe2\x80\x99s injunction. In the event\nthat Prince and Gagosian are ultimately held liable for copyright infringement, and in light of all parties\xe2\x80\x99\nagreement at oral argument that the destruction of Prince\xe2\x80\x99s artwork would be improper and against the public\ninterest, a position with which we agree, the district court should revisit what injunctive relief, if any, is\nappropriate. See eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006);\nSalinger v. Colting, 607 F.3d 68, 77 (2d Cir.2010).\n\nThe case is REMANDED for further proceedings consistent with this opinion.\nSenior Circuit Judge Wallace, concurring in part and dissenting in part:\nI agree with the bulk of the majority decision as to the law, including the majority\xe2\x80\x99s\ndetermination that the district court incorrectly imposed a requirement that the\n\n238\n\n\x0callegedly infringing works comment on the original works to be entitled to a fair use\ndefense. I nevertheless part company with the majority.\nWhile we may, as an appellate court, determine that secondary works are fair use in\ncertain instances, in the usual case, after correcting an erroneous legal standard\nemployed by the district court, we would remand for reconsideration. This standard,\nI suggest, should apply here where factual determinations must be reevaluated \xe2\x80\x94\nand perhaps new evidence or expert opinions will be deemed necessary by the fact\nfinder \xe2\x80\x94 after which a new decision can be made under the corrected legal analysis.\nBut the majority short-circuits this time-tested search for a just result under the law. I\nwould not apply the shortcut but would set aside the summary judgment, remand the\nentire case to the district court, and allow the district court to analyze material\nevidence under the proper standard.\nUnlike the majority, I would allow the district court to consider Prince\xe2\x80\x99s statements\nin reviewing fair use. While not the sine qua non of fair use, see Blanch v. Koons, 467\nF.3d 244, 255 n. 5 (2d Cir. 2006), I see no reason to discount Prince\xe2\x80\x99s statements as\nthe majority does. While it may seem intuitive to assume that a defendant claiming\nfair use would typically give self-serving ex post facto testimony to support a defense,\nthis Court has nevertheless relied on such statements when making this inquiry \xe2\x80\x94\neven if just to confirm its own analysis. See id. at 252-53, 255; see also Castle Rock\nEntm\xe2\x80\x99t, Inc. v. Carol Publ\xe2\x80\x99g Grp., Inc., 150 F.3d 132, 142 (2d Cir.1998) (looking to\nstatements of the allegedly infringing work\xe2\x80\x99s creators when analyzing the purpose\nand character of the secondary work). Thus, I view Prince\xe2\x80\x99s statements \xe2\x80\x94 which, as\nPrince acknowledges, consist of \xe2\x80\x9chis view of the purpose and effect of each of the\nindividual paintings\xe2\x80\x9d \xe2\x80\x94 as relevant to the transformativeness analysis.\nThe majority relies on the Seventh Circuit\xe2\x80\x99s decision in Brownmark Films, LLC v.\nComedy Partners, 682 F.3d 687 (7th Cir.2012), for the proposition that all the Court\nneeds to do here to determine transformativeness is view the original work and the\nsecondary work and, apparently, employ its own artistic judgment. In my view,\nBrownmark cannot be extended so far. \xe2\x80\xa6 Brownmark apparently arose in the context\nof a clear case of parody \xe2\x80\x94 so obvious that the appeals court affirmed the district\ncourt\xe2\x80\x99s conclusion that fair use was evident from even a \xe2\x80\x9cfleeting glance\xe2\x80\x9d at the\noriginal and secondary works. Id. at 689-90. I do not believe that the\ntransformativeness of Prince\xe2\x80\x99s works \xe2\x80\x94 which have not been presented as parody or\nsatire \xe2\x80\x94 can be so readily determined. Because this case arises after extensive\ndiscovery and argument by the parties, I disagree that we must limit our inquiry to\nour own artistic perceptions of the original and secondary works.\nIndeed, while I admit freely that I am not an art critic or expert, I fail to see how the\nmajority in its appellate role can \xe2\x80\x9cconfidently\xe2\x80\x9d draw a distinction between the\ntwenty-five works that it has identified as constituting fair use and the five works that\ndo not readily lend themselves to a fair use determination. This, mind you, is done\non a summary judgment review with no understanding of what additional evidence\nmay be presented on remand. I also fail to see a principled reason for remanding to\nthe district court only the five works the majority identifies as close calls, although I\nagree that they must be sent back to the trial court. If the district court is in the best\nposition to determine fair use as to some paintings, why is the same not true as to all\npaintings? Certainly we are not merely to use our personal art views to make the new\n239\n\n\x0clegal application to the facts of this case. Cf. Campbell v. Acuff-Rose Music, Inc., 510 U.S.\n569, 582, (1994) (\xe2\x80\x9cIt would be a dangerous undertaking for persons trained only to\nthe law to constitute themselves final judges of the worth of a work, outside of the\nnarrowest and most obvious limits\xe2\x80\x9d), quoting Bleistein v. Donaldson Lithographing Co.,\n188 U.S. 239, 251 (1903). It would be extremely uncomfortable for me to do so in\nmy appellate capacity, let alone my limited art experience.\nIn my view, because the district court takes the primary role in determining the facts\nand applying the law to the facts in fair use cases, after which we exercise our\nappellate review if called upon to do so, I conclude that as to each painting, \xe2\x80\x9cthe\ndistrict court is best situated to determine, in the first instance,\xe2\x80\x9d whether Prince is\nentitled to a fair use defense in light of the correct legal standard. I mean no\ndisrespect to the majority, but I, for one, do not believe that I am in a position to\nmake these fact- and opinion-intensive decisions on the twenty-five works that\npassed the majority\xe2\x80\x99s judicial observation. I do not know what additional facts will\nbecome relevant under the corrected rule of law, nor am I trained to make art\nopinions ab initio.\nI would thus remand the entire case \xe2\x80\x94 all thirty of Prince\xe2\x80\x99s paintings \xe2\x80\x94 for further\nproceedings in the district court on an open record to take such additional testimony\nas needed and apply the correct legal standard. On this basis, therefore, I respectfully\ndissent.\nNotes and questions\n(1) The Second Circuit\xe2\x80\x99s ruling in Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013) was based on\na side-by-side comparison of the works at issue, some of which had been barely altered and\nothers of which were altered almost beyond recognition. In addition to alterations of\nsubstance, the source material was sometimes tinted and always radically enlarged.\nCompare Graduation to the Cariou\xe2\x80\x99s original photo:\n\n240\n\n\x0cCompare Color Me Mine to the Cariou\xe2\x80\x99s original photo:\n\n(2) In Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013), the Second Circuit held that \xe2\x80\x9cthe law\nimposes no requirement that a work comment on the original or its author in order to be\nconsidered transformative\xe2\x80\x9d and furthermore that an artist\xe2\x80\x99s inability or unwillingness to\nadvocate a narrative of transformative use is not determinative. The majority explained (at\n707):\nIt is not surprising that, when transformative use is at issue, the alleged infringer\nwould go to great lengths to explain and defend his use as transformative. Prince did\nnot do so here. However, the fact that Prince did not provide those sorts of\nexplanations in his deposition \xe2\x80\x94 which might have lent strong support to his\ndefense \xe2\x80\x94 is not dispositive. What is critical is how the work in question appears to\nthe reasonable observer, not simply what an artist might say about a particular piece\nor body of work. Prince\xe2\x80\x99s work could be transformative even without commenting\non Cariou\xe2\x80\x99s work or on culture, and even without Prince\xe2\x80\x99s stated intention to do so.\nRather than confining our inquiry to Prince\xe2\x80\x99s explanations of his artworks, we\ninstead examine how the artworks may \xe2\x80\x9creasonably be perceived\xe2\x80\x9d in order to assess\ntheir transformative nature.\n\n(3) The majority found that twenty-five of Prince\xe2\x80\x99s artworks were \xe2\x80\x9ctransformative as a\nmatter of law\xe2\x80\x9d but remanded on a remaining five. Judge Wallace, in contrast, would have\nremanded \xe2\x80\x9cthe entire case to the district court, and allow the district court to\nanalyze material evidence under the proper standard.\xe2\x80\x9d Which opinion is more persuasive?\n\nUntransformative Copying and New Markets\nThe Sony Betamax was the first mass-market Video Cassette Recorder or VCR. The\nBetamax went on sale in 1975 and a year later Universal City Studios, Inc., and Walt Disney\nProductions, filed a law suit alleging that consumers used the device to infringe their\ncopyrights; they also alleged that Sony Corporation, the manufacturer of the device, was\nresponsible for any copyright infringement made possible by the new machine. The Supreme\nCourt\xe2\x80\x99s decision in Sony has two distinct components: the first examined whether consumer\n\n241\n\n\x0ctime-shifting of broadcast television for later viewing was fair use or copyright infringement;\nthe second concerned the manufacturer\xe2\x80\x99s liability for a technology which had both infringing\nand non-infringing uses. This following extract focuses on the fair use status of unauthorized\ntime-shifting.\nSony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984)\nJustice Stevens delivered the opinion of the Court\nThe question is thus whether the Betamax is capable of commercially significant\nnoninfringing uses. In order to resolve that question, we need not explore all the\ndifferent potential uses of the machine and determine whether or not they would\nconstitute infringement. Rather, we need only consider whether on the basis of the\nfacts as found by the District Court a significant number of them would be\nnoninfringing. Moreover, in order to resolve this case we need not give precise\ncontent to the question of how much use is commercially significant. For one\npotential use of the Betamax plainly satisfies this standard, however it is understood:\nprivate, noncommercial time-shifting in the home. It does so both (A) because\nrespondents have no right to prevent other copyright holders from authorizing it for\ntheir programs, and (B) because the District Court\xe2\x80\x99s factual findings reveal that even\nthe unauthorized home time-shifting of respondents\xe2\x80\x99 programs is legitimate fair use.\n[Justice Steven\xe2\x80\x99s discussion of authorized use is omitted.]\nUnauthorized Time-Shifting\nEven unauthorized uses of a copyrighted work are not necessarily infringing. An\nunlicensed use of the copyright is not an infringement unless it conflicts with one of\nthe specific exclusive rights conferred by the copyright statute. Twentieth Century Music\nCorp. v. Aiken, 422 U.S., at 154-155. Moreover, the definition of exclusive rights in \xc2\xa7\n106 of the present Act is prefaced by the words \xe2\x80\x9csubject to sections 107 through\n118.\xe2\x80\x9d Those sections describe a variety of uses of copyrighted material that \xe2\x80\x9care not\ninfringements of copyright\xe2\x80\x9d \xe2\x80\x9cnotwithstanding the provisions of section 106.\xe2\x80\x9d The\nmost pertinent in this case is \xc2\xa7 107, the legislative endorsement of the doctrine of\n\xe2\x80\x9cfair use.\xe2\x80\x9d29\nFootnote 29: The Copyright Act of 1909, 35 Stat. 1075, did not have a \xe2\x80\x9cfair use\xe2\x80\x9d provision. Although that Act\xe2\x80\x99s\ncompendium of exclusive rights \xe2\x80\x9cto print, reprint, publish, copy, and vend the copyrighted work\xe2\x80\x9d was broad\nenough to encompass virtually all potential interactions with a copyrighted work, the statute was never so\nconstrued. The courts simply refused to read the statute literally in every situation. When Congress amended the\nstatute in 1976, it indicated that it \xe2\x80\x9cintended to restate the present judicial doctrine of fair use, not to change,\nnarrow, or enlarge it in any way.\xe2\x80\x9d House Report p. 66 (1976).\n\nThat section identifies various factors that enable a court to apply an \xe2\x80\x9cequitable rule\nof reason\xe2\x80\x9d analysis to particular claims of infringement. Although not conclusive, the\nfirst factor requires that \xe2\x80\x9cthe commercial or nonprofit character of an activity\xe2\x80\x9d be\nweighed in any fair use decision. If the Betamax were used to make copies for a\ncommercial or profitmaking purpose, such use would presumptively be unfair. The\ncontrary presumption is appropriate here, however, because the District Court\xe2\x80\x99s\nfindings plainly establish that time-shifting for private home use must be\ncharacterized as a noncommercial, nonprofit activity. Moreover, when one considers\nthe nature of a televised copyrighted audiovisual work, \xc2\xa7 107(2), and that timeshifting merely enables a viewer to see such a work which he had been invited to\n242\n\n\x0cwitness in its entirety free of charge, the fact that the entire work is reproduced, see \xc2\xa7\n107(3), does not have its ordinary effect of militating against a finding of fair use.\nThis is not, however, the end of the inquiry because Congress has also directed us to\nconsider \xe2\x80\x9cthe effect of the use upon the potential market for or value of the\ncopyrighted work.\xe2\x80\x9d \xc2\xa7 107(4). The purpose of copyright is to create incentives for\ncreative effort. Even copying for noncommercial purposes may impair the copyright\nholder\xe2\x80\x99s ability to obtain the rewards that Congress intended him to have. But a use\nthat has no demonstrable effect upon the potential market for, or the value of, the\ncopyrighted work need not be prohibited in order to protect the author\xe2\x80\x99s incentive to\ncreate. The prohibition of such noncommercial uses would merely inhibit access to\nideas without any countervailing benefit.\nThus, although every commercial use of copyrighted material is presumptively an\nunfair exploitation of the monopoly privilege that belongs to the owner of the\ncopyright, noncommercial uses are a different matter. A challenge to a\nnoncommercial use of a copyrighted work requires proof either that the particular\nuse is harmful, or that if it should become widespread, it would adversely affect the\npotential market for the copyrighted work. Actual present harm need not be shown;\nsuch a requirement would leave the copyright holder with no defense against\npredictable damage. Nor is it necessary to show with certainty that future harm will\nresult. What is necessary is a showing by a preponderance of the evidence that some\nmeaningful likelihood of future harm exists. If the intended use is for commercial\ngain, that likelihood may be presumed. But if it is for a noncommercial purpose, the\nlikelihood must be demonstrated.\nIn this case, respondents failed to carry their burden with regard to home timeshifting. The District Court described respondents\xe2\x80\x99 evidence as follows:\n\xe2\x80\x9cPlaintiffs\xe2\x80\x99 experts admitted at several points in the trial that the time-shifting\nwithout librarying would result in \xe2\x80\x98not a great deal of harm.\xe2\x80\x99 Plaintiffs\xe2\x80\x99 greatest\nconcern about time-shifting is with \xe2\x80\x98a point of important philosophy that transcends\neven commercial judgment.\xe2\x80\x99 They fear that with any Betamax usage, \xe2\x80\x98invisible\nboundaries\xe2\x80\x99 are passed: \xe2\x80\x98the copyright owner has lost control over his program.\xe2\x80\x99\n\xe2\x80\x9c 480 F. Supp., at 467.\n\nLater in its opinion, the District Court observed:\n\xe2\x80\x9cMost of plaintiffs\xe2\x80\x99 predictions of harm hinge on speculation about audience\nviewing patterns and ratings, a measurement system which Sidney Sheinberg, MCA\xe2\x80\x99s\npresident, calls a \xe2\x80\x98black art\xe2\x80\x99 because of the significant level of imprecision involved\nin the calculations.\xe2\x80\x9d Id., at 469.\n\nThere was no need for the District Court to say much about past harm. \xe2\x80\x9cPlaintiffs\nhave admitted that no actual harm to their copyrights has occurred to date.\xe2\x80\x9d\nOn the question of potential future harm from time-shifting, the District Court\noffered a more detailed analysis of the evidence. It rejected respondents\xe2\x80\x99 \xe2\x80\x9cfear that\npersons \xe2\x80\x98watching\xe2\x80\x99 the original telecast of a program will not be measured in the live\naudience and the ratings and revenues will decrease,\xe2\x80\x9d by observing that current\nmeasurement technology allows the Betamax audience to be reflected. Id., at 466. It\nrejected respondents\xe2\x80\x99 prediction \xe2\x80\x9cthat live television or movie audiences will decrease\nas more people watch Betamax tapes as an alternative,\xe2\x80\x9d with the observation that\n243\n\n\x0c\xe2\x80\x9c[t]here is no factual basis for [the underlying] assumption.\xe2\x80\x9d It rejected respondents\xe2\x80\x99\n\xe2\x80\x9cfear that time-shifting will reduce audiences for telecast reruns,\xe2\x80\x9d and concluded\ninstead that \xe2\x80\x9cgiven current market practices, this should aid plaintiffs rather than\nharm them.\xe2\x80\x9d Ibid. And it declared that respondents\xe2\x80\x99 suggestion that \xe2\x80\x9ctheater or film\nrental exhibition of a program will suffer because of time-shift recording of that\nprogram\xe2\x80\x9d \xe2\x80\x9clacks merit.\xe2\x80\x9d\nAfter completing that review, the District Court restated its overall conclusion\nseveral times, in several different ways. \xe2\x80\x9cHarm from time-shifting is speculative and,\nat best, minimal.\xe2\x80\x9d \xe2\x80\x9cThe audience benefits from the time-shifting capability have\nalready been discussed. It is not implausible that benefits could also accrue to\nplaintiffs, broadcasters, and advertisers, as the Betamax makes it possible for more\npersons to view their broadcasts.\xe2\x80\x9d \xe2\x80\x9cNo likelihood of harm was shown at trial, and\nplaintiffs admitted that there had been no actual harm to date.\xe2\x80\x9d \xe2\x80\x9cTestimony at trial\nsuggested that Betamax may require adjustments in marketing strategy, but it did not\nestablish even a likelihood of harm.\xe2\x80\x9d \xe2\x80\x9cTelevision production by plaintiffs today is\nmore profitable than it has ever been, and, in five weeks of trial, there was no\nconcrete evidence to suggest that the Betamax will change the studios\xe2\x80\x99 financial\npicture.\xe2\x80\x9d\nThe District Court\xe2\x80\x99s conclusions are buttressed by the fact that to the extent timeshifting expands public access to freely broadcast television programs, it yields\nsocietal benefits. In Community Television of Southern California v. Gottfried, 459 U.S. 498\n(1983), we acknowledged the public interest in making television broadcasting more\navailable. Concededly, that interest is not unlimited. But it supports an interpretation\nof the concept of \xe2\x80\x9cfair use\xe2\x80\x9d that requires the copyright holder to demonstrate some\nlikelihood of harm before he may condemn a private act of time-shifting as a\nviolation of federal law.\nWhen these factors are all weighed in the \xe2\x80\x9cequitable rule of reason\xe2\x80\x9d balance, we must\nconclude that this record amply supports the District Court\xe2\x80\x99s conclusion that home\ntime-shifting is fair use. In light of the findings of the District Court regarding the\nstate of the empirical data, it is clear that the Court of Appeals erred in holding that\nthe statute as presently written bars such conduct.\nIn summary, the record and findings of the District Court lead us to two conclusions.\nFirst, Sony demonstrated a significant likelihood that substantial numbers of\ncopyright holders who license their works for broadcast on free television would not\nobject to having their broadcasts time-shifted by private viewers. And second,\nrespondents failed to demonstrate that time-shifting would cause any likelihood of\nnonminimal harm to the potential market for, or the value of, their copyrighted\nworks. The Betamax is, therefore, capable of substantial noninfringing uses. Sony\xe2\x80\x99s\nsale of such equipment to the general public does not constitute contributory\ninfringement of respondents\xe2\x80\x99 copyrights.\n***\n\xe2\x80\x9cThe direction of Art. I is that Congress shall have the power to promote the\nprogress of science and the useful arts. When, as here, the Constitution is permissive,\nthe sign of how far Congress has chosen to go can come only from Congress.\xe2\x80\x9d\nDeepsouth Packing Co. v. Laitram Corp., 406 U. S. 518, 530 (1972).\n244\n\n\x0cOne may search the Copyright Act in vain for any sign that the elected\nrepresentatives of the millions of people who watch television every day have made\nit unlawful to copy a program for later viewing at home, or have enacted a flat\nprohibition against the sale of machines that make such copying possible.\nIt may well be that Congress will take a fresh look at this new technology, just as it\nso often has examined other innovations in the past. But it is not our job to apply\nlaws that have not yet been written. Applying the copyright statute, as it now reads,\nto the facts as they have been developed in this case, the judgment of the Court of\nAppeals must be reversed.\nIt is so ordered.\nNotes and questions\n(1) In Sony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984), the Supreme\nCourt held by majority that consumer time-shifting of free-to-air broadcast television was\nfair use. It did so for two principle reasons. First, because time-shifting merely enabled\nviewers to see works which they had been invited to witness in their entirety free of charge,\nthe fact that the entire work is reproduced, did not have its ordinary effect of militating\nagainst a finding of fair use. Second, because the plaintiffs had offered no convincing\nevidence of market harm, the non-commercial use of the VCR by consumers should be\nconsidered fair use.\n(2) [Placeholder for summary of dissent]\n(3) Does Sony stand for a broad principle about consumer autonomy and the limits of\ncopyright, is it a narrow ruling based on specific technology that is now obsolete, or is there\nsome other way to characterize the decision?\nIn Recording Indus. Association of Am. v. Diamond Multimedia Sys., Inc., 180 F.3d 1072, 1079 (9th\nCir.1999), the Ninth Circuit said that the Diamond Rio mp3 player (a large capacity portable\nMP3 player that predated the now more famous Apple iPod) \xe2\x80\x9cmerely makes copie[d] in\norder to render portable, or \xe2\x80\x98space-shift,\xe2\x80\x99 those [music] files that already reside on a user\xe2\x80\x99s\nhard drive. . . . Such copying is a paradigmatic noncommercial personal use.\xe2\x80\x9d\nIn Fox Broadcasting Co., Inc. v. Dish Network LLC, 747 F. 3d 1060 (9th Cir. 2014), the Ninth\nCircuit held en banc that Dish Network was likely to succeed in its fair use defense with\nrespect to a digital video recorder that automatically skipped the advertisements in programs\nits users recorded. The court found that Fox had not demonstrated any harm from ondemand availability and that any harm resulting from the ease of skipping commercials, did\n\xe2\x80\x9cnot implicate any copyright interest.\xe2\x80\x9d\nThe court of appeals explained (at 1068-1069):\nYet, as the district court held, commercial-skipping does not implicate Fox\xe2\x80\x99s\ncopyright interest because Fox owns the copyrights to the television programs, not\nto the ads aired in the commercial breaks. If recording an entire copyrighted\nprogram is a fair use, the fact that viewers do not watch the ads not copyrighted by\nFox cannot transform the recording into a copyright violation.\n\nDo you agree with this reasoning?\n\n245\n\n\x0c[Placeholder] American Geophysical Union v. Texaco Inc., 60 F. 3d 913 (2d Cir. 1994)\n[Placeholder]\nA & M Records, Inc. v. Napster, Inc., 239 F. 3d 1004 (9th Cir. 2001)\nCircuit Judge Beezer\nPlaintiffs are engaged in the commercial recording, distribution and sale of\ncopyrighted musical compositions and sound recordings. The complaint alleges that\nNapster, Inc. (\xe2\x80\x9cNapster\xe2\x80\x9d) is a contributory and vicarious copyright infringer. The\ndistrict court preliminarily enjoined Napster \xe2\x80\x9cfrom engaging in, or facilitating others\nin copying, downloading, uploading, transmitting, or distributing plaintiffs\xe2\x80\x99\ncopyrighted musical compositions and sound recordings, protected by either federal\nor state law, without express permission of the rights owner.\xe2\x80\x9d We entered a\ntemporary stay of the preliminary injunction pending resolution of this appeal.\nNapster facilitates the transmission of MP3 files between and among its users.\nThrough a process commonly called \xe2\x80\x9cpeer-to-peer\xe2\x80\x9d file sharing, Napster allows its\nusers to: (1) make MP3 music files stored on individual computer hard drives\navailable for copying by other Napster users; (2) search for MP3 music files stored\non other users\xe2\x80\x99 computers; and (3) transfer exact copies of the contents of other\nusers\xe2\x80\x99 MP3 files from one computer to another via the Internet. These functions are\nmade possible by Napster\xe2\x80\x99s MusicShare software, available free of charge from\nNapster\xe2\x80\x99s Internet site, and Napster\xe2\x80\x99s network servers and server-side software.\nNapster provides technical support for the indexing and searching of MP3 files, as\nwell as for its other functions, including a \xe2\x80\x9cchat room,\xe2\x80\x9d where users can meet to\ndiscuss music, and a directory where participating artists can provide information\nabout their music.\nPlaintiffs claim Napster users are engaged in the wholesale reproduction and\ndistribution of copyrighted works, all constituting direct infringement. The district\ncourt agreed. The district court determined that plaintiffs\xe2\x80\x99 exclusive rights under \xc2\xa7\n106 were violated: \xe2\x80\x9chere the evidence establishes that a majority of Napster users use\nthe service to download and upload copyrighted music. And by doing that, it\nconstitutes\xe2\x80\x94the uses constitute direct infringement of plaintiffs\xe2\x80\x99 musical\ncompositions, recordings.\xe2\x80\x9d The district court also noted that \xe2\x80\x9cit is pretty much\nacknowledged by Napster that this is infringement.\xe2\x80\x9d We agree that plaintiffs have\nshown that Napster users infringe at least two of the copyright holders\xe2\x80\x99 exclusive\nrights: the rights of reproduction, \xc2\xa7 106(1); and distribution, \xc2\xa7 106(3). Napster users\nwho upload file names to the search index for others to copy violate plaintiffs\xe2\x80\x99\ndistribution rights. Napster users who download files containing copyrighted music\nviolate plaintiffs\xe2\x80\x99 reproduction rights.\nNapster asserts an affirmative defense to the charge that its users directly infringe\nplaintiffs\xe2\x80\x99 copyrighted musical compositions and sound recordings.\nFair Use\nNapster contends that its users do not directly infringe plaintiffs\xe2\x80\x99 copyrights because\nthe users are engaged in fair use of the material. Napster identifies three specific\nalleged fair uses: sampling, where users make temporary copies of a work before\n246\n\n\x0cpurchasing; space-shifting, where users access a sound recording through the\nNapster system that they already own in audio CD format; and permissive\ndistribution of recordings by both new and established artists.\nThe district court considered factors listed in 17 U.S.C. \xc2\xa7 107, which guide a court\xe2\x80\x99s\nfair use determination. These factors are: (1) the purpose and character of the use; (2)\nthe nature of the copyrighted work; (3) the \xe2\x80\x9camount and substantiality of the portion\nused\xe2\x80\x9d in relation to the work as a whole; and (4) the effect of the use upon the\npotential market for the work or the value of the work. The district court first\nconducted a general analysis of Napster system uses under \xc2\xa7 107, and then applied its\nreasoning to the alleged fair uses identified by Napster. The district court concluded\nthat Napster users are not fair users. We agree. We first address the court\xe2\x80\x99s overall\nfair use analysis.\n1. Purpose and Character of the Use\nThis factor focuses on whether the new work merely replaces the object of the\noriginal creation or instead adds a further purpose or different character. In other\nwords, this factor asks \xe2\x80\x9cwhether and to what extent the new work is \xe2\x80\x98transformative.\xe2\x80\x99\xe2\x80\x9d\nSee Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).\nThe district court first concluded that downloading MP3 files does not transform the\ncopyrighted work. This conclusion is supportable. Courts have been reluctant to find\nfair use when an original work is merely retransmitted in a different medium. See,\ne.g., Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir.1998) (concluding\nthat retransmission of radio broadcast over telephone lines is not transformative);\nUMG Recordings, Inc. v. MP3.com, Inc., 92 F.Supp.2d 349, 351 (S.D.N.Y.) (finding that\nreproduction of audio CD into MP3 format does not \xe2\x80\x9ctransform\xe2\x80\x9d the work).\nThis \xe2\x80\x9cpurpose and character\xe2\x80\x9d element also requires the district court to determine\nwhether the allegedly infringing use is commercial or noncommercial. See Campbell,\n510 U.S. at 584-85. A commercial use weighs against a finding of fair use but is not\nconclusive on the issue. Id. The district court determined that Napster users engage\nin commercial use of the copyrighted materials largely because (1) \xe2\x80\x9ca host user\nsending a file cannot be said to engage in a personal use when distributing that file to\nan anonymous requester\xe2\x80\x9d and (2) \xe2\x80\x9cNapster users get for free something they would\nordinarily have to buy.\xe2\x80\x9d The district court\xe2\x80\x99s findings are not clearly erroneous.\nDirect economic benefit is not required to demonstrate a commercial use. Rather,\nrepeated and exploitative copying of copyrighted works, even if the copies are not\noffered for sale, may constitute a commercial use. See Worldwide Church of God v.\nPhiladelphia Church of God, 227 F.3d 1110, 1118 (9th Cir.2000) (stating that church that\ncopied religious text for its members \xe2\x80\x9cunquestionably profited\xe2\x80\x9d from the\nunauthorized \xe2\x80\x9cdistribution and use of [the text] without having to account to the\ncopyright holder\xe2\x80\x9d); American Geophysical Union v. Texaco, Inc., 60 F.3d 913, 922 (2d\nCir.1994) (finding that researchers at for-profit laboratory gained indirect economic\nadvantage by photocopying copyrighted scholarly articles). In the record before us,\ncommercial use is demonstrated by a showing that repeated and exploitative\nunauthorized copies of copyrighted works were made to save the expense of\npurchasing authorized copies. See Worldwide Church, 227 F.3d at 1117-18; Sega Enters.\nLtd. v. MAPHIA, 857 F.Supp. 679, 687 (N.D.Cal.1994) (finding commercial use\n247\n\n\x0cwhen individuals downloaded copies of video games \xe2\x80\x9cto avoid having to buy video\ngame cartridges\xe2\x80\x9d); see also American Geophysical, 60 F.3d at 922. Plaintiffs made such a\nshowing before the district court.\nWe also note that the definition of a financially motivated transaction for the\npurposes of criminal copyright actions includes trading infringing copies of a work\nfor other items, \xe2\x80\x9cincluding the receipt of other copyrighted works.\xe2\x80\x9d See No\nElectronic Theft Act (\xe2\x80\x9cNET Act\xe2\x80\x9d), Pub.L. No. 105-147, 18 U.S.C. \xc2\xa7 101 (defining\n\xe2\x80\x9cFinancial Gain\xe2\x80\x9d).\n2. The Nature of the Use\nWorks that are creative in nature are \xe2\x80\x9ccloser to the core of intended copyright\nprotection\xe2\x80\x9d than are more fact-based works. See Campbell, 510 U.S. at 586. The\ndistrict court determined that plaintiffs\xe2\x80\x99 \xe2\x80\x9ccopyrighted musical compositions and\nsound recordings are creative in nature which cuts against a finding of fair use under\nthe second factor.\xe2\x80\x9d We find no error in the district court\xe2\x80\x99s conclusion.\n3. The Portion Used\n\xe2\x80\x9cWhile \xe2\x80\x98wholesale copying does not preclude fair use per se,\xe2\x80\x99 copying an entire work\n\xe2\x80\x98militates against a finding of fair use.\xe2\x80\x99\xe2\x80\x9d Worldwide Church, 227 F.3d at 1118 (quoting\nHustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1155 (9th Cir.1986)). The\ndistrict court determined that Napster users engage in \xe2\x80\x9cwholesale copying\xe2\x80\x9d of\ncopyrighted work because file transfer necessarily \xe2\x80\x9cinvolves copying the entirety of\nthe copyrighted work.\xe2\x80\x9d We agree. We note, however, that under certain\ncircumstances, a court will conclude that a use is fair even when the protected work\nis copied in its entirety. See, e.g., Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417,\n449-50 (1984) (acknowledging that fair use of time-shifting necessarily involved\nmaking a full copy of a protected work).\n4. Effect of Use on Market\n\xe2\x80\x9cFair use, when properly applied, is limited to copying by others which does not\nmaterially impair the marketability of the work which is copied.\xe2\x80\x9d Harper & Row\nPublishers, Inc. v. Nation Enters., 471 U.S. 539, 566-67 (1985). \xe2\x80\x9c[T]he importance of this\n[fourth] factor will vary, not only with the amount of harm, but also with the relative\nstrength of the showing on the other factors.\xe2\x80\x9d Campbell, 510 U.S. at 591 n. 21. The\nproof required to demonstrate present or future market harm varies with the\npurpose and character of the use:\nA challenge to a noncommercial use of a copyrighted work requires proof either\nthat the particular use is harmful, or that if it should become widespread, it would\nadversely affect the potential market for the copyrighted work. . . . If the intended\nuse is for commercial gain, that likelihood [of market harm] may be presumed. But\nif it is for a noncommercial purpose, the likelihood must be demonstrated.\n\nSony, 464 U.S. at 451 (emphases added).\nAddressing this factor, the district court concluded that Napster harms the market in\n\xe2\x80\x9cat least\xe2\x80\x9d two ways: it reduces audio CD sales among college students and it \xe2\x80\x9craises\nbarriers to plaintiffs\xe2\x80\x99 entry into the market for the digital downloading of music.\xe2\x80\x9d\nThe district court relied on evidence plaintiffs submitted to show that Napster use\n\n248\n\n\x0charms the market for their copyrighted musical compositions and sound recordings.\nIn a separate memorandum and order regarding the parties\xe2\x80\x99 objections to the expert\nreports, the district court examined each report, finding some more appropriate and\nprobative than others. Notably, plaintiffs\xe2\x80\x99 expert, Dr. E. Deborah Jay, conducted a\nsurvey (the \xe2\x80\x9cJay Report\xe2\x80\x9d) using a random sample of college and university students\nto track their reasons for using Napster and the impact Napster had on their music\npurchases. The court recognized that the Jay Report focused on just one segment of\nthe Napster user population and found \xe2\x80\x9cevidence of lost sales attributable to college\nuse to be probative of irreparable harm for purposes of the preliminary injunction\nmotion.\xe2\x80\x9d\nPlaintiffs also offered a study conducted by Michael Fine, Chief Executive Officer of\nSoundscan, (the \xe2\x80\x9cFine Report\xe2\x80\x9d) to determine the effect of online sharing of MP3\nfiles in order to show irreparable harm. Fine found that online file sharing had\nresulted in a loss of \xe2\x80\x9calbum\xe2\x80\x9d sales within college markets. After reviewing\ndefendant\xe2\x80\x99s objections to the Fine Report and expressing some concerns regarding\nthe methodology and findings, the district court refused to exclude the Fine Report\ninsofar as plaintiffs offered it to show irreparable harm.\nPlaintiffs\xe2\x80\x99 expert Dr. David J. Teece studied several issues (\xe2\x80\x9cTeece Report\xe2\x80\x9d),\nincluding whether plaintiffs had suffered or were likely to suffer harm in their\nexisting and planned businesses due to Napster use. Id. Napster objected that the\nreport had not undergone peer review. The district court noted that such reports\ngenerally are not subject to such scrutiny and overruled defendant\xe2\x80\x99s objections. Id.\nAs for defendant\xe2\x80\x99s experts, plaintiffs objected to the report of Dr. Peter S. Fader, in\nwhich the expert concluded that Napster is beneficial to the music industry because\nMP3 music file-sharing stimulates more audio CD sales than it displaces. The district\ncourt found problems in Dr. Fader\xe2\x80\x99s minimal role in overseeing the administration\nof the survey and the lack of objective data in his report. The court decided the\ngenerality of the report rendered it \xe2\x80\x9cof dubious reliability and value.\xe2\x80\x9d The court did\nnot exclude the report, however, but chose \xe2\x80\x9cnot to rely on Fader\xe2\x80\x99s findings in\ndetermining the issues of fair use and irreparable harm.\xe2\x80\x9d\nThe district court cited both the Jay and Fine Reports in support of its finding that\nNapster use harms the market for plaintiffs\xe2\x80\x99 copyrighted musical compositions and\nsound recordings by reducing CD sales among college students. The district court\ncited the Teece Report to show the harm Napster use caused in raising barriers to\nplaintiffs\xe2\x80\x99 entry into the market for digital downloading of music. The district court\xe2\x80\x99s\ncareful consideration of defendant\xe2\x80\x99s objections to these reports and decision to rely\non the reports for specific issues demonstrates a proper exercise of discretion in\naddition to a correct application of the fair use doctrine. Defendant has failed to\nshow any basis for disturbing the district court\xe2\x80\x99s findings.\nWe, therefore, conclude that the district court made sound findings related to\nNapster\xe2\x80\x99s deleterious effect on the present and future digital download market.\nMoreover, lack of harm to an established market cannot deprive the copyright holder\nof the right to develop alternative markets for the works. See L.A. Times v. Free\nRepublic, 54 U.S.P.Q.2d 1453, 1469-71 (C.D.Cal.2000) (stating that online market for\nplaintiff newspapers\xe2\x80\x99 articles was harmed because plaintiffs demonstrated that\n\n249\n\n\x0c\xe2\x80\x9c[defendants] are attempting to exploit the market for viewing their articles online\xe2\x80\x9d);\nsee also UMG Recordings, 92 F.Supp.2d at 352 (\xe2\x80\x9cAny allegedly positive impact of\ndefendant\xe2\x80\x99s activities on plaintiffs\xe2\x80\x99 prior market in no way frees defendant to usurp a\nfurther market that directly derives from reproduction of the plaintiffs\xe2\x80\x99 copyrighted\nworks.\xe2\x80\x9d). Here, similar to L.A. Times and UMG Recordings, the record supports the\ndistrict court\xe2\x80\x99s finding that the \xe2\x80\x9crecord company plaintiffs have already expended\nconsiderable funds and effort to commence Internet sales and licensing for digital\ndownloads.\xe2\x80\x9d 114 F.Supp.2d at 915. Having digital downloads available for free on\nthe Napster system necessarily harms the copyright holders\xe2\x80\x99 attempts to charge for\nthe same downloads.\nJudge Patel did not abuse her discretion in reaching the above fair use conclusions,\nnor were the findings of fact with respect to fair use considerations clearly erroneous.\nWe next address Napster\xe2\x80\x99s identified uses of sampling and space-shifting.\n5. Identified Uses\nNapster maintains that its identified uses of sampling and space-shifting were\nwrongly excluded as fair uses by the district court.\na. Sampling\nNapster contends that its users download MP3 files to \xe2\x80\x9csample\xe2\x80\x9d the music in order\nto decide whether to purchase the recording. Napster argues that the district court:\n(1) erred in concluding that sampling is a commercial use because it conflated a\nnoncommercial use with a personal use; (2) erred in determining that sampling\nadversely affects the market for plaintiffs\xe2\x80\x99 copyrighted music, a requirement if the\nuse is noncommercial; and (3) erroneously concluded that sampling is not a fair use\nbecause it determined that samplers may also engage in other infringing activity.\nThe district court determined that sampling remains a commercial use even if some\nusers eventually purchase the music. We find no error in the district court\xe2\x80\x99s\ndetermination. Plaintiffs have established that they are likely to succeed in proving\nthat even authorized temporary downloading of individual songs for sampling\npurposes is commercial in nature. The record supports a finding that free\npromotional downloads are highly regulated by the record company plaintiffs and\nthat the companies collect royalties for song samples available on retail Internet sites.\nId. Evidence relied on by the district court demonstrates that the free downloads\nprovided by the record companies consist of thirty-to-sixty second samples or are\nfull songs programmed to \xe2\x80\x9ctime out,\xe2\x80\x9d that is, exist only for a short time on the\ndownloader\xe2\x80\x99s computer. In comparison, Napster users download a full, free and\npermanent copy of the recording. The determination by the district court as to the\ncommercial purpose and character of sampling is not clearly erroneous.\nThe district court further found that both the market for audio CDs and market for\nonline distribution are adversely affected by Napster\xe2\x80\x99s service. As stated in our\ndiscussion of the district court\xe2\x80\x99s general fair use analysis: the court did not abuse its\ndiscretion when it found that, overall, Napster has an adverse impact on the audio\nCD and digital download markets. Contrary to Napster\xe2\x80\x99s assertion that the district\ncourt failed to specifically address the market impact of sampling, the district court\ndetermined that \xe2\x80\x9c[e]ven if the type of sampling supposedly done on Napster were a\n\n250\n\n\x0cnon-commercial use, plaintiffs have demonstrated a substantial likelihood that it\nwould adversely affect the potential market for their copyrighted works if it became\nwidespread.\xe2\x80\x9d The record supports the district court\xe2\x80\x99s preliminary determinations\nthat: (1) the more music that sampling users download, the less likely they are to\neventually purchase the recordings on audio CD; and (2) even if the audio CD\nmarket is not harmed, Napster has adverse effects on the developing digital\ndownload market.\nNapster further argues that the district court erred in rejecting its evidence that the\nusers\xe2\x80\x99 downloading of \xe2\x80\x9csamples\xe2\x80\x9d increases or tends to increase audio CD sales. The\ndistrict court, however, correctly noted that \xe2\x80\x9cany potential enhancement of plaintiffs\xe2\x80\x99\nsales . . . would not tip the fair use analysis conclusively in favor of defendant.\xe2\x80\x9d We\nagree that increased sales of copyrighted material attributable to unauthorized use\nshould not deprive the copyright holder of the right to license the material. See\nCampbell, 510 U.S. at 591 n. 21 (\xe2\x80\x9cEven favorable evidence, without more, is no\nguarantee of fairness. Judge Leval gives the example of the film producer\xe2\x80\x99s\nappropriation of a composer\xe2\x80\x99s previously unknown song that turns the song into a\ncommercial success; the boon to the song does not make the film\xe2\x80\x99s simple copying\nfair.\xe2\x80\x9d); see also L.A. Times, 54 U.S.P.Q.2d at 1471-72. Nor does positive impact in\none market, here the audio CD market, deprive the copyright holder of the right to\ndevelop identified alternative markets, here the digital download market. See id. at\n1469-71.\nWe find no error in the district court\xe2\x80\x99s factual findings or abuse of discretion in the\ncourt\xe2\x80\x99s conclusion that plaintiffs will likely prevail in establishing that sampling does\nnot constitute a fair use.\nb. Space-Shifting\nNapster also maintains that space-shifting is a fair use. Space-shifting occurs when a\nNapster user downloads MP3 music files in order to listen to music he already owns\non audio CD. Napster asserts that we have already held that space-shifting of musical\ncompositions and sound recordings is a fair use. See Recording Indus. Ass\xe2\x80\x99n of Am. v.\nDiamond Multimedia Sys., Inc., 180 F.3d 1072, 1079 (9th Cir.1999) (\xe2\x80\x9cRio [a portable\nMP3 player] merely makes copies in order to render portable, or \xe2\x80\x98space-shift,\xe2\x80\x99 those\nfiles that already reside on a user\xe2\x80\x99s hard drive. . . . Such copying is a paradigmatic\nnoncommercial personal use.\xe2\x80\x9d). See also generally Sony, 464 U.S. at 423 (holding that\n\xe2\x80\x9ctime-shifting,\xe2\x80\x9d where a video tape recorder owner records a television show for\nlater viewing, is a fair use).\nWe conclude that the district court did not err when it refused to apply the \xe2\x80\x9cshifting\xe2\x80\x9d\nanalyses of Sony and Diamond. Both Diamond and Sony are inapposite because the\nmethods of shifting in these cases did not also simultaneously involve distribution of\nthe copyrighted material to the general public; the time or space-shifting of\ncopyrighted material exposed the material only to the original user. In Diamond, for\nexample, the copyrighted music was transferred from the user\xe2\x80\x99s computer hard drive\nto the user\xe2\x80\x99s portable MP3 player. So too Sony, where \xe2\x80\x9cthe majority of VCR\npurchasers . . . did not distribute taped television broadcasts, but merely enjoyed\nthem at home.\xe2\x80\x9d Conversely, it is obvious that once a user lists a copy of music he\nalready owns on the Napster system in order to access the music from another\n\n251\n\n\x0clocation, the song becomes \xe2\x80\x9cavailable to millions of other individuals,\xe2\x80\x9d not just the\noriginal CD owner.\nc. Other Uses\nPermissive reproduction by either independent or established artists is the final fair\nuse claim made by Napster. The district court noted that plaintiffs did not seek to\nenjoin this and any other noninfringing use of the Napster system, including: chat\nrooms, message boards and Napster\xe2\x80\x99s New Artist Program. Plaintiffs do not\nchallenge these uses on appeal.\nWe find no error in the district court\xe2\x80\x99s determination that plaintiffs will likely succeed\nin establishing that Napster users do not have a fair use defense.\nNotes and questions\n(1) In A & M Records, Inc. v. Napster, Inc., 239 F. 3d 1004 (9th Cir. 2001), the Ninth Circuit\nheld that the unauthorized peer-to-peer filesharing of copyrighted music facilitated by\nNapster was not fair use. The court rejected Napster\xe2\x80\x99s arguments that user \xe2\x80\x9csampling\xe2\x80\x9d and\n\xe2\x80\x9cspace-shifting\xe2\x80\x9d were fair use.\n(2) Why is the result in Sony different to that in Napster?\n(3) Part of the reason Napster was so popular in 1999 and 2000 before it was shut down was\nthat there was no significant legal platform for MP3 downloads at the time. That market was\nessentially left void until the launch of the Apple iTunes Store on April 28, 2003. The\nrecording industry\xe2\x80\x99s reluctance to enter the digital distribution market seems like a classic\ncase of the \xe2\x80\x9cInnovator\xe2\x80\x99s Dilemma\xe2\x80\x9d. As Professor Clayton Christensen, explains in his\nfamous book by that name, companies that are heavily invested in the status quo are often\ndisinclined to pursue superior new technologies that will disrupt an existing market. This is\nnot because they fail to recognize the potential of the new technology, but rather because\nthey appreciate that the new technology will cannibalize the market share of existing\nofferings. Does the fact that the rights holder is leaving the market unfulfilled mean that\nwhat would otherwise be infringement should be fair use?\n\nNon-transformative, but preferred uses \xe2\x80\x93 Providing access to the print-disabled\nIn 2004, the Internet search engine company Google began scanning and digitizing the\ncollections of a number of academic libraries with the aim of making their contents\nsearchable in the same way Internet websites are searchable. One of the incentives for\nlibraries to participate in this program was that they received their own digital versions of\nany item in their collection that Google had scanned.\nThe Google Books project lead to a complicated class action lawsuit filed by the Authors\nGuild in 2005. In 2011, the Authors Guild filed a second lawsuit taking aim against the\nacademic libraries that had partnered with Google. Those libraries had centralized their\ndigital collections under the umbrella of a new organization called the HathiTrust.65 One of\nDisclosure: I have been a member of the HathiTrust Research Center Advisory Board since 2016, however\nthe views expressed herein are entirely my own.\n65\n\n252\n\n\x0cthe features of the HathiTrust that the Authors Guild objected to was that the HathiTrust\ndigital library allowed member libraries to students with print disabilities access to the full\ntext of copyrighted works. The HathiTrust case is addressed in more detail in the chapter on\nnon-expressive use. The following extract focus on the print disability issue.\nAuthors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014)\nCircuit Judge Barrington D. Parker\nThe HDL allows member libraries to provide patrons with certified print disabilities\naccess to the full text of copyrighted works. A \xe2\x80\x9cprint disability\xe2\x80\x9d is any disability that\nprevents a person from effectively reading printed material. Blindness is one\nexample, but print disabilities also include those that prevent a person from\nphysically holding a book or turning pages. To use this service, a patron must obtain\ncertification of his disability from a qualified expert. Through the HDL, a printdisabled user can obtain access to the contents of works in the digital library using\nadaptive technologies such as software that converts the text into spoken words, or\nthat magnifies the text. Currently, the University of Michigan\xe2\x80\x99s library is the only\nHDL member that permits such access, although other member libraries intend to\nprovide it in the future.\nAccess to the Print-Disabled\nThe HDL also provides print-disabled patrons with versions of all of the works\ncontained in its digital archive in formats accessible to them. In order to obtain\naccess to the works, a patron must submit documentation from a qualified expert\nverifying that the disability prevents him or her from reading printed materials, and\nthe patron must be affiliated with an HDL member that has opted-into the program.\nCurrently, the University of Michigan is the only HDL member institution that has\nopted-in. We conclude that this use is also protected by the doctrine of fair use.\n[The court\xe2\x80\x99s general discussion of fair use is omitted] In applying the Factor One\nanalysis, the district court concluded that \xe2\x80\x9cthe use of digital copies to facilitate access\nfor print-disabled persons is a transformative\xe2\x80\x9d use. HathiTrust, 902 F.Supp.2d at 461.\nThis is a misapprehension; providing expanded access to the print disabled is not\n\xe2\x80\x9ctransformative.\xe2\x80\x9d\nAs discussed above, a transformative use adds something new to the copyrighted\nwork and does not merely supersede the purposes of the original creation. See\nCampbell, 510 U.S. at 579. The Authors state that they \xe2\x80\x9cwrite books to be read (or\nlistened to).\xe2\x80\x9d By making copyrighted works available in formats accessible to the\ndisabled, the HDL enables a larger audience to read those works, but the underlying\npurpose of the HDL\xe2\x80\x99s use is the same as the author\xe2\x80\x99s original purpose.\nIndeed, when the HDL recasts copyrighted works into new formats to be read by\nthe disabled, it appears, at first glance, to be creating derivative works over which the\nauthor ordinarily maintains control. See 17 U.S.C. \xc2\xa7 106(2). As previously noted,\nparadigmatic examples of derivative works include translations of the original into a\ndifferent language, or adaptations of the original into different forms or media. See\nid. \xc2\xa7 101 (defining \xe2\x80\x9cderivative work\xe2\x80\x9d). The Authors contend that by converting their\n\n253\n\n\x0cworks into a different, accessible format, the HDL is simply creating a derivative\nwork.\nIt is true that, oftentimes, the print-disabled audience has no means of obtaining\naccess to the copyrighted works included in the HDL. But, similarly, the nonEnglish-speaking audience cannot gain access to untranslated books written in\nEnglish and an unauthorized translation is not transformative simply because it\nenables a new audience to read a work.\nThis observation does not end the analysis. \xe2\x80\x9cWhile a transformative use generally is\nmore likely to qualify as fair use, \xe2\x80\x98transformative use is not absolutely necessary for a\nfinding of fair use.\xe2\x80\x99\xe2\x80\x9d Swatch Group v. Bloomberg L.P., 756 F.3d 73, 84, (2d Cir.2014)\n(quoting Campbell, 510 U.S. at 579). We conclude that providing access to the printdisabled is still a valid purpose under Factor One even though it is not\ntransformative. We reach that conclusion for several reasons.\nFirst, the Supreme Court has already said so. As Justice Stevens wrote for the Court:\n\xe2\x80\x9cMaking a copy of a copyrighted work for the convenience of a blind person is\nexpressly identified by the House Committee Report as an example of fair use, with\nno suggestion that anything more than a purpose to entertain or to inform need\nmotivate the copying.\xe2\x80\x9d Sony Corp. of Am., 464 U.S. at 455 n. 40.\nOur conclusion is reinforced by the legislative history on which he relied. The House\nCommittee Report that accompanied codification of the fair use doctrine in the\nCopyright Act of 1976 expressly stated that making copies accessible \xe2\x80\x9cfor the use of\nblind persons\xe2\x80\x9d posed a \xe2\x80\x9cspecial instance illustrating the application of the fair use\ndoctrine....\xe2\x80\x9d House Report at 73 (1976). The Committee noted that \xe2\x80\x9cspecial [blindaccessible formats] ... are not usually made by the publishers for commercial\ndistribution.\xe2\x80\x9d Id. In light of its understanding of the market (or lack thereof) for\nbooks accessible to the blind, the Committee explained that \xe2\x80\x9cthe making of a single\ncopy or phonorecord by an individual as a free service for a blind persons [sic] would\nproperly be considered a fair use under section 107.\xe2\x80\x9d Id. We believe this guidance\nsupports a finding of fair use in the unique circumstances presented by print-disabled\nreaders.\nSince the passage of the 1976 Copyright Act, Congress has reaffirmed its\ncommitment to ameliorating the hardships faced by the blind and the print disabled.\nIn the Americans with Disabilities Act, Congress declared that our \xe2\x80\x9cNation\xe2\x80\x99s proper\ngoals regarding individuals with disabilities are to assure equality of opportunity, full\nparticipation, independent living, and economic self-sufficiency for such individuals.\xe2\x80\x9d\n42 U.S.C. \xc2\xa7 12101(7). Similarly, the Chafee Amendment illustrates Congress\xe2\x80\x99s intent\nthat copyright law make appropriate accommodations for the blind and print\ndisabled. See 17 U.S.C. \xc2\xa7 121.\nThrough the HDL, the disabled can obtain access to copyrighted works of all kinds,\nand there is no dispute that those works are of the sort that merit protection under\nthe Copyright Act. As a result, Factor Two weighs against fair use. This does not\npreclude a finding of fair use, however, given our analysis of the other factors. Cf.\nDavis v. Gap, Inc., 246 F.3d 152, 175 (2d Cir.2001) (\xe2\x80\x9cThe second statutory factor, the\nnature of the copyrighted work, is rarely found to be determinative.\xe2\x80\x9d).\n\n254\n\n\x0cRegarding Factor Three, as previously noted, the HDL retains copies as digital image\nfiles and as text-only files, which are then stored in four separate locations. The\nAuthors contend that this amount of copying is excessive because the Libraries have\nnot demonstrated their need to retain the digital image files in addition to the text\nfiles.\nWe are unconvinced. The text files are required for text searching and to create textto-speech capabilities for the blind and disabled. But the image files will provide an\nadditional and often more useful method by which many disabled patrons, especially\nstudents and scholars, can obtain access to these works. These image files contain\ninformation, such as pictures, charts, diagrams, and the layout of the text on the\nprinted page that cannot be converted to text or speech. None of this is captured by\nthe HDL\xe2\x80\x99s text-only copies. Many legally blind patrons are capable of viewing these\nimages if they are sufficiently magnified or if the color contrasts are increased. And\nother disabled patrons, whose physical impairments prevent them from turning\npages or from holding books, may also be able to use assistive devices to view all of\nthe content contained in the image files for a book. For those individuals, gaining\naccess to the HDL\xe2\x80\x99s image files \xe2\x80\x94 in addition to the text-only files \xe2\x80\x94 is necessary to\nperceive the books fully. Consequently, it is reasonable for the Libraries to retain\nboth the text and image copies.\nThe fourth factor also weighs in favor of a finding of fair use. It is undisputed that\nthe present-day market for books accessible to the handicapped is so insignificant\nthat \xe2\x80\x9cit is common practice in the publishing industry for authors to forgo royalties\nthat are generated through the sale of books manufactured in specialized formats for\nthe blind.\xe2\x80\x9d \xe2\x80\x9cThe number of accessible books currently available to the blind for\nborrowing is a mere few hundred thousand titles, a minute percentage of the world\xe2\x80\x99s\nbooks. In contrast, the HDL contains more than ten million accessible volumes.\xe2\x80\x9d\nWhen considering the 1976 Act, Congress was well aware of this problem. The\nHouse Committee Report observed that publishers did not usually make their books\navailable in specialized formats for the blind. House Report at 73, 1976. That\nobservation remains true today.\nWeighing the factors together, we conclude that the doctrine of fair use allows the\nLibraries to provide full digital access to copyrighted works to their print-disabled\npatrons.\nNotes and questions\n(1) In Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014), the Second Circuit held that\nproviding print-disabled patrons with full digital access to books was not transformative.\nThe court specifically overruled the district court on this point (at 101):\nBy making copyrighted works available in formats accessible to the disabled, the\nHDL enables a larger audience to read those works, but the underlying purpose of\nthe HDL\xe2\x80\x99s use is the same as the author\xe2\x80\x99s original purpose.\n\nNonetheless, the court agreed that providing access to the print-disabled is still a valid\npurpose under the first fair use factor, even though it was not transformative. This was not\nan especially difficult decision, making copies accessible \xe2\x80\x9cfor the use of blind persons\xe2\x80\x9d was\nclearly identified in the legislative history of the 1976 Copyright Act as a \xe2\x80\x9cspecial instance\n255\n\n\x0cillustrating the application of the fair use doctrine\xe2\x80\x9d. What was true in the 1970s, remains,\nsadly, true today, as the House Committee Report observed then, publishers did not \xe2\x80\x9cusually\nmake\xe2\x80\x9d their books available in specialized formats for the blind. That observation remains\ntrue today. In fact, the evidence showed that (at 103):\nThe number of accessible books currently available to the blind for borrowing is a\nmere few hundred thousand titles, a minute percentage of the world\xe2\x80\x99s books. In\ncontrast, the HDL contains more than ten million accessible volumes.\n\n(2) The Second Circuit in Authors Guild v. HathiTrust noted that in light of its holding on fair\nuse it did not need to consider whether the disability-access use is protected under the\nChafee Amendment, 17 U.S.C. \xc2\xa7 121. Under the Chafee Amendment, \xe2\x80\x9cauthorized entities\xe2\x80\x9d\nare permitted to reproduce or distribute copies of a previously published, nondramatic\nliterary work in specialized formats exclusively for use by the blind or other persons with\ndisabilities. Under \xc2\xa7 121(d)(1), an \xe2\x80\x9c\xe2\x80\x98authorized entity\xe2\x80\x99 means a nonprofit organization or a\ngovernmental agency that has a primary mission to provide specialized services relating to\ntraining, education, or adaptive reading or information access needs of blind or other\npersons with disabilities.\xe2\x80\x9d\nIn the district court, Judge Baer had held that the ADA reproduction and distribution of\ntheir collections to print-disabled individuals was part of the \xe2\x80\x9cprimary mission\xe2\x80\x9d of the\nlibraries of educational institutions. Thus, each library was a potential \xe2\x80\x9cauthorized entity\xe2\x80\x9d\nunder the Chafee Amendment. HathiTrust, 902 F.Supp.2d at 465. As a result, the district\ncourt concluded (at 465) that:\nThe provision of access to previously published non-dramatic literary works within\nthe HDL fits squarely within the Chafee Amendment, although Defendants may\ncertainly rely on fair use ... to justify copies made outside of these categories or in\nthe event that they are not authorized entities.\n\n(3) Note that although preservation was put forward as a potential fair use in HathiTrust, the\ndistrict court appeared to doubt that it qualified as such. The court of appeals vacated and\nremanded the district court\xe2\x80\x99s judgment with respect to preservation because the plaintiffs\nlacked standing to challenge any such preservation uses. Interestingly, the European Union\nDigital Single Market (\xe2\x80\x9cDSM\xe2\x80\x9d) Directive of 2019 provides just such an exception.\nCopyright in the Digital Single Market Directive of 2019\nArticle 6 Preservation of cultural heritage\nMember States shall provide for an exception [to the rights set forth in various\napplicable directives] in order to allow cultural heritage institutions to make copies\nof any works or other subject matter that are permanently in their collections, in any\nformat or medium, for purposes of preservation of such works or other subject\nmatter and to the extent necessary for such preservation.\n* \xe2\x80\x9ccultural heritage institution\xe2\x80\x9d is defined in Article 2 as \xe2\x80\x9ca publicly accessible library\nor museum, an archive or a film or audio heritage institution\xe2\x80\x9d\n\nMoreover, Under Article 7 of the DSM, any contractual provision contrary to such cultural\npreservation exception is unenforceable.\n\n256\n\n\x0cNon-transformative, but preferred uses \xe2\x80\x93 Educational fair uses\nSince the Statute of Anne, one of the essential purposes of copyright has been the\n\xe2\x80\x9cencouragement of learning\xe2\x80\x9d and the dissemination knowledge. There is a strong tradition in\nAmerican fair use jurisprudence of favoring educational uses. The text of section 107 itself\nhighlights the importance Congress placed on educational use: among the six statutory\nexamples are \xe2\x80\x9cteaching (including multiple copies for classroom use), scholarship, or\nresearch\xe2\x80\x9d and this preference is reinforced by the consideration in the first factor of whether\na use is for \xe2\x80\x9cnonprofit educational purposes.\xe2\x80\x9d\n17 U.S. Code \xc2\xa7 107 - Limitations on exclusive rights: Fair use\nNotwithstanding the provisions of sections 106 and 106A, the fair use of a\ncopyrighted work, including such use by reproduction in copies or phonorecords or\nby any other means specified by that section, for purposes such as criticism,\ncomment, news reporting, teaching (including multiple copies for classroom\nuse), scholarship, or research, is not an infringement of copyright. In determining\nwhether the use made of a work in any particular case is a fair use the factors to be\nconsidered shall include\xe2\x80\x94\n(1) the purpose and character of the use, including whether such use is of a\ncommercial nature or is for nonprofit educational purposes; \xe2\x80\xa6 (emphasis added)\n\nThe extent to which fair use justifies copying extracts of published works as part of student\ncourse materials has been contested for some time. Such practices were widespread at the\ntime the 1976 Act was passed and are clearly supported by the legislative history but changes\nin technology (especially electronic course reserves) and market structure (the availability of\nnew licensing options) have destabilized any consensus that existed in the background of the\n1976 Act.\nBasic Books, Inc. v. Kinko\'s Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991).\nIn Basic Books v. Kinko\'s, the district court rejected a commercial copyshop\xe2\x80\x99s argument that\nthe copying of various extracts from copyrighted works for college student course materials\nwas justified under the fair use doctrine. The court found the fact that certain excerpts\nrepresented 5 to 14 percent of the whole work to weigh against the defendant, and the fact\nthat other excerpts represented 16 to 28 percent of the whole work weighed heavily against\nthe defendant.\nPrinceton University Press v. Michigan Document Services, Inc., 99 F.3d 1381, 1383\n(6th Cir. 1996) (en banc)\nSimilarly, in Princeton University Press v. Michigan Document Services, the Sixth Circuit held that a\ncommercial copyshop was not entitled to a fair use defense when it reproduced substantial\nportions of copyrighted academic works and sold the copies in bound, paper coursepacks to\nstudents for use in courses at the University of Michigan. In Princeton University Press, the\ncourt found that extracts ranging from 5 to 30 percent of the works in question weighed\nagainst fair use. The Sixth Circuit also found that although the students\xe2\x80\x99 use of the copies\nwas noncommercial, the copy shop used the copies for sale in the course of their for-profit\nbusiness.\n\n257\n\n\x0cThe GSU Copyright Case\nIn Cambridge University Press v. Patton, three publishing houses sued the Georgia State\nUniversity (GSU) and various university officials for adopting a policy that allowed GSU\nprofessors to place book excerpts on electronic course reserve for the use by students as part\nof their course materials. The three publishers initially sued with respect to a larger set of\nbooks, but after encountering difficulty establishing that they in fact owned the rights in\nquestion, the case was narrowed to 74 individual works. Of those 74, the district court found\nonly five had been excerpted beyond the bounds of fair use.\nIn Cambridge Univ. Press v. Patton, 769 F.3d 1232 (11th Cir. 2014), the Eleventh Circuit\nprovided significant guidance as to how the fair use factors should be applied in\nphotocopying cases and in the new context of electronic reserves, but it eschewed the notion\nthat there can be generally applicable quantitative guidelines that determine whether a use is\nfair.\nCambridge University Press v. Albert, 906 F.3d 1290 (11th Cir. 2018)\nCircuit Judge William Pryor\nThis appeal requires us to decide whether the district court misinterpreted our\nmandate in an earlier appeal and misapplied the defense of fair use, 17 U.S.C. \xc2\xa7 107,\nin a dispute between three academic publishers and Georgia State University about\nthe University\xe2\x80\x99s practice of distributing to students digital excerpts of copyrighted\nworks without paying the publishers. After a bench trial, the district court ruled that\nthe publishers established a prima facie case that 48 digital excerpts infringed their\ncopyrights but that the University prevailed on an affirmative defense of fair use for\n43 of those excerpts. The publishers appealed. We upheld the district court\xe2\x80\x99s analysis\nof the first and fourth fair-use factors, including its finding that widespread\nunlicensed use of 31 excerpts for which licenses existed could cause substantial harm\nto the potential markets. But we reversed and remanded for the district court to\ncorrect specific errors in its analysis of fair use. One such error was the use of a\nmathematical formula to balance the four statutory fair-use factors. Another was the\ninsufficient weight the district court gave to the severe threat of market substitution.\nOn remand, the district court ruled that the University prevailed on its fair-use\ndefense for 44 of the 48 excerpts. Contrary to our instructions, the district court\nagain applied a mathematical formula to balance the factors. It also revisited its\nmarket-harm analysis for the 31 licensed excerpts and found that the threat of\nmarket harm supported fair use in all but six of the 48 instances. The district court\nmisinterpreted our earlier decision and misapplied the statutory test of fair use. We\naffirm in part, vacate in part, and remand with instructions.\nI. BACKGROUND\nA. The Facts and the Original Proceedings in the District Court\nCambridge University Press, Oxford University Press, Inc., and Sage Publications,\nInc. publish academic works. The publishers market their books to professors who\nteach at universities and colleges so that the professors will assign them as required\nreading for their courses and students will purchase them. The publishers also sell\nlicenses to use excerpts of their copyrighted works. In the past, professors\n258\n\n\x0ccommonly assigned\xe2\x80\x94and students purchased\xe2\x80\x94paper \xe2\x80\x9ccoursepacks\xe2\x80\x9d of licensed\nexcerpts. But it has become more common for universities to distribute digital\nexcerpts electronically. The publishers license users to photocopy and to digitally\nreproduce portions of their works. They offer such licenses, called \xe2\x80\x9cpermissions,\xe2\x80\x9d\nboth directly and through the Copyright Clearance Center.\nGeorgia State University, a public university in Atlanta, Georgia, provides several\nways to distribute excerpts of copyrighted works to students. The University pays to\nuse licensed excerpts in paper coursepacks that the University bookstore assembles\nand sells to students. The University also maintains two systems for electronic\ndistribution of course materials, \xe2\x80\x9cERes\xe2\x80\x9d and \xe2\x80\x9cuLearn.\xe2\x80\x9d Both programs enable\nUniversity personnel to upload digital copies of excerpts to University servers and\nallow students enrolled in a course to download the excerpts. Neither the University,\nnor the students, pay for the use of the digital excerpts. This approach is popular.\nFor example, during the Spring 2009 term, paper coursepacks were offered for only\nabout fifteen courses, while instructors in hundreds of courses made readings\navailable on ERes.\nIn 2008, the publishers filed a complaint against officials of the University for direct,\ncontributory, and vicarious copyright infringement, and sought declaratory and\ninjunctive relief. The publishers alleged a pattern and practice of distributing\nsubstantial unlicensed excerpts of their copyrighted works, and they sought to prove\ntheir claims based on a representative sample of infringements. The University\nasserted an affirmative defense of fair use.\nAfter a bench trial, the district court ruled that the University infringed the\ncopyrights of the publishers in five instances. See Cambridge Univ. Press v. Becker\n(Cambridge I), 863 F.Supp.2d 1190, 1363-64 (N.D. Ga. 2012). The district court\nfound that the publishers established a prima facie case for 48 instances of\ninfringement. But it ruled that the University established its fair-use defense for 43 of\nthe excerpts. We summarize its conclusions as relevant to this appeal.\nThe Copyright Act enumerates four \xe2\x80\x9cfactors to be considered\xe2\x80\x9d in finding that \xe2\x80\x9cthe\nuse made of a work in any particular case is a fair use\xe2\x80\x9d instead of an infringement. 17\nU.S.C. \xc2\xa7 107. The first factor is \xe2\x80\x9cthe purpose and character of the use, including\nwhether [it] is of a commercial nature or is for nonprofit educational purposes.\xe2\x80\x9d The\nsecond factor is \xe2\x80\x9cthe nature of the copyrighted work.\xe2\x80\x9d The third factor is \xe2\x80\x9cthe\namount and substantiality of the portion used in relation to the copyrighted work as\na whole.\xe2\x80\x9d And the fourth factor is \xe2\x80\x9cthe effect of the use upon the potential market\nfor or value of the copyrighted work.\xe2\x80\x9d\nThe district court found that factor one strongly favored a finding of fair use for\nevery excerpt because the University\xe2\x80\x99s copying was for nonprofit educational uses. It\nfound that factor two favored fair use for every excerpt because the academic works\nwere \xe2\x80\x9cinformational in nature.\xe2\x80\x9d It found that factor three favored fair use for 35\nexcerpts each of which was less than 10 percent or one chapter of the original work\nbut favored infringement for 13 excerpts that exceeded those bounds. And it found\nthat factor four strongly favored a finding of copyright infringement for 31 excerpts\nfor which digital permissions were available and favored fair use for 17 excerpts for\nwhich the publishers failed to prove the availability of digital permissions.\n\n259\n\n\x0cIn its overall analysis of fair use for each excerpt, the district court gave each of the\nfour factors equal weight and treated the four factors \xe2\x80\x9cas a simple mathematical\nformula.\xe2\x80\x9d That is, the district court simply \xe2\x80\x9cadd[ed] up\xe2\x80\x9d its findings whether each\nfactor favored fair use or infringement for each excerpt. It found that \xe2\x80\x9cfair use\napplied whenever at least three of the four factors favored [the University].\xe2\x80\x9d But\nwhen it initially weighed the factors together in its overall analysis for some excerpts,\nthe district court found a tie, with factor one strongly favoring fair use, factor two\nfavoring fair use, factor three favoring infringement, and factor four strongly\nfavoring infringement. For seven such excerpts, the district court broke the ties by\nreconsidering the weight of the third factor, the fourth factor, or both. It found that\nevidence of the amount of past permissions revenues strengthened the showing in\nfavor of infringement on the fourth factor in four instances, but that it undercut the\nweight of the showing in two instances. It did not change any of its findings that\nfactor four favored infringement.\nThe district court granted partial declaratory and injunctive relief to the publishers,\nbut it awarded attorney\xe2\x80\x99s fees and costs to the University, 17 U.S.C. \xc2\xa7 505.\nB. The Earlier Appeal\nIn the earlier appeal, we reversed, vacated, and remanded. Cambridge Univ. Press v.\nPatton (Cambridge II), 769 F.3d 1232, 1284 (11th Cir. 2014). As relevant here, we\nupheld the district court\xe2\x80\x99s analysis of factors one and four. But we instructed the\ndistrict court to correct its erroneous application of factors two and three and its\nerrors in weighing and balancing the four fair use factors in its overall analysis.\nWe held that the district court got two things right in Cambridge I: its analysis of the\nfirst factor and its analysis of the fourth factor. On the first factor, we agreed that\n\xe2\x80\x9cthe nonprofit educational nature\xe2\x80\x9d of the University\xe2\x80\x99s use favored the fair-use\ndefense. But we cautioned that the University\xe2\x80\x99s \xe2\x80\x9cnontransformative\xe2\x80\x9d use, verbatim\ncopying that served \xe2\x80\x9cthe same intrinsic purpose\xe2\x80\x9d for which the works were originally\npublished, made the threat of market substitution significant.\nWe also held that the District Court\xe2\x80\x99s analysis under the fourth factor was correct.\nBut we held that \xe2\x80\x9cthe District Court erred by not affording the fourth factor\nadditional weight in its overall fair use calculus.\xe2\x80\x9d Indeed, we found important errors\nin \xe2\x80\x9cthe District Court\xe2\x80\x99s overarching fair use methodology.\xe2\x80\x9d\nWe held that the district court erred when it gave each of the four factors equal\nweight, essentially taking a mechanical \xe2\x80\x9cadd up the factors\xe2\x80\x9d approach, and that it\nshould not have treated the four factors as a simple mathematical formula. We\nexplained that a given factor may be more or less important under the specific\ncircumstances of a particular case. In this case, we emphasized that the district court\n\xe2\x80\x9cshould have afforded [factor four] more significant weight in its overall fair use\nanalysis\xe2\x80\x9d because \xe2\x80\x9cthe threat of market substitution is severe.\xe2\x80\x9d We also reminded the\ndistrict court that \xe2\x80\x9cthe four statutory factors may not be treated in isolation, one\nfrom another. All are to be explored, and the results weighted together, in light of\nthe purposes of copyright.\xe2\x80\x9d (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,\n578 (1994)).\n\n260\n\n\x0cWe also held that the district court erred in its analyses of the second and third\nfactors. Although the district court initially found that factor two favored fair use and\nweighed equally with the other three factors, we explained that the District Court\nshould have held that the second factor was neutral, or even weighted against fair use,\nfor excerpts in which evaluative, analytical, or subjectively descriptive material\npredominated, and that the second fair use factor is of relatively little importance in\nthis case. As for the third factor, we held that the district court erred in creating a 10\npercent-or-one-chapter safe harbor for fair use. We explained that the district court\nwas required to assess each excerpt individually, considering the quantity and the\nquality of the material taken. And we explained that it was required to determine\nwhether that taking was excessive in light of not only the educational purpose of the\nuse but also the threat of market substitution. We also mentioned the ample\nprecedents that explain that excessive verbatim copying weighs against fair use under\nfactor three.\nWe vacated the orders that granted partial declaratory and injunctive relief to the\npublishers and awarded attorney\xe2\x80\x99s fees and costs to the University. Because the relief\nthat the district court ordered was based on its erroneous fair-use analysis, we\nremanded for the district court to correct its analysis to be consistent with our\nopinion.\nC. The Proceedings on Remand\nThe district court changed its fair-use analysis in response to our decision in\nCambridge II. In the new analysis, factor one \xe2\x80\x9cfavor[ed] fair use in all cases,\xe2\x80\x9d but \xe2\x80\x9cnot\nstrongly.\xe2\x80\x9d Cambridge Univ. Press v. Becker (Cambridge III) (N.D. Ga. Mar. 31, 2016).\nThe district court did not revisit its earlier first-factor analysis for any of the excerpts.\nInstead, in its new fair-use analysis for each excerpt, the district court simply\nrepeated the finding that factor one favors fair use.\nThe district court changed its second-factor analysis for each excerpt. It found that\nfactor two favored a finding of fair use in two instances, that it was neutral in 34\ninstances, and that it favored infringement in 12 instances.\nThe district court also changed its earlier third-factor analysis for each excerpt. It\nfound that factor three favored fair use for 37 excerpts, 34 of which had benefited\nfrom its earlier 10-percent-or-one-chapter safe harbor.\nThe district court also found that the third factor favored fair use for three excerpts\nthat exceeded its earlier safe harbor. For two excerpts, the district court found that\nthe price of the unpaid permissions \xe2\x80\x9cwould have been excessive\xe2\x80\x9d and that the high\nprice \xe2\x80\x9callowed\xe2\x80\x9d the district court \xe2\x80\x9cto look more favorably\xe2\x80\x9d on the unpaid use of a\ngreater \xe2\x80\x9cquantity\xe2\x80\x9d of material. Cambridge III, slip op. at 116, 176 (emphases omitted).\nThe district court changed its fourth-factor analysis for the 31 excerpts for which it\nhad originally found that factor four strongly disfavored fair use. Under its new\nanalysis, the district court stated that factor four would only initially favor the\npublishers in those instances. Then, based on its reading of Cambridge II, the district\ncourt offered the University three ways to prove that the fourth factor actually\nfavored fair use in a particular instance:\n\n261\n\n\x0c[1] [T]he Court of Appeals held that Defendants may seek to prove that in fact, the\ndemand for excerpts of a particular copyrighted work was so limited that repetitive\nunpaid copying of excerpts from that work would have been unlikely even if unpaid\ncopying of excerpts was a widespread practice in colleges and universities. In such a\ncase the actions of Defendants in using unpaid excerpts would not have caused\nsubstantial damage to the potential market for the copyrighted work to such a\ndegree that Plaintiffs would lose the incentive to publish the work. [2] Defendants\nmay also seek to prove that their actions (even assuming widespread availability of\nunpaid excerpts) did not substantially affect the value of the copyrighted work in\n2009. . . . [3] Defendants may also seek to prove that the portion of the market\ncaptured by unpaid use is so slight that it would have had no effect on the author\xe2\x80\x99s\nor the Plaintiffs\xe2\x80\x99 decision to propagate the work in the first place.\n\nId. at 12-13. The district court suggested that the relevant evidence for these\nshowings would generally come from the records of permissions sales for excerpts\nfrom the book.\nThe district court also adjusted its method of balancing the four factors. It explained\nthat the \xe2\x80\x9cinitial, approximate respective weights of the four factors\xe2\x80\x9d were \xe2\x80\x9c25% for\nfactor one, 5% for factor two, 30% for factor three, and 40% for factor four.\xe2\x80\x9d If a\nparticular factor had noteworthy strength or weakness, the weight of that factor\nwould be adjusted in the district court\xe2\x80\x99s new analysis.\nDespite these changes to its analysis, the district court reached similar bottom-line\nresults. It again found fair use for each of the 43 excerpts for which it had originally\ndone so. And it found fair use in one instance where it had previously found\ninfringement. Compare Cambridge I, 863 F.Supp.2d at 1359 (finding that the\nUniversity\xe2\x80\x99s use of two chapters from The Power Elite, by C. Wright Mills, was\nunfair), with Cambridge III, slip op. at 200-01 (finding that the use of The Power Elite\nwas fair).\nThe district court again found fair use for the vast majority of excerpts in large part\nbecause it reversed most of its original fourth-factor findings. On remand, the\ndistrict court found that the fourth factor supported fair use in 42 of 48 instances.\nThe district court left unchanged only six of its 31 original findings that the threat of\nmarket harm weighed against fair use for excerpts for which licenses were available.\nThe district court granted partial declaratory and injunctive relief against the\nUniversity. But it ruled that the University was the prevailing side and was entitled to\nan award of costs and attorneys\xe2\x80\x99 fees.\nII. STANDARDS OF REVIEW\nFair use involves both questions of law and questions of fact. After a bench trial, we\nreview a district court\xe2\x80\x99s conclusions of law de novo and a district court\xe2\x80\x99s factual\nfindings for clear error. We review de novo the district court\xe2\x80\x99s interpretation and\napplication of this court\xe2\x80\x99s mandate in an earlier appeal.\nIII. DISCUSSION\nWe divide our discussion in two parts. First, we explain that the district court\nmisinterpreted our mandate and misapplied the test of fair use. Second, we explain\nthat the district court did not abuse its discretion when it declined to reopen the\nrecord. We affirm in part, vacated in part, and remand with instructions.\n262\n\n\x0cA. The District Court Erred when It Made Its New Findings of Fair Use.\nThe district court misinterpreted our mandate and misapplied the test of fair use on\nremand. In Cambridge II, we instructed the district court to correct its \xe2\x80\x9cerroneous\napplication of factors two and three\xe2\x80\x9d and its errors in weighing the four factors in its\noverall analysis of fair use for each excerpt. But the district court exceeded this\nlimited mandate, revisiting its 31 earlier findings that factor four favored\ninfringement and reversing all but six of them. The district court again applied a\nmathematical formula in its overall analysis of fair use. And it erroneously considered\nthe high price of permissions when it found that factor three favored fair use for two\nexcerpts.\n1. The District Court Erred when It Revisited Factor Four.\nThe publishers argue that the district court failed to follow this Court\xe2\x80\x99s remand\ninstructions when it revisited its earlier findings that factor four favored infringement.\nThe University responds that the district court correctly changed its approach to\nreflect our decision in Cambridge II. We agree with the publishers.\nIn deciding this appeal, we are bound by the decision in Cambridge II, just as the\ndistrict court was bound to apply its mandate. In particular, findings of fact and\nconclusions of law by an appellate court are generally binding in all subsequent\nproceedings in the same case in the trial court or on a later appeal. And under the\nmandate rule, which is nothing more than a specific application of the \xe2\x80\x98law of the\ncase\xe2\x80\x99 doctrine, a district court, when acting under an appellate court\xe2\x80\x99s mandate,\ncannot vary it, or examine it for any other purpose than execution; or give any other\nor further relief; or intermeddle with it, further than to settle so much as has been\nremanded. The trial court must implement both the letter and the spirit of the\nmandate, taking into account the appellate court\xe2\x80\x99s opinion and the circumstances it\nembraces.\nThe district court interpreted our earlier decision to instruct it to change its fourthfactor analysis for the 31 excerpts for which digital permissions were available,\nCambridge III, slip op. at 11-13, but the district court misinterpreted our mandate. In\nits original decision, the district court found that the fourth factor weighed heavily\nagainst fair use in all 31 instances where the publishers made digital licenses available.\nOur decision in Cambridge II upheld those 31 findings. We held that the District\nCourt did not err in its application of the fourth factor. The only error we identified\nin the district court\xe2\x80\x99s treatment of the fourth factor was that, in weighing and\nbalancing the relative importance of the factors, it undervalued the \xe2\x80\x9csevere\xe2\x80\x9d threat of\nmarket harm posed by the University\xe2\x80\x99s \xe2\x80\x9cnontransformative\xe2\x80\x9d copying.\nWe did not instruct the district court to revisit its earlier findings that factor four\nfavored infringement when we instructed it to reweigh the factors on remand.\nIndeed, we explained that, \xe2\x80\x9c[a]lthough . . . the District Court\xe2\x80\x99s method for weighing\nthe four factors against one another was erroneous, this does not mean that the\nDistrict Court\xe2\x80\x99s reasoning under each of the four factors [was] also necessarily\nflawed.\xe2\x80\x9d Id. at 1260. And we repeatedly held that, although it should have weighed\nboth factor one and factor four differently, the district court \xe2\x80\x9cdid not err\xe2\x80\x9d in its\napplication of those two factors. On remand, the district court correctly declined to\nrevisit its first-factor analysis for any of the excerpts. It followed our instruction to\n263\n\n\x0cchange only how \xe2\x80\x9cstrongly\xe2\x80\x9d factor one weighed in favor of fair use in its overall\nanalysis for each excerpt. See Cambridge III, slip op. at 11, 18. In contrast, the district\ncourt changed all but six of its original findings that factor four favored infringement\ninstead of giving those findings \xe2\x80\x9cmore significant weight in its overall fair use\nanalysis,\xe2\x80\x9d Cambridge II, 769 F.3d at 1283.\nThe University contends that the district court correctly revisited its earlier findings\nthat factor four favored infringement because Cambridge II announced a new standard\nof market harm, but the University misreads our earlier decision. It stresses that we\ndescribed the \xe2\x80\x9ccentral question under the fourth factor\xe2\x80\x9d as whether a use \xe2\x80\x9cwould\ncause substantial economic harm such that allowing it would frustrate the purposes\nof copyright by materially impairing [the publishers\xe2\x80\x99] incentive to publish the work.\xe2\x80\x9d\nId. at 1276 (emphasis omitted). But we used this description of market harm\xe2\x80\x94which\nmerely echoed longstanding precedent, see Campbell, 510 U.S. at 590; Peter Letterese &\nAssoc., Inc. v. World Inst. of Scientology Enter., Int\xe2\x80\x99l, 533 F.3d 1287, 1315 (11th Cir.\n2008)\xe2\x80\x94to explain that the earlier \xe2\x80\x9canalysis under the fourth factor was correct.\xe2\x80\x9d\nCambridge II, 769 F.3d at 1279.\nIn short, we held in Cambridge II that the district court\xe2\x80\x99s original fourth-factor analysis\nwas correct. That holding precluded the district court from revisiting the fourth\nfactor in Cambridge III. On remand, the district court must reinstate its original\nfindings that the fourth factor strongly disfavors fair use for the 31 excerpts for\nwhich the publishers proved the availability of digital licenses.\n2. The District Court Erred when It Weighed and Balanced the Factors in Its Overall\nCalculus of Fair Use for Each Excerpt.\nThe publishers argue that the district court erred by again applying a mathematical\nformula in its overall analysis of fair use for each excerpt. The University contends\nthat, although the district court provided approximate initial weights of the four\nfactors at the outset of its remand decision, it adjusted that formula in its overall\nanalysis for each excerpt. We again agree with the publishers.\nIn Cambridge II, we identified two distinct ways in which, in its original analysis, the\ndistrict court failed to recognize that \xe2\x80\x9ca given factor may be more or less\nimportant. . . under the specific circumstances of [a particular] case.\xe2\x80\x9d Cambridge II,\n769 F.3d at 1260. First, we explained that the District Court erred in giving each of\nthe four factors equal weight. Second, we explained that the district court erred in\ntreating the four factors as a simple mathematical formula, which we also described\nas an \xe2\x80\x9carithmetic approach.\xe2\x80\x9d\nOn remand, the district court corrected the first of these errors but again committed\nthe second. The district court assigned \xe2\x80\x9cinitial, approximate respective weights of the\nfour factors as follows: 25% for factor one, 5% for factor two, 30% for factor three,\nand 40% for factor four.\xe2\x80\x9d Cambridge III, slip op. at 14. Although the district court\nheeded our instructions in Cambridge II when it recognized that some factors are\nmore important than others, it failed to break free of its erroneous \xe2\x80\x9carithmetic\napproach\xe2\x80\x9d and to give each excerpt the holistic review the Act demands.\nAs the Supreme Court has explained and as we reiterated in Cambridge II, \xe2\x80\x9cthe four\nstatutory factors may not be treated in isolation, one from another. All are to be\n\n264\n\n\x0cexplored, and the results weighed together, in light of the purposes of copyright.\xe2\x80\x9d\nCambridge II, 769 F.3d at 1260 (alteration adopted) (quoting Campbell, 510 U.S. at 578).\nWe emphasized that \xe2\x80\x9cfair use is not a mechanical determination,\xe2\x80\x9d id. (alteration\nadopted) (quoting Wright v. Warner Books, Inc., 953 F.2d 731, 740 (2d Cir. 1991)), and\nthat a court must \xe2\x80\x9cweigh[ ] . . . the four factors in light of the facts of a given case,\xe2\x80\x9d\nid. at 1259.\nTo be sure, the district court described its arithmetic weights as \xe2\x80\x9cinitial\xe2\x80\x9d and\n\xe2\x80\x9capproximate,\xe2\x80\x9d and it stated that it would \xe2\x80\x9cadjust\xe2\x80\x9d them when it found a\n\xe2\x80\x9cnoteworthy strength or weakness\xe2\x80\x9d among the factors. Id. at 13. But the district\ncourt made such adjustments only four times, each time to bolster the importance of\nthe third factor\xe2\x80\x99s weighing against fair use. See id. at 38, 68, 140, & 201. And, on\nthose four occasions, the district court did nothing to adjust the other factors in the\noverall fair-use calculus. We conclude that the district court\xe2\x80\x99s quantitative rubric was\nan improper substitute for a qualitative consideration of each instance of copying in\nthe light of its particular facts.\nThe district court failed to give each excerpt the holistic review that the Act demands.\nOn this remand, the district court must not apply a mathematical formula at any step\nof its analysis. We reiterate our holding in Cambridge II that \xe2\x80\x9cthe fourth factor looms\nlarge in the overall fair use analysis\xe2\x80\x9d for each excerpt in this appeal, 769 F.3d at 1275,\nbut we instruct the district court to evaluate the four factors qualitatively, not\nquantitatively, and to take care to consider them holistically \xe2\x80\x9cin light of the purposes\nof copyright.\xe2\x80\x9d Campbell, 510 U.S. at 578.\n3. The District Court Erred when It Considered the Cost of Purchasing Licenses in\nFinding that the Third Factor Favored Fair Use.\nThe district court twice erred in applying the third factor of the statutory test of fair\nuse when it considered whether the cost of licensing was \xe2\x80\x9cexcessive\xe2\x80\x9d in the light of\nthe publishers\xe2\x80\x99 \xe2\x80\x9cmarginal cost for authorizing digital copies . . . , [which] would not\nvary no matter how many digital copies were authorized.\xe2\x80\x9d Cambridge III, slip op. at\n116, 176. The district court reasoned that high prices allowed it to look more\nfavorably on the quantity of the University\xe2\x80\x99s use than it otherwise would. In these\ntwo instances, the district court deviated from the language of the Act.\nThe third factor of the statutory fair-use test is \xe2\x80\x9cthe amount and substantiality of the\nportion used in relation to the copyrighted work as a whole.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(3).\nThis provision of the Act does not direct courts to consider the price of the unpaid\nuse. If it did, then the district court\xe2\x80\x99s reasoning could tilt the third factor in favor of\nfair use even in cases of extensive verbatim copying. After all, it is always the case\nthat a publisher\xe2\x80\x99s \xe2\x80\x9cmarginal cost for authorizing digital copies would be virtually nil,\nand would not vary no matter how many digital copies were authorized.\xe2\x80\x9d Cambridge\nIII, slip op. at 116, 176. When we instructed the district court to correct its analysis\nunder the third factor on remand, we did not include this consideration. See\nCambridge II, 769 F.3d at 1275. The district court erred when it twice considered the\nprice of the unpaid use as relevant to the third factor.\nIV. CONCLUSION\n\n265\n\n\x0cWe AFFIRM in part, VACATE in part, and REMAND for proceedings consistent\nwith this opinion. We affirm the order denying the publishers\xe2\x80\x99 request to reopen the\nrecord, but we vacate the judgment entered on remand. The district court must\nreinstate its earlier findings that factor four strongly disfavors fair use for 31 of the\n48 excerpts. The district court must eschew a quantitative approach to the weighing\nand balancing of the fair-use factors and give each excerpt the holistic, qualitative,\nand individual analysis that the Act demands. And the district court must omit any\nconsideration of price from its analysis of the third factor. Because the district\ncourt\xe2\x80\x99s award of attorney\xe2\x80\x99s fees and costs was based on its erroneous fair-use analysis,\nwe also VACATE that award and the underlying determination that the University is\nthe prevailing party.\nNotes and questions\n(1) Cambridge University Press v. Albert, 906 F.3d 1290 (11th Cir. 2018) (Cambridge IV)\ncontinues the long running saga generally referred to as the GSU Copyright Case, a pitch battle\nbetween a group of academic publishers and the Georgia State University. In this latest\niteration, the Eleventh Circuit again faulted the district court for taking an overly\nmathematical approach to fair use and also for giving insufficient weight \xe2\x80\x9cto the severe\nthreat of market substitution\xe2\x80\x9d in a case of non-transformative copying.\n(2) [Placeholder for discussion of the implications of Cambridge II and Cambridge IV, are they\nconsistent?]\n\nRecent fair use cases\n[Placeholder for discussion of recent fair use cases, including, Brammer v. Violent Hues Prods.,\nLLC No. 18-1763, 2019 WL 1867833 (4th Cir. Apr. 26, 2019)]\n\n266\n\n\x0c8. FAIR USE AND NON-EXPRESSIVE USE\nNon-Expressive Use\nAlthough the phrase \xe2\x80\x9cnon-expressive use\xe2\x80\x9d does not appear in the relevant caselaw, a range\nof technological fair use cases on issues such as software reverse engineering, plagiarism\ndetection software, and text data mining are best understood as non-expressive uses. If the\nraison d\xe2\x80\x99etre of copyright is the protection of original expression, it follows that nonexpressive uses of copyrighted works are unlikely to interfere with the legitimate interests of\nthe copyright owner and will thus ordinarily qualify as fair use.\nA complete view of modern copyright law is impossible without understanding its\napplication to non-expressive uses. Although the concept of text data mining might strike\nsome as a rather esoteric topic of interest only to computer scientists and numbers geeks,\ntext data mining is the essential building block of the technologies that increasingly influence\nour lives: Internet search engines, machine learning and artificial intelligence.66\nReverse Engineering\nComputer software is written in human readable source code, but it is typically distributed in\nobject code; a string of ones and zeros that is only readable by computers. Software is\nprotected by copyright, but all software performs functions and contains ideas and\ninformation that are not entitled to copyright protection. Access to these uncopyrightable\ncomponents is essential to building interoperable programs that will work with the original\nsoftware. The lawfulness of reverse engineering or decompiling software to extract these\nnon-copyrightable keys to interoperability became a critical issue in conflicts between\nindependent videogame publishers and the makers of video game consoles in the early 1990s.\nSega Enter. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)\nIn 1991 the videogame company Accolade bought a Sega Genesis game console and a number of Sega licensed game\ncartridges and set about cracking open their secrets. The courts had already decided that reverse engineering object code did\nnot violate trade secret law, however because this process involved making several technical copies of the software\xe2\x80\x94albeit\n\nThis chapter borrows considerably from a series of articles and amicus briefs in which I have argued that\ncopying an expressive work for a non-expressive use amounts to fair use. See Matthew Sag, Copyright and CopyReliant Technology, 103 NW. U. L. REV. 1607 (2009); Matthew Sag, Orphan Works as Grist for the Data Mill, 27\nBERKLEY TECH. L. J. 1503 (2012); Matthew Jockers, Matthew Sag & Jason Schultz, Digital Archives: Don\xe2\x80\x99t Let\nCopyright Block Data Mining, 490 NATURE 29-30 (October 4, 2012). Brief of Digital Humanities and Law\nScholars in Support of Defendants\xe2\x80\x99 Motion For Summary Judgment in Authors Guild v. HathiTrust (11-CV06351-HB) (July 7, 2012); Brief of Digital Humanities and Law Scholars in Support of Defendants\xe2\x80\x99 Motion For\nSummary Judgment in Authors Guild v. Google (1:05-cv-08136-DC) (August 3, 2012); Brief of Digital Humanities\nand Law Scholars in Support of Defendants-Appellees and Affirmance in Authors Guild v. HathiTrust (12-4547)\n(June 4, 2013); and Brief of Digital Humanities and Law Scholars in Support of Defendants-Appellees and\nAffirmance in Authors Guild v. Google (13-4829) (July 10, 2014). Other scholars have also advanced very similar\ntheories. See e.g., Ed Lee, Technological Fair Use, 83 S. CAL. L. REV. 797 (2010); Maurizio Borghi & Stavroula\nKarapapa, Non-Display Uses of Copyright Works, 1 QUEEN MARY J. INTELL. PROP. 21 (2011); ABRAHAM\nDRASSINOWER, WHAT\xe2\x80\x99S WRONG WITH COPYING (2015). See also, Amanda Levendowski, How Copyright Law\nCan Fix Artificial Intelligence\xe2\x80\x99s Implicit Bias Problem, 93 Wash L. Rev. 579 (2018) (applying the theory of nonexpressive use); Abraham Drassinower, Authorship as Public Address: On the Specificity of Copyright Vis-a\xcc\x80-vis Patent\nand Trade-Mark, 2008 MICH. ST. L. REV. 199, 204 (characterizing copyright as \xe2\x80\x9can exclusive right of public\npresentation\xe2\x80\x9d).\n66\n\n267\n\n\x0conly as an intermediate step toward the production of an interoperable game that did not by itself infringe copyright\xe2\x80\x94the\nquestion was whether these intermediate copies constituted copyright infringement.\n\nCircuit Judge Reinhardt\nThis case presents several difficult questions of first impression involving our\ncopyright and trademark laws. We are asked to determine, first, whether the\nCopyright Act permits persons who are neither copyright holders nor licensees to\ndisassemble a copyrighted computer program in order to gain an understanding of\nthe unprotected functional elements of the program. In light of the public policies\nunderlying the Act, we conclude that, when the person seeking the understanding\nhas a legitimate reason for doing so and when no other means of access to the\nunprotected elements exists, such disassembly is as a matter of law a fair use of the\ncopyrighted work. [The court\xe2\x80\x99s general discussion of the fair use doctrine is omitted.]\n(a)\nWith respect to the first statutory factor, we observe initially that the fact that\ncopying is for a commercial purpose weighs against a finding of fair use. Harper &\nRow, 471 U.S. at 562. However, the presumption of unfairness that arises in such\ncases can be rebutted by the characteristics of a particular commercial use. Hustler\nMagazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1152 (9th Cir.1986).\nSega argues that because Accolade copied its object code in order to produce a\ncompeting product, the Harper & Row presumption applies and precludes a finding\nof fair use. That analysis is far too simple and ignores a number of important\nconsiderations. We must consider other aspects of \xe2\x80\x9cthe purpose and character of the\nuse\xe2\x80\x9d as well. As we have noted, the use at issue was an intermediate one only and\nthus any commercial \xe2\x80\x9cexploitation\xe2\x80\x9d was indirect or derivative.\nThe declarations of Accolade\xe2\x80\x99s employees indicate, and the district court found, that\nAccolade copied Sega\xe2\x80\x99s software solely in order to discover the functional\nrequirements for compatibility with the Genesis console \xe2\x80\x94 aspects of Sega\xe2\x80\x99s\nprograms that are not protected by copyright. 17 U.S.C. \xc2\xa7 102(b). With respect to the\nvideo game programs contained in Accolade\xe2\x80\x99s game cartridges, there is no evidence\nin the record that Accolade sought to avoid performing its own creative work.\nIndeed, most of the games that Accolade released for use with the Genesis console\nwere originally developed for other hardware systems. Moreover, with respect to the\ninterface procedures for the Genesis console, Accolade did not seek to avoid paying\na customarily charged fee for use of those procedures, nor did it simply copy Sega\xe2\x80\x99s\ncode; rather, it wrote its own procedures based on what it had learned through\ndisassembly. Taken together, these facts indicate that although Accolade\xe2\x80\x99s ultimate\npurpose was the release of Genesis-compatible games for sale, its direct purpose in\ncopying Sega\xe2\x80\x99s code, and thus its direct use of the copyrighted material, was simply\nto study the functional requirements for Genesis compatibility so that it could\nmodify existing games and make them usable with the Genesis console. Moreover, as\nwe discuss below, no other method of studying those requirements was available to\nAccolade. On these facts, we conclude that Accolade copied Sega\xe2\x80\x99s code for a\nlegitimate, essentially non-exploitative purpose, and that the commercial aspect of its\nuse can best be described as of minimal significance.\n\n268\n\n\x0cWe further note that we are free to consider the public benefit resulting from a\nparticular use notwithstanding the fact that the alleged infringer may gain\ncommercially. See Hustler, 796 F.2d at 1153 (quoting MCA, Inc. v. Wilson, 677 F.2d\n180, 182 (2d Cir.1981)). Public benefit need not be direct or tangible, but may arise\nbecause the challenged use serves a public interest. Id. In the case before us,\nAccolade\xe2\x80\x99s identification of the functional requirements for Genesis compatibility\nhas led to an increase in the number of independently designed video game programs\noffered for use with the Genesis console. It is precisely this growth in creative\nexpression, based on the dissemination of other creative works and the unprotected\nideas contained in those works, that the Copyright Act was intended to promote. See\nFeist Publications, Inc. v. Rural Tel. Serv. Co., (1991) (citing Harper & Row, 471 US at\n556-57). The fact that Genesis-compatible video games are not scholarly works, but\nworks offered for sale on the market, does not alter our judgment in this regard. We\nconclude that given the purpose and character of Accolade\xe2\x80\x99s use of Sega\xe2\x80\x99s video\ngame programs, the presumption of unfairness has been overcome and the first\nstatutory factor weighs in favor of Accolade.\n(b)\nAs applied, the fourth statutory factor, effect on the potential market for the\ncopyrighted work, bears a close relationship to the \xe2\x80\x9cpurpose and character\xe2\x80\x9d inquiry\nin that it, too, accommodates the distinction between the copying of works in order\nto make independent creative expression possible and the simple exploitation of\nanother\xe2\x80\x99s creative efforts. We must, of course, inquire whether, \xe2\x80\x9cif [the challenged\nuse] should become widespread, it would adversely affect the potential market for\nthe copyrighted work,\xe2\x80\x9d Sony Corp. v. Universal City Studios, 464 US 417, 451 (1984), by\ndiminishing potential sales, interfering with marketability, or usurping the market,\nHustler, 796 F.2d at 1155-56. If the copying resulted in the latter effect, all other\nconsiderations might be irrelevant. The Harper & Row Court found a use that\neffectively usurped the market for the copyrighted work by supplanting that work to\nbe dispositive. 471 US at 567-69. However, the same consequences do not and could\nnot attach to a use which simply enables the copier to enter the market for works of\nthe same type as the copied work.\nUnlike the defendant in Harper & Row, which printed excerpts from President Ford\xe2\x80\x99s\nmemoirs verbatim with the stated purpose of \xe2\x80\x9cscooping\xe2\x80\x9d a Time magazine review of\nthe book, Accolade did not attempt to \xe2\x80\x9cscoop\xe2\x80\x9d Sega\xe2\x80\x99s release of any particular game\nor games, but sought only to become a legitimate competitor in the field of Genesiscompatible video games. Within that market, it is the characteristics of the game\nprogram as experienced by the user that determine the program\xe2\x80\x99s commercial\nsuccess. As we have noted, there is nothing in the record that suggests that Accolade\ncopied any of those elements.\nBy facilitating the entry of a new competitor, the first lawful one that is not a Sega\nlicensee, Accolade\xe2\x80\x99s disassembly of Sega\xe2\x80\x99s software undoubtedly \xe2\x80\x9caffected\xe2\x80\x9d the\nmarket for Genesis-compatible games in an indirect fashion. We note, however, that\nwhile no consumer except the most avid devotee of President Ford\xe2\x80\x99s regime might\nbe expected to buy more than one version of the President\xe2\x80\x99s memoirs, video game\nusers typically purchase more than one game. There is no basis for assuming that\nAccolade\xe2\x80\x99s \xe2\x80\x9cIshido\xe2\x80\x9d has significantly affected the market for Sega\xe2\x80\x99s \xe2\x80\x9cAltered Beast\xe2\x80\x9d,\n269\n\n\x0csince a consumer might easily purchase both; nor does it seem unlikely that a\nconsumer particularly interested in sports might purchase both Accolade\xe2\x80\x99s \xe2\x80\x9cMike\nDitka Power Football\xe2\x80\x9d and Sega\xe2\x80\x99s \xe2\x80\x9cJoe Montana Football\xe2\x80\x9d, particularly if the games\nare, as Accolade contends, not substantially similar. In any event, an attempt to\nmonopolize the market by making it impossible for others to compete runs counter\nto the statutory purpose of promoting creative expression and cannot constitute a\nstrong equitable basis for resisting the invocation of the fair use doctrine. Thus, we\nconclude that the fourth statutory factor weighs in Accolade\xe2\x80\x99s, not Sega\xe2\x80\x99s, favor,\nnotwithstanding the minor economic loss Sega may suffer.\n(c)\nThe second statutory factor, the nature of the copyrighted work, reflects the fact that\nnot all copyrighted works are entitled to the same level of protection. The protection\nestablished by the Copyright Act for original works of authorship does not extend to\nthe ideas underlying a work or to the functional or factual aspects of the work. 17\nU.S.C. \xc2\xa7 102(b). To the extent that a work is functional or factual, it may be copied,\nBaker v. Selden, 101 US 99, 102-04 (1879), as may those expressive elements of the\nwork that \xe2\x80\x9cmust necessarily be used as incident to\xe2\x80\x9d expression of the underlying\nideas, functional concepts, or facts, id. at 104. Works of fiction receive greater\nprotection than works that have strong factual elements, such as historical or\nbiographical works, or works that have strong functional elements, such as\naccounting textbooks. Works that are merely compilations of fact are copyrightable,\nbut the copyright in such a work is \xe2\x80\x9cthin.\xe2\x80\x9d Feist Publications, 111 S.Ct. at 1289.\nComputer programs pose unique problems for the application of the\n\xe2\x80\x9cidea/expression distinction\xe2\x80\x9d that determines the extent of copyright protection. To\nthe extent that there are many possible ways of accomplishing a given task or\nfulfilling a particular market demand, the programmer\xe2\x80\x99s choice of program structure\nand design may be highly creative and idiosyncratic. However, computer programs\nare, in essence, utilitarian articles \xe2\x80\x94 articles that accomplish tasks. As such, they\ncontain many logical, structural, and visual display elements that are dictated by the\nfunction to be performed, by considerations of efficiency, or by external factors such\nas compatibility requirements and industry demands. Computer Assoc. Int\xe2\x80\x99l, Inc. v. Altai,\nInc., 1992 WL 372273 (2d Cir.1992) (\xe2\x80\x9cCAI\xe2\x80\x9d). In some circumstances, even the exact\nset of commands used by the programmer is deemed functional rather than creative\nfor purposes of copyright. \xe2\x80\x9c[W]hen specific instructions, even though previously\ncopyrighted, are the only and essential means of accomplishing a given task, their\nlater use by another will not amount to infringement.\xe2\x80\x9d National Commission on New\nTechnological Uses of Copyrighted Works, Final Report 1, 20 (1979).\nSega argues that even if many elements of its video game programs are properly\ncharacterized as functional and therefore not protected by copyright, Accolade\ncopied protected expression. Sega is correct. The record makes clear that disassembly\nis wholesale copying. Because computer programs are also unique among\ncopyrighted works in the form in which they are distributed for public use, however,\nSega\xe2\x80\x99s observation does not bring us much closer to a resolution of the dispute.\nThe unprotected aspects of most functional works are readily accessible to the\nhuman eye. The systems described in accounting textbooks or the basic structural\n\n270\n\n\x0cconcepts embodied in architectural plans, to give two examples, can be easily copied\nwithout also copying any of the protected, expressive aspects of the original works.\nComputer programs, however, are typically distributed for public use in object code\nform, embedded in a silicon chip or on a floppy disk. For that reason, humans often\ncannot gain access to the unprotected ideas and functional concepts contained in\nobject code without disassembling that code \xe2\x80\x94 i.e., making copies.\nSega argues that the record does not establish that disassembly of its object code is\nthe only available method for gaining access to the interface specifications for the\nGenesis console, and the district court agreed. An independent examination of the\nrecord reveals that Sega misstates its contents, and demonstrates that the district\ncourt committed clear error in this respect.\nThe record clearly establishes that humans cannot read object code. Sega makes\nmuch of Mike Lorenzen\xe2\x80\x99s statement that a reverse engineer can work directly from\nthe zeros and ones of object code but \xe2\x80\x9c[i]t\xe2\x80\x99s not as fun.\xe2\x80\x9d In full, Lorenzen\xe2\x80\x99s\nstatements establish only that the use of an electronic decompiler is not absolutely\nnecessary. Trained programmers can disassemble object code by hand. Because even\na trained programmer cannot possibly remember the millions of zeros and ones that\nmake up a program, however, he must make a written or computerized copy of the\ndisassembled code in order to keep track of his work. The relevant fact for purposes\nof Sega\xe2\x80\x99s copyright infringement claim and Accolade\xe2\x80\x99s fair use defense is that\ntranslation of a program from object code into source code cannot be accomplished\nwithout making copies of the code.\nThe district court also suggested that Accolade could have avoided a copyright\ninfringement suit by programming in a \xe2\x80\x9cclean room\xe2\x80\x9d. That finding too is clearly\nerroneous. A \xe2\x80\x9cclean room\xe2\x80\x9d is a procedure used in the computer industry in order to\nprevent direct copying of a competitor\xe2\x80\x99s code during the development of a\ncompeting product. Programmers in clean rooms are provided only with the\nfunctional specifications for the desired program. As Dr. Tredennick explained, the\nuse of a clean room would not have avoided the need for disassembly because\ndisassembly was necessary in order to discover the functional specifications for a\nGenesis-compatible game.\nIn summary, the record clearly establishes that disassembly of the object code in\nSega\xe2\x80\x99s video game cartridges was necessary in order to understand the functional\nrequirements for Genesis compatibility. The interface procedures for the Genesis\nconsole are distributed for public use only in object code form, and are not visible to\nthe user during operation of the video game program. Because object code cannot be\nread by humans, it must be disassembled, either by hand or by machine. Disassembly\nof object code necessarily entails copying. Those facts dictate our analysis of the\nsecond statutory fair use factor. If disassembly of copyrighted object code is per se\nan unfair use, the owner of the copyright gains a de facto monopoly over the\nfunctional aspects of his work \xe2\x80\x94 aspects that were expressly denied copyright\nprotection by Congress. 17 U.S.C. \xc2\xa7 102(b). In order to enjoy a lawful monopoly\nover the idea or functional principle underlying a work, the creator of the work must\nsatisfy the more stringent standards imposed by the patent laws. Bonito Boats, Inc. v.\nThunder Craft Boats, Inc., 489 US 141, 159-64 (1989). Sega does not hold a patent on\nthe Genesis console.\n271\n\n\x0cBecause Sega\xe2\x80\x99s video game programs contain unprotected aspects that cannot be\nexamined without copying, we afford them a lower degree of protection than more\ntraditional literary works. See CAI, 23 U.S.P.Q.2d at 1257. In light of all the\nconsiderations discussed above, we conclude that the second statutory factor also\nweighs in favor of Accolade.\n(d)\nAs to the third statutory factor, Accolade disassembled entire programs written by\nSega. Accordingly, the third factor weighs against Accolade. The fact that an entire\nwork was copied does not, however, preclude a finding a fair use. Sony Corp., 464 US\nat 449-50, 104 S.Ct. at 792; Hustler, 796 F.2d at 1155. In fact, where the ultimate (as\nopposed to direct) use is as limited as it was here, the factor is of very little weight.\nCf. Wright v. Warner Books, Inc., 953 F.2d 731, 738 (2d Cir.1991).\n(e)\nIn summary, careful analysis of the purpose and characteristics of Accolade\xe2\x80\x99s use of\nSega\xe2\x80\x99s video game programs, the nature of the computer programs involved, and the\nnature of the market for video game cartridges yields the conclusion that the first,\nsecond, and fourth statutory fair use factors weigh in favor of Accolade, while only\nthe third weighs in favor of Sega, and even then only slightly. Accordingly, Accolade\nclearly has by far the better case on the fair use issue.\nWe are not unaware of the fact that to those used to considering copyright issues in\nmore traditional contexts, our result may seem incongruous at first blush. To\noversimplify, the record establishes that Accolade, a commercial competitor of Sega,\nengaged in wholesale copying of Sega\xe2\x80\x99s copyrighted code as a preliminary step in the\ndevelopment of a competing product. However, the key to this case is that we are\ndealing with computer software, a relatively unexplored area in the world of\ncopyright law. We must avoid the temptation of trying to force \xe2\x80\x9cthe proverbial\nsquare peg into a round hole.\xe2\x80\x9d CAI, 23 U.S.P.Q.2d at 1257.\nIn determining whether a challenged use of copyrighted material is fair, a court must\nkeep in mind the public policy underlying the Copyright Act. \xe2\x80\x9c`The immediate effect\nof our copyright law is to secure a fair return for an \xe2\x80\x9cauthor\xe2\x80\x99s\xe2\x80\x9d creative labor. But the\nultimate aim is, by this incentive, to stimulate artistic creativity for the general public\ngood.\xe2\x80\x99\xe2\x80\x9c Sony Corp., 464 US at 432. When technological change has rendered an aspect\nor application of the Copyright Act ambiguous, \xe2\x80\x9c\xe2\x80\x98the Copyright Act must be\nconstrued in light of this basic purpose.\xe2\x80\x99\xe2\x80\x9d Id. As discussed above, the fact that\ncomputer programs are distributed for public use in object code form often\nprecludes public access to the ideas and functional concepts contained in those\nprograms, and thus confers on the copyright owner a de facto monopoly over those\nideas and functional concepts. That result defeats the fundamental purpose of the\nCopyright Act \xe2\x80\x94 to encourage the production of original works by protecting the\nexpressive elements of those works while leaving the ideas, facts, and functional\nconcepts in the public domain for others to build on. Feist Publications, 111 S.Ct. at\n1290.\n(f)\n\n272\n\n\x0cWe conclude that where disassembly is the only way to gain access to the ideas and\nfunctional elements embodied in a copyrighted computer program and where there\nis a legitimate reason for seeking such access, disassembly is a fair use of the\ncopyrighted work, as a matter of law. Our conclusion does not, of course, insulate\nAccolade from a claim of copyright infringement with respect to its finished\nproducts. Sega has reserved the right to raise such a claim, and it may do so on\nremand.\nNotes and questions\n(1) In Sega Enter. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) the Ninth Circuit held\ndisassembly or reverse engineering of software code to gain access to the ideas and\nfunctional elements embodied therein for a legitimate reason was fair use as a matter of law.\n(2) Notice how interconnected the Ninth Circuit\xe2\x80\x99s fair use analysis is with the ideaexpression distinction. The court stressed the importance of protecting the work\xe2\x80\x99s\nexpression from exploitative duplication, while at the same time enabling innovation and\ncompetition by preserving the unprotected status of ideas and functional components within\nthe software and it applied the fair use factors through this lens.\n(3) Almost a decade later, the Ninth Circuit addressed the same issue in Sony Computer\nEntertainment v. Connectix, 203 F.3d 596 (9th Cir. 2000). From the beginning of its decision,\nthe court emphasized the importance of the idea expression distinction (at 598):\n[W]e are called upon once again to apply the principles of copyright law to\ncomputers and their software, to determine what must be protected as expression\nand what must be made accessible to the public as function.\n\nConsistent with its decision in Sega, the court held that intermediate copying of software\ncould be protected as fair use if the copying was necessary to gain access to the functional\nelements of the software. The court expressly recognized (at 603) that \xe2\x80\x9cthe fair use doctrine\npreserves public access to the ideas and functional elements embedded in copyrighted\ncomputer software programs.\xe2\x80\x9d\n(3) Since Sega v. Accolade courts have consistently held that making unauthorized copies of a\ncomputer program, as a necessary step in reverse engineering, is fair use. This outcome was\nimplicitly confirmed by the fact that Congress chose to include circumventing encryption for\nthe purpose of reverse engineering as an allowable exception to the anti-circumvention\nprovisions of the DMCA. See Section 1201(f) of the Copyright Act.\nAnti-plagiarism software\nA.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009)\nCircuit Judge Traxler\nPlaintiffs brought this copyright infringement action against defendant iParadigms,\nLLC, based on its use of essays and other papers written by plaintiffs for submission\nto their high school teachers through an online plagiarism detection service operated\nby iParadigms. The district court granted summary judgment in favor of iParadigms\non plaintiffs\xe2\x80\x99 copyright infringement claim based on the doctrine of fair use.\n\n273\n\n\x0cDefendant iParadigms owns and operates \xe2\x80\x9cTurnitin Plagiarism Detection Service,\xe2\x80\x9d\nan online technology system designed to evaluate the originality of written works in\norder to prevent plagiarism. According to iParadigms, Turnitin offers high school\nand college educators an automated means of verifying that written works submitted\nby students are originals and not the products of plagiarism. When a school\nsubscribes to iParadigms\xe2\x80\x99 service, it typically requires its students to submit their\nwritten assignments via a web-based system available at www.turnitin.com or via an\nintegration between Turnitin and a school\xe2\x80\x99s course management system. In order to\nsubmit papers online, students must be enrolled in an active class and must enter the\nclass ID number and class enrollment password supplied by the assigning professor.\nAfter a student submits a writing assignment, Turnitin performs a digital comparison\nof the student\xe2\x80\x99s work with content available on the Internet, including student papers\npreviously submitted to Turnitin, and commercial databases of journal articles and\nperiodicals. For each work submitted, Turnitin creates an \xe2\x80\x9cOriginality Report\xe2\x80\x9d\nsuggesting a percentage of the work, if any, that appears not to be original. The\nassigning professor may, based on the results of the Originality Report, further\nexplore any potential issues.\nThe Turnitin system gives participating schools the option of \xe2\x80\x9carchiving\xe2\x80\x9d the student\nworks. When this option is selected, Turnitin digitally stores the written works\nsubmitted by students so that the work becomes part of the database used by\nTurnitin to evaluate the originality of other student\xe2\x80\x99s works in the future. The\narchived student works are stored as digital code, and employees of iParadigms do\nnot read or review the archived works.\nWhen they initiated the lawsuit, the four plaintiffs were minor high school students\nand thus appeared in this litigation via their next friends. Plaintiffs A.V. and K.W.\nattended McLean High School in Fairfax County, Virginia, which began using\nTurnitin in 2006 and opted to have its student papers archived in the Turnitin data\nbase. Plaintiffs E.N. and M.N. attended Desert Vista High School in Tucson,\nArizona, which also subscribed to the Turnitin service and elected the archiving\noption. According to the complaint, both schools required students to submit their\nwritten assignments via Turnitin.com to receive credit; failure to do so would result\nin a grade of \xe2\x80\x9czero\xe2\x80\x9d for the assignment under the policy of both schools.\nAccording to iParadigms, no one at iParadigms read or reviewed the papers\nsubmitted by plaintiffs, and iParadigms did not send any paper at issue in this action\nto anybody other than the instructor to whom plaintiffs submitted their own papers.\nPlaintiffs filed a complaint alleging that iParadigms infringed their copyright interests\nin their works by archiving them in the Turnitin database without their permission.\nThe court determined that iParadigms\xe2\x80\x99 use of each of the plaintiffs\xe2\x80\x99 written\nsubmissions qualified as a \xe2\x80\x9cfair use\xe2\x80\x9d under 17 U.S.C. \xc2\xa7 107 and, therefore, did not\nconstitute infringement. In particular, the court found that the use was\ntransformative because its purpose was to prevent plagiarism by comparative use,\nand that iParadigms\xe2\x80\x99 use of the student works did not impair the market value for\nhigh school term papers and other such student works.\n\xe2\x80\xa6\n\n274\n\n\x0cThe ownership rights created by the Copyright Act, however, are not absolute; these\nrights, while exclusive, are \xe2\x80\x9climited in that a copyright does not secure an exclusive\nright to the use of facts, ideas, or other knowledge.\xe2\x80\x9d Bond v. Blum, 317 F.3d 385, 394\n(4th Cir.2003). Rather, copyright protection extends only to the author\xe2\x80\x99s manner of\nexpression. Moreover, the copyright owner\xe2\x80\x99s rights are subject to several exceptions\nenumerated by the Copyright Act. Those sections describe a variety of uses of\ncopyrighted material that \xe2\x80\x9care not infringements of copyright\xe2\x80\x9d \xe2\x80\x9cnotwithstanding the\nprovisions of \xc2\xa7 106.\xe2\x80\x9d\nOne of these statutory exceptions codifies the common-law \xe2\x80\x9cfair use\xe2\x80\x9d doctrine,\nwhich \xe2\x80\x9callows the public to use not only facts and ideas contained in a copyrighted\nwork, but also expression itself in certain circumstances.\xe2\x80\x9d Eldred v. Ashcroft, 537 US\n186, 219 (2003); see Campbell v. Acuff-Rose Music, Inc., 510 US 569, 577, (1994)\n(\xe2\x80\x9cCongress meant \xc2\xa7 107 to restate the present judicial doctrine of fair use ... and\nintended that courts continue the common-law tradition of fair use adjudication.\xe2\x80\x9d\n(internal quotation marks omitted)). \xe2\x80\x9cFrom the infancy of copyright protection,\nsome opportunity for fair use of copyrighted materials has been thought necessary to\nfulfill copyright\xe2\x80\x99s very purpose, `[t]o promote the Progress of Science and useful\nArts....\xe2\x80\x99\xe2\x80\x9c Campbell, 510 US at 575. Courts have traditionally regarded \xe2\x80\x9cfair use\xe2\x80\x9d of a\ncopyrighted work as \xe2\x80\x9ca privilege in others than the owner of the copyright to use the\ncopyrighted material in a reasonable manner without his consent.\xe2\x80\x9d Harper & Row,\n471 US at 549.\nSection 107 contemplates that the question of whether a given use of copyrighted\nmaterial is \xe2\x80\x9cfair\xe2\x80\x9d requires a case-by-case analysis in which the statutory factors are\nnot \xe2\x80\x9ctreated in isolation\xe2\x80\x9d but are \xe2\x80\x9cweighed together, in light of the purposes of\ncopyright.\xe2\x80\x9d Campbell, 510 US at 578.\nWith these general principles in mind, we consider each of the statutory factors.\nFirst Factor\nThe first fair use factor requires us to consider \xe2\x80\x9cthe purpose and character of the use,\nincluding whether such use is of a commercial nature or is for nonprofit educational\npurposes.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(1). A use of the copyrighted material that has a\ncommercial purpose \xe2\x80\x9ctends to weigh against a finding of fair use.\xe2\x80\x9d Harper & Row,\n471 US at 562. \xe2\x80\x9cThe crux of the profit/nonprofit distinction is not whether the sole\nmotive of the use is monetary gain but whether the user stands to profit from\nexploitation of the copyrighted material without paying the customary price.\xe2\x80\x9d Id.\nIn assessing the \xe2\x80\x9ccharacter\xe2\x80\x9d of the use, we should consider the specific examples set\nforth in section 107\xe2\x80\x99s preamble, \xe2\x80\x9clooking to whether the use is for criticism, or\ncomment, or news reporting, and the like,\xe2\x80\x9d with the goal of determining whether the\nuse at issue \xe2\x80\x9cmerely supersedes the objects of the original creation, or instead adds\nsomething new, with a further purpose or different character.\xe2\x80\x9d Campbell, 510 US at\n578-79. Courts, therefore, must examine \xe2\x80\x9cwhether and to what extent the new work\nis transformative.... [T]he more transformative the new work, the less will be the\nsignificance of other factors, like commercialism, that may weigh against a finding of\nfair use.\xe2\x80\x9d Id. at 579. A \xe2\x80\x9ctransformative\xe2\x80\x9d use is one that \xe2\x80\x9cemploy[s] the quoted matter\nin a different manner or for a different purpose from the original,\xe2\x80\x9d thus transforming\nit. Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1111 (1990).\n275\n\n\x0cIn considering the character and purpose of iParadigms\xe2\x80\x99 use of the student works,\nthe district court focused on the question of whether the use was transformative in\nnature. The court concluded that \xe2\x80\x9ciParadigms, through Turnitin, uses the papers for\nan entirely different purpose, namely, to prevent plagiarism and protect the students\xe2\x80\x99\nwritten works from plagiarism ... by archiving the students\xe2\x80\x99 works as digital code.\xe2\x80\x9d\nAlthough the district court recognized that iParadigms intends to profit from its use\nof the student works, the court found that iParadigms\xe2\x80\x99 use of plaintiffs\xe2\x80\x99 works was\n\xe2\x80\x9chighly transformative,\xe2\x80\x9d and \xe2\x80\x9cprovides a substantial public benefit through the\nnetwork of educational institutions using Turnitin.\xe2\x80\x9d Accordingly, the court\nconcluded that the first factor weighed in favor of a finding of fair use.\nPlaintiffs argue the district court\xe2\x80\x99s analysis contained several flaws. First, they suggest\nthat the district court ignored the commercial nature of iParadigms\xe2\x80\x99 use of their\nmaterials, highlighting the fact that iParadigms is a for-profit company that enjoys\nmillions of revenue dollars based on its ever-increasing database of student works.\nSeizing upon the Supreme Court\xe2\x80\x99s suggestion in Sony that \xe2\x80\x9cevery commercial use of\ncopyrighted material is presumptively an unfair exploitation of the monopoly\nprivilege that belong to the owner of the copyright,\xe2\x80\x9d plaintiffs contend that the\narchiving of their papers cannot constitute a fair use under section 107.\nThe district court, however, did not ignore the fact that iParadigms\xe2\x80\x99 use of the\nplaintiffs\xe2\x80\x99 works occurred in the commercial context; indeed, the court expressly\nnoted that \xe2\x80\x9ciParadigms makes a profit in providing this service to educational\ninstitutions.\xe2\x80\x9d But the fact that the disputed use of copyrighted material is commercial\nis not determinative in and of itself. See Sony, 464 US at 448. As the Second Circuit\nobserved, \xe2\x80\x9csince many, if not most, secondary users seek at least some measure of\ncommercial gain from their use, unduly emphasizing the commercial motivation of a\ncopier will lead to an overly restrictive view of fair use.\xe2\x80\x9d American Geophysical Union v.\nTexaco, Inc., 60 F.3d 913, 921 (2d Cir.1994); see Campbell, 510 US at 584 (observing\nthat \xe2\x80\x9c[i]f... commerciality carried presumptive force against a finding of fairness, the\npresumption would swallow nearly all of the illustrative uses listed in the preamble\nparagraph of \xc2\xa7 107,\xe2\x80\x9d which \xe2\x80\x9care generally conducted for profit in this country\xe2\x80\x9d). The\nCourt has made clear that Sony did not establish a per se rule that a commercial use\nbarred a fair use finding. See Campbell, 510 US at 585 (\xe2\x80\x9cThe Court of Appeals\xe2\x80\x99\nelevation of one sentence from Sony to a per se rule ... runs as much counter to Sony\nitself as to the long common-law tradition of fair use adjudication.\xe2\x80\x9d). Thus, although\na commercial use finding generally weighs against a finding of fair use, it must \xe2\x80\x9cbe\nweighed along with [the] other factors in fair use decisions.\xe2\x80\x9d Sony, 464 US at 449 n.\n32.\nIn this case, the district court determined that the commercial aspect was not\nsignificant in light of the transformative nature of iParadigms\xe2\x80\x99 use. See Campbell, 510\nUS at 578-79. The district court simply weighed the commercial nature of iParadigms\xe2\x80\x99\nuse along with other fair use factors, as is appropriate under Supreme Court\nprecedent. See id. at 579 (explaining that \xe2\x80\x9cthe more transformative the new work, the\nless will be the significance of other factors, like commercialism, that may weigh\nagainst a finding of fair use\xe2\x80\x9d).\nPlaintiffs also argue that iParadigms\xe2\x80\x99 use of their works cannot be transformative\nbecause the archiving process does not add anything to the work \xe2\x80\x94 Turnitin merely\n276\n\n\x0cstores the work unaltered and in its entirety. This argument is clearly misguided. The\nuse of a copyrighted work need not alter or augment the work to be transformative\nin nature. Rather, it can be transformative in function or purpose without altering or\nactually adding to the original work. See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508\nF.3d 1146, 1165 (9th Cir.2007) (concluding that Google\xe2\x80\x99s use of copyrighted images\nin thumbnail search index was \xe2\x80\x9chighly transformative\xe2\x80\x9d even though the images\nthemselves were not altered, in that the use served a different function than the\nimages served). iParadigms\xe2\x80\x99 use of plaintiffs\xe2\x80\x99 works had an entirely different function\nand purpose than the original works; the fact that there was no substantive alteration\nto the works does not preclude the use from being transformative in nature.\nPlaintiffs further contend that, even if iParadigms\xe2\x80\x99 use of their works has a\ntransformative purpose, the use itself is not transformative if it fails to effect such\npurpose. Plaintiffs assert that there is at least a question of fact as to whether\nTurnitin effectively prevents plagiarism such that summary judgment is inappropriate.\nIn support of this contention, plaintiffs offered evidence showing that it is possible\nto defeat the Turnitin system by paraphrasing the original copyrighted work and that\nthe system sometimes does not catch even verbatim copying. In other words,\nbecause the Turnitin system is not fool-proof, the archiving of plaintiffs\xe2\x80\x99 works to\ncompare and detect plagiarism cannot be transformative.\nWe reject this assertion as well. The question of whether a use is transformative does\nnot rise or fall on whether the use perfectly achieves its intended purpose. Cf.\nCampbell, 510 US at 582 (declining to evaluate the quality of the parody and declaring\nthat \xe2\x80\x9cwhen fair use is raised in defense of parody, [the threshold question] is whether\na parodic character may reasonably be perceived\xe2\x80\x9d). Plaintiffs do not dispute that the\nTurnitin system does detect some level of plagiarism, even if, as they assert in the\ncomplaint, \xe2\x80\x9cthe Turnitin system is capable of detecting only the most ignorant or\nlazy attempts at plagiarism by students without significant monetary resources.\xe2\x80\x9d\nWhether a better plagiarism detection system could be designed is not important to\nour analysis of whether the disputed use serves a different purpose or function.\nThe district court, in our view, correctly determined that the archiving of plaintiffs\xe2\x80\x99\npapers was transformative and favored a finding of \xe2\x80\x9cfair use.\xe2\x80\x9d iParadigms\xe2\x80\x99 use of\nthese works was completely unrelated to expressive content and was instead aimed at\ndetecting and discouraging plagiarism.\nSecond Factor\nIn considering the nature of the copyrighted work, the Supreme Court has instructed\nthat \xe2\x80\x9cfair use is more likely to be found in factual works than in fictional works,\xe2\x80\x9d\nwhereas \xe2\x80\x9ca use is less likely to be deemed fair when the copyrighted work is a\ncreative product.\xe2\x80\x9d Stewart v. Abend, 495 US 207, 237 (1990) (internal quotation marks\nand alteration omitted). This postulate recognizes the notion that a work is entitled\nto greater copyright protection as it comes closer to \xe2\x80\x9cthe core of creative expression.\xe2\x80\x9d\nBond, 317 F.3d at 395. However, if the disputed use of the copyrighted work \xe2\x80\x9cis not\nrelated to its mode of expression but rather to its historical facts,\xe2\x80\x9d then the creative\nnature of the work is mitigated. Id. at 396. And, in fact, the district court concluded\nthat iParadigms\xe2\x80\x99 use of the plaintiffs\xe2\x80\x99 works related solely to the comparative value of\nthe works and did not diminish the incentive for creativity on the part of students.\n\n277\n\n\x0cThe district court noted that, if anything, iParadigms\xe2\x80\x99 use of the students\xe2\x80\x99 works\nfostered the development of original and creative works \xe2\x80\x9cby detecting any efforts at\nplagiarism by other students.\xe2\x80\x9d\nPlaintiffs contend that the district court\xe2\x80\x99s application of this factor was flawed in two\nrespects. First, they argue that the court failed to account for the fact that their works\nwere unpublished. Because an author enjoys the \xe2\x80\x9cright to control the first public\nappearance of his undisseminated expression,\xe2\x80\x9d the fair use of an unpublished work is\nnarrower in scope. Harper & Row, 471 US at 555 (\xe2\x80\x9c[T]he author\xe2\x80\x99s right to control the\nfirst public appearance of his expression weighs against such use of the work before\nits release.\xe2\x80\x9d). In its order, the district court omits mention of this fact; therefore,\nplaintiffs suggest that the district court\xe2\x80\x99s entire analysis of the second statutory factor\nis invalid.\nWe disagree that the lack of an express reference to the unpublished status of\nplaintiffs\xe2\x80\x99 works undermines the court\xe2\x80\x99s analysis under \xc2\xa7 107(2). Not only has the\nSupreme Court admonished courts to resist weighing the fair use factors in isolation,\nsee Campbell, 510 US at 578 but Congress specifically provided that \xe2\x80\x9c[t]he fact that a\nwork is unpublished shall not itself bar a finding of fair use if such finding is made\nupon consideration of all the above factors.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107. Therefore, in Bond, we\nwere able to conclude that the introduction into a court proceeding of an original\nwork of fiction constituted fair use under \xc2\xa7 107 despite the fact that the copyrighted\nwork was unpublished:\nThat Bond\xe2\x80\x99s manuscript is unpublished and contains a stylized mode of expressing\nhis feelings about historical facts weigh against a finding of fair use. But, as\nCampbell instructs, we do not consider the \xc2\xa7 107 factors in isolation from one\nanother, but we weigh them together in light of the purposes of copyright. Where,\nas here, the use of the work is not related to its mode of expression but rather to its\nhistorical facts and there is no evidence that the use of Bond\xe2\x80\x99s manuscript in the\nstate legal proceedings would adversely affect the potential market for the\nmanuscript, one cannot say the incentive for creativity has been diminished in any\nsense.\n\nId. at 395-96 (emphasis added) (internal quotation marks and citations omitted).\nHere, the district court, quoting Bond, concluded that iParadigms\xe2\x80\x99 use was\nunconnected to any creative element in plaintiffs\xe2\x80\x99 works. Given that the district court\ndrew its language verbatim from a passage in Bond discussing the fair use of\nunpublished works of fiction, the district court clearly did not ignore the unpublished\nnature of these works.\nMoreover, it is clear that iParadigms\xe2\x80\x99 use of plaintiffs\xe2\x80\x99 works did not have the\n\xe2\x80\x9cintended purpose\xe2\x80\x9d or \xe2\x80\x9cincidental effect\xe2\x80\x9d of supplanting plaintiffs\xe2\x80\x99 rights to first\npublication. Harper & Row, 471 US at 562. This is significant in that the primary basis\nfor the close scrutiny courts give the use of an unpublished work is, as previously\nnoted, an \xe2\x80\x9cauthor\xe2\x80\x99s right to control the first public appearance of his expression.\xe2\x80\x9d Id.\nat 564. iParadigms did not publicly disseminate or display plain-tiffs\xe2\x80\x99 works and did\nnot send them to any third party \xe2\x80\x9cother than the instructor to whom plaintiffs\nsubmitted their own papers.\xe2\x80\x9d In fact, the Turnitin digital archiving process does not\ninvolve any review of the submitted works at all, even by those at iParadigms. Thus,\nno employee of iParadigms read or reviewed the works submitted by plaintiffs. We\n278\n\n\x0cfind no basis whatsoever for concluding that iParadigms\xe2\x80\x99 use of the plaintiffs\xe2\x80\x99 papers\nundermined their right to first publication.\nPlaintiffs contend that the district court\xe2\x80\x99s consideration of the \xe2\x80\x9cnature of the\ncopyrighted works\xe2\x80\x9d factor was flawed for a second reason: the district court ignored\nthe fact that the works in question were works of fiction and poetry, which are\nconsidered \xe2\x80\x9chighly creative\xe2\x80\x9d in nature and deserving of the strongest protection. This\nargument is unpersuasive as well in that the district court expressly acknowledged its\nobligation to consider whether the works in question came within the \xe2\x80\x9ccore of\ncreative expression.\xe2\x80\x9d Rather than ignore it, however, the district court simply\nconcluded that even if the plaintiffs\xe2\x80\x99 works were highly creative in nature, iParadigms\xe2\x80\x99\nuse of the plaintiffs\xe2\x80\x99 works was not related to the creative core of the works. In\nconcluding that the second factor favored neither plaintiffs nor iParadigms, the\ndistrict court was merely applying Bond in which we concluded that the use of an\nunpublished work of fiction in a court proceeding constituted fair use because such\nuse was \xe2\x80\x9cnot related to its mode of expression but rather to its historical facts.\xe2\x80\x9d 317\nF.3d at 396. iParadigms\xe2\x80\x99 use of the works in the case \xe2\x80\x94 as part of a digitized\ndatabase from which to compare the similarity of typewritten characters used in\nother student works \xe2\x80\x94 is likewise unrelated to any creative component. Thus, we\nfind no fault in the district court\xe2\x80\x99s application of the second fair use factor.\nThird Factor\nThe third fair use factor requires us to consider \xe2\x80\x9cthe amount and substantiality of the\nportion used in relation to the copyrighted work as a whole.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(3).\nGenerally speaking, \xe2\x80\x9cas the amount of the copyrighted material that is used increases,\nthe likelihood that the use will constitute a `fair use\xe2\x80\x99 decreases.\xe2\x80\x9d Bond, 317 F.3d at\n396. But this statutory factor also requires courts to consider, in addition to quantity,\nthe \xe2\x80\x9cquality and importance\xe2\x80\x9d of the copyrighted materials used, Campbell, 510 US at\n587 that is, whether the portion of the copyrighted material was \xe2\x80\x9cthe heart of the\ncopyrighted work.\xe2\x80\x9d Sundeman v. The Seajay Society, Inc., 142 F.3d 194, 205 (4th\nCir.1998). Although \xe2\x80\x9ccopying an entire work weighs against finding a fair use, ... it\ndoes not preclude a finding of fair use\xe2\x80\x9d; therefore, \xe2\x80\x9cthe extent of permissible copying\nvaries with the purpose and character of the use.\xe2\x80\x9d Id. at 205-06 (emphasis added).\nThe district court found that this factor, like the second factor, did not favor either\nparty. The court concluded that although iParadigms uses substantially the whole of\nplaintiffs\xe2\x80\x99 works, iParadigms\xe2\x80\x99 \xe2\x80\x9cuse of the original works is limited in purpose and\nscope\xe2\x80\x9d as a digitized record for electronic \xe2\x80\x9ccomparison purposes only.\xe2\x80\x9d Having\nalready concluded that such use of plaintiffs\xe2\x80\x99 works was transformative, the district\ncourt concluded that iParadigms\xe2\x80\x99 use of the entirety of plaintiffs\xe2\x80\x99 works did not\npreclude a finding of fair use.\nThe plaintiffs contend that the district court erred by referring to the transformative\nnature of iParadigms\xe2\x80\x99 use in its analysis of the amount and substantiality of the\nportion of the copyrighted work used under \xc2\xa7 107(3). In our view, the district court\ndid not analytically merge the first and third fair use factors by referring to\niParadigms\xe2\x80\x99 transformative use of the students\xe2\x80\x99 works. Plaintiffs\xe2\x80\x99 argument, in fact,\nfails to recognize the overlap that exists between the fair use factors. The first and\nthird factors, for example, take into account to some degree the purpose of the\n\n279\n\n\x0cdisputed use. Compare 17 U.S.C. \xc2\xa7 107(1); and Sundeman, 142 F.3d at 202 (explaining\nthat \xe2\x80\x9cthe `further purpose\xe2\x80\x99 and `different character\xe2\x80\x99 of the defendant\xe2\x80\x99s use make it\ntransformative\xe2\x80\x9d under \xc2\xa7 107(1)), with Bond, 317 F.3d at 396 (concluding that \xc2\xa7 107(3)\ndid not favor plaintiffs because the defendant\xe2\x80\x99s \xe2\x80\x9csole purpose and intent\xe2\x80\x9d was not to\nuse the expressive content in the plaintiffs\xe2\x80\x99 works but \xe2\x80\x9cto obtain admissions of fact\xe2\x80\x9d\nin a court proceeding). We find no error in the district court\xe2\x80\x99s analysis.\nFourth Factor\nFinally, \xc2\xa7 107 directs us to examine the market of the copyrighted work to determine\n\xe2\x80\x9cthe effect of the use upon the potential market for or value of the copyrighted\nwork.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(4). The Supreme Court described this factor as the \xe2\x80\x9csingle\nmost important element of fair use,\xe2\x80\x9d Harper & Row, 471 US at 566 considering that a\nprimary goal of copyright is to ensure that \xe2\x80\x9cauthors [have] the opportunity to realize\nrewards in order to encourage them to create.\xe2\x80\x9d Leval, Toward a Fair Use Standard, at\n1124. By contrast, \xe2\x80\x9ca use that has no demonstrable effect upon the potential market\nfor, or the value of, the copyrighted work need not be prohibited in order to protect\nthe author\xe2\x80\x99s incentive to create.\xe2\x80\x9d Sony, 464 US at 450.\nOur task is to determine whether the defendants\xe2\x80\x99 use of plaintiffs\xe2\x80\x99 works \xe2\x80\x9cwould\nmaterially impair the marketability of the works and whether it would act as a market\nsubstitute\xe2\x80\x9d for them. Bond, 317 F.3d at 396. We focus here not upon \xe2\x80\x9cwhether the\nsecondary use suppresses or even destroys the market for the original work or its\npotential derivatives, but [upon] whether the secondary use usurps the market of the\noriginal work.\xe2\x80\x9d NXIVM Corp. v. The Ross Institute, 364 F.3d 471, 482 (2nd Cir.2004)\n(emphasis added). An adverse market effect, in and of itself, does not preclude\napplication of the fair use defense. \xe2\x80\x9cThe fair use doctrine protects against a\nrepublication which offers the copyrighted work in a secondary packaging, where\npotential customers, having read the secondary work, will no longer be inclined to\npurchase again something they have already read.\xe2\x80\x9d Sundeman, 142 F.3d at 207.\nThe analysis of whether the disputed use offers a market substitute for the original\nwork overlaps to some extent with the question of whether the use was\ntransformative. See Campbell, 510 US at 591 (distinguishing a secondary use that\nsimply duplicates an original work in its entirety, thereby superseding it, from a\nsecondary use that is transformative). To the extent this issue arises in fair use cases,\nit often does so when the secondary use at issue involves a scholarly critique or\nparody of the original work. See Campbell, 510 US at 592 (\xe2\x80\x9c[T]he role of the courts is\nto distinguish between biting criticism that merely suppresses demand and copyright\ninfringement, which usurps it.\xe2\x80\x9d (internal quotation marks and alterations omitted));\nsee also Sundeman, 142 F.3d at 207 (holding that defendant\xe2\x80\x99s critique of a novel \xe2\x80\x9cdid\nnot have the purpose or effect of supplanting the copyrighted work\xe2\x80\x9d and that its use\nof the novel was transformative and thus did not create a market substitute for the\noriginal work); Davis v. The Gap, Inc., 246 F.3d 152, 175 (2d Cir.2001) (explaining that\n\xe2\x80\x9cif the harm resulted from a transformative secondary use that lowered the public\xe2\x80\x99s\nestimation of the original (such as a devastating review of a book that quotes liberally\nfrom the original to show how silly and poorly written it is), this transformative use\nwill be found to be a fair use, not withstanding the harm\xe2\x80\x9d).\n\n280\n\n\x0cBut regardless of whether the defendant used the original work to critique or parody\nit, the transformative nature of the use is relevant to the market effect factor. See\nSuntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1274 n. 28 (11th Cir.2001)\n(\xe2\x80\x9cWhereas a work that merely supplants or supersedes another is likely to cause a\nsubstantially adverse impact on the potential market of the original, a transformative\nwork is less likely to do so.\xe2\x80\x9d); Davis, 246 F.3d at 176 (noting that \xe2\x80\x9cthe market effect\nmust be evaluated in light of whether the secondary use is transformative\xe2\x80\x9d).\nThe district court concluded that iParadigms\xe2\x80\x99 Turnitin system did not serve as a\nmarket substitute or even harm the market value of the works, highlighting the\ndeposition testimony of the plaintiffs \xe2\x80\x94 each of whom denied that iParadigms\xe2\x80\x99\n\xe2\x80\x9cimpinged on the marketability of their works or interfered with their use of the\nworks.\xe2\x80\x9d The district court also noted that, although the pleadings alleged iParadigms\xe2\x80\x99\nuse would adversely impact plaintiffs\xe2\x80\x99 ability to market their works to other high\nschool students seeking to purchase completed term papers or essays, each plaintiff\nindicated that such transactions were dishonest and that he or she would not sell\ntheir original works for submission by other students.\nFurthermore, the court rejected plaintiffs\xe2\x80\x99 contention that iParadigms\xe2\x80\x99 use would\nadversely impact the value of the works if a recipient such as a college admissions\ndepartment or a literary journal used the Turnitin system to verify originality.\nBecause their works are now archived, plaintiffs argued, the Turnitin system would\nreport that their own original works were plagiarized. In light of how the Turnitin\nsystem works, the district court rejected the argument as speculative at best:\nAnyone who is reasonably familiar with Turnitin\xe2\x80\x99s operation will be able to\nrecognize that the identical match is not the result of plagiarism, but simply the\nresult of Plaintiff\xe2\x80\x99s earlier submission. Individuals familiar with Turnitin, such as\nthose in the field of education, would be expecting the works submitted to have\nbeen previously submitted.\n\nOn appeal, plaintiffs\xe2\x80\x99 primary contention is that the district court focused on\nwhether there was evidence of actual damages, failing to consider the effect of\niParadigms\xe2\x80\x99 use on the \xe2\x80\x9cpotential market\xe2\x80\x9d for plaintiffs\xe2\x80\x99 works. Clearly, this assertion\nis incorrect. The district court considered the potential market effects suggested by\nplaintiffs but concluded that plaintiffs\xe2\x80\x99 arguments were theoretical and speculative.\nPlaintiffs\xe2\x80\x99 most plausible theory was that iParadigms\xe2\x80\x99 archiving of their papers\nimpaired the sale of the papers to high school students in the market for unpublished\nterm papers, essays and the like. Undoubtedly, there is a market for students who\nwish to purchase such works and submit them as their own for academic credit.7\nFootnote 7: Web sites such as www.ibuytermpapers.com, for example, offer completed papers and essays purchased\nfrom high school students.\n\nAnd, iParadigms\xe2\x80\x99 archiving of such papers on the Turnitin website might well impair\nthe marketability of such works to student buyers intending to submit works they did\nnot author without being identified as plagiarists.\nAs noted by the district court, however, the plaintiffs testified that they would not\nsell the works at issue here to any dealer in such a market because such a transaction\nwould make them party to cheating and would encourage plagiarism. Furthermore,\nto the extent that iParadigms\xe2\x80\x99 use would adversely affect plaintiffs\xe2\x80\x99 works in this\n\n281\n\n\x0cparticular market, we must consider the transformative nature of the use. Clearly no\nmarket substitute was created by iParadigms, whose archived student works do not\nsupplant the plaintiffs\xe2\x80\x99 works in the \xe2\x80\x9cpaper mill\xe2\x80\x9d market so much as merely suppress\ndemand for them, by keeping record of the fact that such works had been previously\nsubmitted. Cf. Davis, 246 F.3d at 175 (noting that fair use occurs where \xe2\x80\x9cthe harm\nresulted from a transformative secondary use that lowered the public\xe2\x80\x99s estimation of\nthe original\xe2\x80\x9d rather than from a market substitute). In our view, then, any harm here\nis not of the kind protected against by copyright law.\nThe plaintiffs offer a few additional theories under which iParadigms\xe2\x80\x99 use of their\npapers could conceivably affect marketability. For example, plaintiffs point to the\npossibility that if they submitted all or a portion of their own works to a periodical\nfor publishing or to a college admissions board, and the magazine or college used\nTurnitin, then their submitted works might potentially be discredited as a product of\nplagiarism. Like the district court, we conclude that these theories are implausible in\nlight of how the Turnitin system generally operates. We find nothing in the record to\nsuggest that any of these scenarios envisioned by plaintiffs are anything more than\nunfounded speculation.\nIn sum, we conclude, viewing the evidence in the light most favorable to the\nplaintiffs, that iParadigms\xe2\x80\x99 use of the student works was \xe2\x80\x9cfair use\xe2\x80\x9d under the\nCopyright Act and that iParadigms was therefore entitled to summary judgment on\nthe copyright infringement claim.\nNotes and questions\n(1) In A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009) the Fourth\nCircuit held that high school students required to pass their work through a computerized\nplagiarism detection system had no claim for copyright infringement when the system added\ntheir papers to its plagiarism detection archive. The decision rests largely on the court of\nappeals understanding that iParadigms\xe2\x80\x99 use of the student papers was transformative because\nthe defendant used of plaintiffs\xe2\x80\x99 works had an entirely different function and purpose than\nthe original works.\nText Data Mining & Search Engine Cases\nThe image search cases: Kelly and Perfect 10\nIn 2003 and 2007, two key court of appeals cases in the Ninth Circuit addressed whether the\ndisplay of images in the context of a menu of Internet search results violated copyright.\nThose cases, Kelly v. Arriba Soft Corp, 336 F.3d 811 (9th Cir. 2003); Perfect 10, Inc. v.\nAmazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), are referred to quite often in the decisions\nextracted below and so a brief summary is warranted.\nIn both Kelly v. Arriba Soft and Perfect 10 v. Amazon, the copyright owners of various\nphotographs sued visual search engines for the way their works were used by those services.\nAt the time at least, Internet search engines that focused on images relied on matching\nsearch terms with text associated with images on the Internet. The search engines in Kelly\nand Perfect 10 worked as follows: if the text associated with an image file was responsive to a\nuser\xe2\x80\x99s search query, the search engine would display a small low-resolution \xe2\x80\x9cthumbnail\xe2\x80\x9d of\n282\n\n\x0cthe image in a menu of search results, giving the user something like a police lineup of\nimages to choose from. Those thumbnail images were displayed from copies made by the\nsearch engine and stored on the search engine\xe2\x80\x99s servers. However, once the user selected a\nparticular thumbnail, the user\xe2\x80\x99s Internet browser would be directed to the original location to\nretrieve the full-scale image.67\nIn both of the image search cases, Kelly and Perfect 10, the Ninth Circuit found that displaying\nlow-resolution thumbnail images as part of a menu of search results was transformative.68 In\nPerfect 10, the court held that the search engine defendant\xe2\x80\x99s use of thumbnails was \xe2\x80\x9chighly\ntransformative.\xe2\x80\x9d It continued (at __):\nAlthough an image may have been created originally to serve an entertainment,\naesthetic, or informative function, a search engine transforms the image into a\npointer directing a user to a source of information. Just as a parody has an obvious\nclaim to transformative value because it can provide social benefit, by shedding light\non an earlier work, and, in the process, creating a new one, a search engine provides\nsocial benefit by incorporating an original work into a new work, namely, an\nelectronic reference tool. Indeed, a search engine may be more transformative than a\nparody because a search engine provides an entirely new use for the original work,\nwhile a parody typically has the same entertainment purpose as the original work.\n\nThese thumbnails were complete copies after a fashion, but their size and quality suggested\nthat they would not substitute for the original images. These same features also made it clear\nthat the thumbnail images were being used as a pointing device toward the original images;\nan entirely different purpose to the original photos. The copying and display of thumbnail\nimages in Kelly and Perfect 10 was not a non-expressive use as such, after all, allowing users to\nsee the image was essential to making the search engine results useful. However, the\nconclusion that the use of the thumbnails as pointing devices was transformative because it\n\xe2\x80\x9cserved a different function\xe2\x80\x9d unrelated to \xe2\x80\x9cartistic expression\xe2\x80\x9d parallels the expressive/nonexpressive use distinction.\nPerfect 10 and Kelly are both consistent with the rationale favoring non-expressive use, even\nthough the thumbnail displays should be seen as an expressive use similar to cases such as\nBill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) and Nunez v.\nCaribbean Int\xe2\x80\x99l News Corp., 235 F.3d 18 (1st Cir. 2000).\nAuthors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014)69\nCircuit Judge Barrington D. Parker\n\nThis distinction matters because the search engine could only be held directly liable for copyright\ninfringement for images sourced from its own servers; directing a user to someone else\xe2\x80\x99s computer system\ncould still qualify as copyright infringement, but only with specific knowledge of the underlying infringement.\nIn United States copyright law, this distinction is referred to as the \xe2\x80\x9cserver test\xe2\x80\x9d. See Perfect 10, Inc. v.\nAmazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007).\n67\n\nPerfect 10 v. Amazon.com 508 F. 3d 1146, 1165-1167 (9th Cir. 2007); See also Kelly v. Arriba Soft Corp., 336\nF.3d 811, 818-22 (9th Cir.2003).\n68\n\nDisclosure: Along with Jason Schultz, I was Amici Curiae for Digital Humanities and Law Scholars in this\ncase.\n69\n\n283\n\n\x0cBeginning in 2004, several research universities including the University of Michigan,\nthe University of California at Berkeley, Cornell University, and the University of\nIndiana agreed to allow Google to electronically scan the books in their collections.\nIn October 2008, thirteen universities announced plans to create a repository for the\ndigital copies and founded an organization called HathiTrust to set up and operate\nthe HathiTrust Digital Library (or \xe2\x80\x9cHDL\xe2\x80\x9d). Colleges, universities, and other\nnonprofit institutions became members of HathiTrust and made the books in their\ncollections available for inclusion in the HDL. HathiTrust currently has 80 member\ninstitutions and the HDL contains digital copies of more than ten million works,\npublished over many centuries, written in a multitude of languages, covering almost\nevery subject imaginable. This appeal requires us to decide whether the HDL\xe2\x80\x99s use of\ncopyrighted material is protected against a claim of copyright infringement under the\ndoctrine of fair use. See 17 U.S.C. \xc2\xa7 107.\nBACKGROUND\nA. The HathiTrust Digital Library\nHathiTrust permits three uses of the copyrighted works in the HDL repository. First,\nHathiTrust allows the general public to search for particular terms across all digital\ncopies in the repository. Unless the copyright holder authorizes broader use, the\nsearch results show only the page numbers on which the search term is found within\nthe work and the number of times the term appears on each page. The HDL does\nnot display to the user any text from the underlying copyrighted work (either in\n\xe2\x80\x9csnippet\xe2\x80\x9d form or otherwise). Consequently, the user is not able to view either the\npage on which the term appears or any other portion of the book.\nSecond, the HDL allows member libraries to provide patrons with certified print\ndisabilities access to the full text of copyrighted works. A \xe2\x80\x9cprint disability\xe2\x80\x9d is any\ndisability that prevents a person from effectively reading printed material. Blindness\nis one example, but print disabilities also include those that prevent a person from\nphysically holding a book or turning pages. To use this service, a patron must obtain\ncertification of his disability from a qualified expert. Through the HDL, a printdisabled user can obtain access to the contents of works in the digital library using\nadaptive technologies such as software that converts the text into spoken words, or\nthat magnifies the text. Currently, the University of Michigan\xe2\x80\x99s library is the only\nHDL member that permits such access, although other member libraries intend to\nprovide it in the future.\nThird, by preserving the copyrighted books in digital form, the HDL permits\nmembers to create a replacement copy of the work, if the member already owned an\noriginal copy, the member\xe2\x80\x99s original copy is lost, destroyed, or stolen, and a\nreplacement copy is unobtainable at a \xe2\x80\x9cfair\xe2\x80\x9d price elsewhere.\nThe HDL stores digital copies of the works in four different locations. One copy is\nstored on its primary server in Michigan, one on its secondary server in Indiana, and\ntwo on separate backup tapes at the University of Michigan. Each copy contains the\nfull text of the work, in a machine readable format, as well as the images of each\npage in the work as they appear in the print version.\nB. The Orphan Works Project\n\n284\n\n\x0cSeparate and apart from the HDL, in May 2011, the University of Michigan\ndeveloped a project known as the Orphan Works Project (or \xe2\x80\x9cOWP\xe2\x80\x9d). An \xe2\x80\x9corphan\nwork\xe2\x80\x9d is an out-of-print work that is still in copyright, but whose copyright holder\ncannot be readily identified or located. See US Copyright Office, Notice of Inquiry,\nOrphan Works and Mass Digitization (2012).\nThe University of Michigan conceived of the OWP in two stages: First, the project\nwould attempt to identify out-of-print works, try to find their copyright holders, and,\nif no copyright holder could be found, publish a list of orphan works candidates to\nenable the copyright holders to come forward or be otherwise located. If no\ncopyright holder came forward, the work was to be designated as an orphan work.\nSecond, those works identified as orphan works would be made accessible in digital\nformat to the OWP\xe2\x80\x99s library patrons (with simultaneous viewers limited to the\nnumber of hard copies owned by the library).\nThe University evidently became concerned that its screening process was not\nadequately distinguishing between orphan works (which were to be included in the\nOWP) and in-print works (which were not). As a result, before the OWP was\nbrought online, but after the complaint was filed in this case, the University\nindefinitely suspended the project. No copyrighted work has been distributed or\ndisplayed through the project and it remains suspended as of this writing.\nC. Proceedings in the District Court\nThis case began when twenty authors and authors\xe2\x80\x99 associations (collectively, the\n\xe2\x80\x9cAuthors\xe2\x80\x9d) sued HathiTrust, one of its member universities, and the presidents of\nfour other member universities (collectively, the \xe2\x80\x9cLibraries\xe2\x80\x9d) for copyright\ninfringement seeking declaratory and injunctive relief. The National Federation of\nthe Blind and three print-disabled students (the \xe2\x80\x9cIntervenors\xe2\x80\x9d) were permitted to\nintervene to defend their ability to continue using the HDL.\nThe Libraries initially moved for partial judgment on the pleadings on the ground\nthat the authors\xe2\x80\x99 associations lacked standing to assert claims on behalf of their\nmembers and that the claims related to the OWP were not ripe. See Fed.R.Civ.P.\n12(c). The Libraries then moved for summary judgment on the remaining claims on\nthe ground that their uses of copyrighted material were protected by the doctrine of\nfair use, see 17 U.S.C. \xc2\xa7 107, and also by the Chafee Amendment, see id. \xc2\xa7 121. The\nIntervenors moved for summary judgment on substantially the same grounds as the\nLibraries and, finally, the Authors cross-moved for summary judgment.\n\xe2\x80\xa6\nI. Fair Use4\nFootnote 4: Plaintiffs argue that the fair use defense is inapplicable to the activities at issue here, because the\nCopyright Act includes another section, 108, which governs \xe2\x80\x9cReproduction [of copyrighted works] by Libraries ...\xe2\x80\x9d\n17 U.S.C. \xc2\xa7 108. However, section 108 also includes a \xe2\x80\x9csavings clause,\xe2\x80\x9d which states, \xe2\x80\x9cNothing in this section in\nany way affects the right of fair use as provided by section 107....\xe2\x80\x9d \xc2\xa7 108(f)(4). Thus, we do not construe \xc2\xa7 108 as\nforeclosing our analysis of the Libraries\xe2\x80\x99 activities under fair use, and we proceed with that analysis.\n\nA.\nAs the Supreme Court has explained, the overriding purpose of copyright is \xe2\x80\x9c`[t]o\npromote the Progress of Science and useful Arts....\xe2\x80\x99\xe2\x80\x9c Campbell v. Acuff-Rose Music, Inc.,\n\n285\n\n\x0c510 US 569, 574 (1994); see also Twentieth Century Music Corp. v. Aiken, 422 US 151,\n156 (1975). This goal has animated copyright law in Anglo-American history,\nbeginning with the first copyright statute, the Statute of Anne of 1709,70 which\ndeclared itself to be \xe2\x80\x9c[a]n Act for the Encouragement of Learning, by Vesting the\nCopies of Printed Books in the Authors ... during the Times therein mentioned.\xe2\x80\x9d Act\nfor the Encouragement of Learning, 8 Anne, ch. 19. In short, our law recognizes that\ncopyright is \xe2\x80\x9cnot an inevitable, divine, or natural right that confers on authors the\nabsolute ownership of their creations. It is designed rather to stimulate activity and\nprogress in the arts for the intellectual enrichment of the public.\xe2\x80\x9d Pierre N. Leval,\nToward a Fair Use Standard, 103 HARV. L. REV. 1105, 1107 (1990).\nThe Copyright Act furthers this core purpose by granting authors a limited\nmonopoly over (and thus the opportunity to profit from) the dissemination of their\noriginal works of authorship. \xe2\x80\xa6 At the same time, there are important limits to an\nauthor\xe2\x80\x99s rights to control original and derivative works. One such limit is the\ndoctrine of \xe2\x80\x9cfair use,\xe2\x80\x9d which allows the public to draw upon copyrighted materials\nwithout the permission of the copyright holder in certain circumstances. See id. \xc2\xa7 107\n(\xe2\x80\x9c[T]he fair use of a copyrighted work ... is not an infringement of copyright.\xe2\x80\x9d).\n\xe2\x80\x9cFrom the infancy of copyright protection, some opportunity for fair use of\ncopyrighted materials has been thought necessary to fulfill copyright\xe2\x80\x99s very purpose,\n`[t]o promote the Progress of Science and useful Arts....\xe2\x80\x99\xe2\x80\x9d Campbell, 510 US at 574.\nUnder the fair-use doctrine, a book reviewer may, for example, quote from an\noriginal work in order to illustrate a point and substantiate criticisms, see Folsom v.\nMarsh, 9 F. Cas. 342, 344 (C.C.D.Mass. 1841) (No. 4901), and a biographer may\nquote from unpublished journals and letters for similar purposes, see Wright v. Warner\nBooks, Inc., 953 F.2d 731 (2d Cir. 1991). An artist may employ copyrighted\nphotographs in a new work that uses a fundamentally different artistic approach,\naesthetic, and character from the original. See Cariou v. Prince, 714 F.3d 694, 706 (2d\nCir.2013). An internet search engine can display low-resolution versions of\ncopyrighted images in order to direct the user to the website where the original could\nbe found. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir.2007);\nKelly v. Arriba Soft Corp., 336 F.3d 811, 818-22 (9th Cir.2003). A newspaper can\npublish a copyrighted photograph 18 (taken for a modeling portfolio) in order to\ninform and entertain the newspaper\xe2\x80\x99s readership about a news story. See Nunez v.\nCaribbean Int\xe2\x80\x99l News Corp., 235 F.3d 18, 25 (1st Cir.2000). A viewer can create a\nrecording of a broadcast television show in order to view it at a later time. See Sony\nCorp. of Am. v. Universal City Studios, Inc., 464 US 417, 447-450 (1984). And a\ncompetitor may create copies of copyrighted software for the purpose of analyzing\nthat software and discovering how it functions (a process called \xe2\x80\x9creverse\nengineering\xe2\x80\x9d). See Sony Comp. Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 599601 (9th Cir.2000).\nThe doctrine is generally subject to an important proviso: A fair use must not\nexcessively damage the market for the original by providing the public with a\nsubstitute for that original work. Thus, a book review may fairly quote a copyrighted\n1710 is the correct date. The confusion has something to do with the fact that Great Britain shifted from the\nJulian to Gregorian calendar in 1752. Until that time, the New Year began on 25 March.\n70\n\n286\n\n\x0cbook \xe2\x80\x9cfor the purposes of fair and reasonable criticism,\xe2\x80\x9d Folsom, 9 F. Cas. at 344, but\nthe review may not quote extensively from the \xe2\x80\x9cheart\xe2\x80\x9d of a forthcoming memoir in a\nmanner that usurps the right of first publication and serves as a substitute for\npurchasing the memoir, Harper & Row, Publishers, Inc. v. Nation Enters., 471 US 539\n(1985).\nIn 1976, as part of a wholesale revision of the Copyright Act, Congress codified the\njudicially created fair-use doctrine at 17 U.S.C. \xc2\xa7 107. Section 107 requires a court to\nconsider four nonexclusive factors which are to be weighed together to assess\nwhether a particular use is fair:\n(1) the purpose and character of the use, including whether such use is of a\ncommercial nature or is for nonprofit educational purposes;\n(2) the nature of the copyrighted work;\n(3) the amount and substantiality of the portion used in relation to the copyrighted\nwork as a whole; and\n(4) the effect of the use upon the potential market for or value of the copyrighted\nwork.\n\n17 U.S.C. \xc2\xa7 107.\nAn important focus of the first factor is whether the use is \xe2\x80\x9ctransformative.\xe2\x80\x9d A use is\ntransformative if it does something more than repackage or republish the original\ncopyrighted work. The inquiry is whether the work \xe2\x80\x9cadds something new, with a\nfurther purpose or different character, altering the first with new expression,\nmeaning or message....\xe2\x80\x9d Campbell, 510 US at 579 (citing Leval at 1111). \xe2\x80\x9c[T]he more\ntransformative the new work, the less will be the significance of other factors... that\nmay weigh against a finding of fair use.\xe2\x80\x9d Id. Contrary to what the district court\nimplied, a use does not become transformative by making an \xe2\x80\x9cinvaluable\ncontribution to the progress of science and cultivation of the arts.\xe2\x80\x9d HathiTrust, 902\nF.Supp.2d at 464. Added value or utility is not the test: a transformative work is one\nthat serves a new and different function from the original work and is not a\nsubstitute for it.\nThe second factor considers whether the copyrighted work is \xe2\x80\x9cof the creative or\ninstructive type that the copyright laws value and seek to foster.\xe2\x80\x9d Leval, at 1117; see\nalso Folsom, 9 F. Cas. at 348 (\xe2\x80\x9c[W]e must often ... look to the nature and objects of\nthe selections made....\xe2\x80\x9d). For example, the law of fair use \xe2\x80\x9crecognizes a greater need\nto disseminate factual works than works of fiction or fantasy.\xe2\x80\x9d Harper & Row, 471\nUS at 563.\nThe third factor asks whether the secondary use employs more of the copyrighted\nwork than is necessary, and whether the copying was excessive in relation to any\nvalid purposes asserted under the first factor. Campbell, 510 US at 586-87. In\nweighing this factor, we assess the quantity and value of the materials used and\nwhether the amount copied is reasonable in relation to the purported justifications\nfor the use under the first factor. Leval at 1123.\nFinally, the fourth factor requires us to assess the impact of the use on the traditional\nmarket for the copyrighted work. This is the \xe2\x80\x9csingle most important element of fair\nuse.\xe2\x80\x9d Harper & Row, 471 US at 566. To defeat a claim of fair use, the copyright\n287\n\n\x0cholder must point to market harm that results because the secondary use serves as a\nsubstitute for the original work. See Campbell, 510 US at 591 (\xe2\x80\x9ccognizable market\nharm\xe2\x80\x9d is limited to \xe2\x80\x9cmarket substitution\xe2\x80\x9d); see also NXIVM Corp. v. Ross Inst., 364\nF.3d 471, 481-82 (2d Cir.2004).\nB.\nAs discussed above, the Libraries permit three uses of the digital copies deposited in\nthe HDL. We now consider whether these uses are \xe2\x80\x9cfair\xe2\x80\x9d within the meaning of our\ncopyright law.\n1. Full-Text Search\nIt is not disputed that, in order to perform a full-text search of books, the Libraries\nmust first create digital copies of the entire books. Importantly, as we have seen, the\nHDL does not allow users to view any portion of the books they are searching.\nConsequently, in providing this service, the HDL does not add into circulation any\nnew, human-readable copies of any books. Instead, the HDL simply permits users to\n\xe2\x80\x9cword search\xe2\x80\x9d \xe2\x80\x94 that is, to locate where specific words or phrases appear in the\ndigitized books. Applying the relevant factors, we conclude that this use is a fair use.\ni.\nTurning to the first factor, we conclude that the creation of a full-text searchable\ndatabase is a quintessentially transformative use. As the example on page 7, supra,\ndemonstrates, the result of a word search is different in purpose, character,\nexpression, meaning, and message from the page (and the book) from which it is\ndrawn. Indeed, we can discern little or no resemblance between the original text and\nthe results of the HDL full-text search.\nThere is no evidence that the Authors write with the purpose of enabling text\nsearches of their books. Consequently, the full-text search function does not\n\xe2\x80\x9csupersede the objects [or purposes] of the original creation,\xe2\x80\x9d Campbell, 510 US at\n579 (internal quotation marks omitted). The HDL does not \xe2\x80\x9cmerely repackage[] or\nrepublish[] the original[s],\xe2\x80\x9d Leval, at 1111, or merely recast \xe2\x80\x9can original work into a\nnew mode of presentation,\xe2\x80\x9d Castle Rock Entm\xe2\x80\x99t, Inc. v. Carol Publ\xe2\x80\x99g Grp., Inc., 150 F.3d\n132, 143 (2d Cir.1998). Instead, by enabling full-text search, the HDL adds to the\noriginal something new with a different purpose and a different character.\nFull-text search adds a great deal more to the copyrighted works at issue than did the\ntransformative uses we approved in several other cases. For example, in Cariou v.\nPrince, we found that certain photograph collages were transformative, even though\nthe collages were cast in the same medium as the copyrighted photographs. 714 F.3d\nat 706. Similarly, in Bill Graham Archives v. Dorling Kindersley Ltd., we held that it was a\ntransformative use to include in a biography copyrighted concert photos, even\nthough the photos were unaltered (except for being reduced in size). 448 F.3d 605,\n609-11 (2d Cir.2006); see also Blanch v. Koons, 467 F.3d 244, 252-53 (2d Cir.2006)\n(transformative use of copyrighted photographs in collage painting); Leibovitz v.\nParamount Pictures Corp., 137 F.3d 109, 114 (2d Cir.1998) (transformative use of\ncopyrighted photograph in advertisement).\nCases from other Circuits reinforce this conclusion. In Perfect 10, Inc., the Ninth\nCircuit held that the use of copyrighted thumbnail images in internet search results\n288\n\n\x0cwas transformative because the thumbnail copies served a different function from\nthe original copyrighted images. 508 F.3d at 1165; accord Arriba Soft Corp., 336\nF.3d at 819. And in A.V. ex rel. Vanderhye v. iParadigms, LLC, a company created\nelectronic copies of unaltered student papers for use in connection with a computer\nprogram that detects plagiarism. Even though the electronic copies made no\n\xe2\x80\x9csubstantive alteration to\xe2\x80\x9d the copyrighted student essays, the Fourth Circuit held\nthat plagiarism detection constituted a transformative use of the copyrighted works.\n562 F.3d 630, 639-40.\nii.\nThe second fair-use factor \xe2\x80\x94 the nature of the copyrighted work \xe2\x80\x94 is not\ndispositive. The HDL permits the full-text search of every type of work imaginable.\nConsequently, there is no dispute that the works at issue are of the type that the\ncopyright laws value and seek to protect. However, \xe2\x80\x9cthis factor `may be of limited\nusefulness where,\xe2\x80\x99 as here, `the creative work ... is being used for a transformative\npurpose.\xe2\x80\x99\xe2\x80\x9c Cariou, 714 F.3d at 710 (quoting Bill Graham Archives, 448 F.3d at 612).\nAccordingly, our fair-use analysis hinges on the other three factors.\niii.\nThe third factor asks whether the copying used more of the copyrighted work than\nnecessary and whether the copying was excessive. As we have noted, \xe2\x80\x9c[t]here are no\nabsolute rules as to how much of a copyrighted work may be copied and still be\nconsidered a fair use.\xe2\x80\x9d Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1263 (2d\nCir.1986). \xe2\x80\x9cThe extent of permissible copying varies with the purpose and character\nof the use.\xe2\x80\x9d Campbell, 510 US at 586-87. The crux of the inquiry is whether \xe2\x80\x9cno more\nwas taken than necessary.\xe2\x80\x9d Id. at 589. For some purposes, it may be necessary to\ncopy the entire copyrighted work, in which case Factor Three does not weigh against\na finding of fair use. See Bill Graham Archives, 448 F.3d at 613 (entire image copied);\nArriba Soft, 336 F.3d at 821 (\xe2\x80\x9cIf Arriba only copied part of the image, it would be\nmore difficult to identify it, thereby reducing the usefulness of the visual search\nengine.\xe2\x80\x9d).\nIn order to enable the full-text search function, the Libraries, as we have seen,\ncreated digital copies of all the books in their collections.5\nFootnote 5: The HDL also creates digital copies of the images of each page of the books. As the Libraries\nacknowledge, the HDL does not need to retain these copies to enable the full-text search use. We discuss the\nfair-use justification for these copies in the context of the disability-access use.\n\nBecause it was reasonably necessary for the HDL to make use of the entirety of the\nworks in order to enable the full-text search function, we do not believe the copying\nwas excessive.\nThe Authors also contend that the copying is excessive because the HDL creates and\nmaintains copies of the works at four different locations. But the record\ndemonstrates that these copies are also reasonably necessary in order to facilitate the\nHDL\xe2\x80\x99s legitimate uses. In particular, the HDL\xe2\x80\x99s services are offered to patrons\nthrough two servers, one at the University of Michigan (the primary server) and an\nidentical one at the University of Indiana (the \xe2\x80\x9cmirror\xe2\x80\x9d server). Both servers contain\ncopies of the digital works at issue. According to the HDL executive director, the\n\xe2\x80\x9cexistence of an identical mirror site allows for balancing the load of user web traffic\n289\n\n\x0cto avoid overburdening a single site, and each site acts as a back-up of the HDL\ncollection in the event that one site were to cease operation (for example, due to\nfailure caused by a disaster, or even as a result of routine maintenance).\xe2\x80\x9d To further\nguard against the risk of data loss, the HDL stores copies of the works on two\nencrypted backup tapes, which are disconnected from the internet and are placed in\nseparate secure locations on the University of Michigan campus. The HDL creates\nthese backup tapes so that the data could be restored in \xe2\x80\x9cthe event of a disaster\ncausing large-scale data loss\xe2\x80\x9d to the primary and mirror servers.\nWe have no reason to think that these copies are excessive or unreasonable in\nrelation to the purposes identified by the Libraries and permitted by the law of\ncopyright. In sum, even viewing the evidence in the light most favorable to the\nAuthors, the record demonstrates that these copies are reasonably necessary to\nfacilitate the services HDL provides to the public and to mitigate the risk of disaster\nor data loss. Accordingly, we conclude that this factor favors the Libraries.\niv.\nThe fourth factor requires us to consider \xe2\x80\x9cthe effect of the use upon the potential\nmarket for or value of the copyrighted work,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(4), and, in particular,\nwhether the secondary use \xe2\x80\x9cusurps the market of the original work,\xe2\x80\x9d NXIVM Corp.,\n364 F.3d at 482.\nThe Libraries contend that the full-text-search use poses no harm to any existing or\npotential traditional market and point to the fact that, in discovery, the Authors\nadmitted that they were unable to identify \xe2\x80\x9cany specific, quantifiable past harm, or\nany documents relating to any such past harm,\xe2\x80\x9d resulting from any of the Libraries\xe2\x80\x99\nuses of their works (including full-text search). The district court agreed with this\ncontention, as do we.\nAt the outset, it is important to recall that the Factor Four analysis is concerned with\nonly one type of economic injury to a copyright holder: the harm that results because\nthe secondary use serves as a substitute for the original work. See Campbell, 510 US at\n591 (\xe2\x80\x9ccognizable market harm\xe2\x80\x9d is limited to \xe2\x80\x9cmarket substitution\xe2\x80\x9d). In other words,\nunder Factor Four, any economic \xe2\x80\x9charm\xe2\x80\x9d caused by transformative uses does not\ncount because such uses, by definition, do not serve as substitutes for the original\nwork. See Bill Graham Archives, 448 F.3d at 614.\nTo illustrate why this is so, consider how copyright law treats book reviews. Book\nreviews often contain quotations of copyrighted material to illustrate the reviewer\xe2\x80\x99s\npoints and substantiate his criticisms; this is a paradigmatic fair use. And a negative\nbook review can cause a degree of economic injury to the author by dissuading\nreaders from purchasing copies of her book, even when the review does not serve as\na substitute for the original. But, obviously, in that case, the author has no cause for\ncomplaint under Factor Four: The only market harms that count are the ones that\nare caused because the secondary use serves as a substitute for the original, not when\nthe secondary use is transformative (as in quotations in a book review). See Campbell,\n510 US at 591-92 (\xe2\x80\x9cWhen a lethal parody, like a scathing theater review, kills demand\nfor the original, it does not produce a harm cognizable under the Copyright Act.\xe2\x80\x9d).\n\n290\n\n\x0cThe Authors assert two reasons why the full-text-search function harms their\ntraditional markets. The first is a \xe2\x80\x9clost sale\xe2\x80\x9d theory which posits that a market for\nlicensing books for digital search could possibly develop in the future, and the HDL\nimpairs the emergence of such a market because it allows patrons to search books\nwithout any need for a license. Thus, according to the Authors, every copy employed\nby the HDL in generating full-text searches represents a lost opportunity to license\nthe book for search.\nThis theory of market harm does not work under Factor Four, because the full-text\nsearch function does not serve as a substitute for the books that are being searched.\nSee Campbell, 510 US at 591-92; Bill Graham Archives, 448 F.3d at 614. Thus, it is\nirrelevant that the Libraries might be willing to purchase licenses in order to engage\nin this transformative use (if the use were deemed unfair). Lost licensing revenue\ncounts under Factor Four only when the use serves as a substitute for the original\nand the full-text-search use does not.\nNext, the Authors assert that the HDL creates the risk of a security breach which\nmight impose irreparable damage on the Authors and their works. In particular, the\nAuthors speculate that, if hackers were able to obtain unauthorized access to the\nbooks stored at the HDL, the full text of these tens of millions of books might be\ndistributed worldwide without restriction, \xe2\x80\x9cdecimating\xe2\x80\x9d the traditional market for\nthose works.\nThe record before us documents the extensive security measures the Libraries have\nundertaken to safeguard against the risk of a data breach. Some of those measures\nwere described by the HDL executive director as follows:\nFirst, [HDL] maintains ... rigorous physical security controls. HDL servers, storage,\nand networking equipment at Michigan and Indiana University are mounted in\nlocked racks, and only six individuals at Michigan and three at Indiana University\nhave keys. The data centers housing HDL servers, storage, and networking\nequipment at each site location are monitored by video surveillance, and entry\nrequires use of both a keycard and a biometric sensor.\nSecond, network access to the HDL corpus is highly restricted, even for the staff of\nthe data centers housing HDL equipment at Michigan and Indiana University. For\nexample, two levels of network firewalls are in place at each site, and Indiana\nUniversity data center staff do not have network access to the HDL corpus, only\naccess to the physical equipment. For the backup tapes, network access is limited to\nthe administrators of the backup system, and these individuals are not provided the\nencryption key that would be required to access the encrypted files on the backup\ntapes.\nWeb access to the HDL corpus is also highly restricted. Access by users of the HDL\nservice is governed by primarily by [sic] the HDL rights database, which classifies\neach work by presumed copyright status, and also by a user\xe2\x80\x99s authentication to the\nsystem (e.g., as an individual certified to have a print disability by Michigan\xe2\x80\x99s Office\nof Services for Students with Disabilities).\n...\nEven where we do permit a work to be read online, such as a work in the public\ndomain, we make efforts to ensure that inappropriate levels of access do not take\nplace. For example, a mass download prevention system called \xe2\x80\x9cchoke\xe2\x80\x9d is used to\n\n291\n\n\x0cmeasure the rate of activity (such as the rate a user is reading pages) by each\nindividual user. If a user\xe2\x80\x99s rate of activity exceeds certain thresholds, the system\nassumes that the user is mechanized (e.g., a web robot) and blocks that user\xe2\x80\x99s access\nfor a set period of time.\n\n(Wilkins Declaration).\nThis showing of the security measures taken by the Libraries is essentially unrebutted.\nConsequently, we see no basis in the record on which to conclude that a security\nbreach is likely to occur, much less one that would result in the public release of the\nspecific copyrighted works belonging to any of the plaintiffs in this case. Cf. Clapper v.\nAmnesty Int\xe2\x80\x99l USA, 133 S.Ct. 1138, 1143 (2013) (risk of future harm must be\n\xe2\x80\x9ccertainly impending,\xe2\x80\x9d rather than merely \xe2\x80\x9cconjectural\xe2\x80\x9d or \xe2\x80\x9chypothetical,\xe2\x80\x9d to\nconstitute a cognizable injury-in-fact); Sony Corp., 464 US at 453-54 (concluding that\ntime-shifting using a Betamax is fair use because the copyright owners\xe2\x80\x99 \xe2\x80\x9cprediction\nthat live television or movie audiences will decrease\xe2\x80\x9d was merely \xe2\x80\x9cspeculative\xe2\x80\x9d).\nFactor Four thus favors a finding of fair use.\nWithout foreclosing a future claim based on circumstances not now predictable, and\nbased on a different record, we hold that the balance of relevant factors in this case\nfavors the Libraries. In sum, we conclude that the doctrine of fair use allows the\nLibraries to digitize copyrighted works for the purpose of permitting full-text\nsearches.\nCONCLUSION\nThe judgment of the district court is AFFIRMED, in part, insofar as the district\ncourt concluded that that the doctrine of \xe2\x80\x9cfair use\xe2\x80\x9d allows defendants-appellees to\ncreate a full-text searchable database of copyrighted works and to provide those\nworks in formats accessible to those with disabilities; and that claims predicated\nupon the Orphan Works Project are not ripe for adjudication. We VACATE the\njudgment, in part, insofar as it rests on the district court\xe2\x80\x99s holding related to the claim\nof infringement predicated upon defendants-appellees\xe2\x80\x99 preservation of copyrighted\nworks, and we REMAND for further proceedings consistent with this opinion.\nNotes and questions\n(1) Other issues in the HathiTrust case: Portions of the decision dealing with associational\nstanding have been omitted from this extract. The court of appeals agreed with the district\ncourt that the issues raised by the orphan works program were not ripe for adjudication\nbecause the project had been abandoned as a result of the litigation. The court also vacated\nthe district court\xe2\x80\x99s ruling that preservation copies were fair use on standing grounds. The\ncourt also held (at 103) that \xe2\x80\x9cthe doctrine of fair use allows the Libraries to provide full\ndigital access to copyrighted works to their print-disabled patrons.\xe2\x80\x9d\n\n292\n\n\x0cAuthors Guild v. Google, Inc., 804 F. 3d 202 (2d Cir. 2015)71\nCircuit Judge Leval\nThis copyright dispute tests the boundaries of fair use. Plaintiffs, who are authors of\npublished books under copyright, sued Google, Inc. (\xe2\x80\x9cGoogle\xe2\x80\x9d) for copyright\ninfringement in the United States District Court for the Southern District of New\nYork (Chin, J.). They appeal from the grant of summary judgment in Google\xe2\x80\x99s favor.\nThrough its Library Project and its Google Books project, acting without permission\nof rights holders, Google has made digital copies of tens of millions of books,\nincluding Plaintiffs\xe2\x80\x99, that were submitted to it for that purpose by major libraries.\nGoogle has scanned the digital copies and established a publicly available search\nfunction. An Internet user can use this function to search without charge to\ndetermine whether the book contains a specified word or term and also see \xe2\x80\x9csnippets\xe2\x80\x9d\nof text containing the searched-for terms. In addition, Google has allowed the\nparticipating libraries to download and retain digital copies of the books they submit,\nunder agreements which commit the libraries not to use their digital copies in\nviolation of the copyright laws. These activities of Google are alleged to constitute\ninfringement of Plaintiffs\xe2\x80\x99 copyrights. Plaintiffs sought injunctive and declaratory\nrelief as well as damages.\nGoogle defended on the ground that its actions constitute \xe2\x80\x9cfair use,\xe2\x80\x9d which, under\n17 U.S.C. \xc2\xa7 107, is \xe2\x80\x9cnot an infringement.\xe2\x80\x9d The district court agreed. Authors Guild, Inc.\nv. Google Inc., 954 F.Supp.2d 282, 294 (S.D.N.Y.2013). Plaintiffs brought this appeal.\nGoogle Books and the Google Library Project\nGoogle\xe2\x80\x99s Library Project, which began in 2004, involves bi-lateral agreements\nbetween Google and a number of the world\xe2\x80\x99s major research libraries. Under these\nagreements, the participating libraries select books from their collections to submit\nto Google for inclusion in the project. Google makes a digital scan of each book,\nextracts a machine-readable text, and creates an index of the machine-readable text\nof each book. Google retains the original scanned image of each book, in part so as\nto improve the accuracy of the machine-readable texts and indices as image-to-text\nconversion technologies improve.\nSince 2004, Google has scanned, rendered machine-readable, and indexed more than\n20 million books, including both copyrighted works and works in the public domain.\nThe vast majority of the books are non-fiction, and most are out of print. All of the\ndigital information created by Google in the process is stored on servers protected\nby the same security systems Google uses to shield its own confidential information.\nThe digital corpus created by the scanning of these millions of books enables the\nGoogle Books search engine. Members of the public who access the Google Books\nwebsite can enter search words or terms of their own choice, receiving in response a\nlist of all books in the database in which those terms appear, as well as the number of\ntimes the term appears in each book. A brief description of each book, entitled\nDisclosure: Along with Jason Schultz I was Amici Curiae for Digital Humanities and Law Scholars in this\ncase.\n71\n\n293\n\n\x0c\xe2\x80\x9cAbout the Book,\xe2\x80\x9d gives some rudimentary additional information, including a list of\nthe words and terms that appear with most frequency in the book. It sometimes\nprovides links to buy the book online and identifies libraries where the book can be\nfound. The search tool permits a researcher to identify those books, out of millions,\nthat do, as well as those that do not, use the terms selected by the researcher. Google\nnotes that this identifying information instantaneously supplied would otherwise not\nbe obtainable in lifetimes of searching.\nNo advertising is displayed to a user of the search function. Nor does Google receive\npayment by reason of the searcher\xe2\x80\x99s use of Google\xe2\x80\x99s link to purchase the book.\nThe search engine also makes possible new forms of research, known as \xe2\x80\x9ctext\nmining\xe2\x80\x9d and \xe2\x80\x9cdata mining.\xe2\x80\x9d Google\xe2\x80\x99s \xe2\x80\x9cngrams\xe2\x80\x9d research tool draws on the Google\nLibrary Project corpus to furnish statistical information to Internet users about the\nfrequency of word and phrase usage over centuries. This tool permits users to\ndiscern fluctuations of interest in a particular subject over time and space by showing\nincreases and decreases in the frequency of reference and usage in different periods\nand different linguistic regions. It also allows researchers to comb over the tens of\nmillions of books Google has scanned in order to examine \xe2\x80\x9cword frequencies,\nsyntactic patterns, and thematic markers\xe2\x80\x9d and to derive information on how\nnomenclature, linguistic usage, and literary style have changed over time. Authors\nGuild, Inc., 954 F.Supp.2d at 287. The district court gave as an example \xe2\x80\x9ctracking the\nfrequency of references to the United States as a single entity (\xe2\x80\x98the United States is\xe2\x80\x99)\nversus references to the United States in the plural (`the United States are\xe2\x80\x99) and how\nthat usage has changed over time.\xe2\x80\x9d\nEditor\xe2\x80\x99s Illustration (not part of judgment)72\n\nJudge Leval is referring to an example in =the amicus brief filed on behalf of Digital Humanities Researchers.\nSee Brief of Digital Humanities and Law Scholars in Support of Defendants\xe2\x80\x99 Motion For Summary Judgment\nin Authors Guild v. Google (1:05-cv-08136-DC) (August 3, 2012).\n72\n\n294\n\n\x0cThe Google Books search function also allows the user a limited viewing of text. In\naddition to telling the number of times the word or term selected by the searcher\nappears in the book, the search function will display a maximum of three \xe2\x80\x9csnippets\xe2\x80\x9d\ncontaining it. A snippet is a horizontal segment comprising ordinarily an eighth of a\npage. Each page of a conventionally formatted book in the Google Books database is\ndivided into eight non-overlapping horizontal segments, each such horizontal\nsegment being a snippet. (Thus, for such a book with 24 lines to a page, each snippet\nis comprised of three lines of text.) Each search for a particular word or term within\na book will reveal the same three snippets, regardless of the number of computers\nfrom which the search is launched. Only the first usage of the term on a given page\nis displayed. Thus, if the top snippet of a page contains two (or more) words for\nwhich the user searches, and Google\xe2\x80\x99s program is fixed to reveal that particular\nsnippet in response to a search for either term, the second search will duplicate the\nsnippet already revealed by the first search, rather than moving to reveal a different\nsnippet containing the word because the first snippet was already revealed. Google\xe2\x80\x99s\nprogram does not allow a searcher to increase the number of snippets revealed by\nrepeated entry of the same search term or by entering searches from different\ncomputers. A searcher can view more than three snippets of a book by entering\nadditional searches for different terms. However, Google makes permanently\nunavailable for snippet view one snippet on each page and one complete page out of\nevery ten \xe2\x80\x94 a process Google calls \xe2\x80\x9cblacklisting.\xe2\x80\x9d\nGoogle also disables snippet view entirely for types of books for which a single\nsnippet is likely to satisfy the searcher\xe2\x80\x99s present need for the book, such as\ndictionaries, cookbooks, and books of short poems. Finally, since 2005, Google will\nexclude any book altogether from snippet view at the request of the rights holder by\nthe submission of an online form.\nUnder its contracts with the participating libraries, Google allows each library to\ndownload copies \xe2\x80\x94 of both the digital image and machine-readable versions \xe2\x80\x94 of\nthe books that library submitted to Google for scanning (but not of books submitted\nby other libraries). The agreements between Google and the libraries, although not in\nall respects uniform, require the libraries to abide by copyright law in utilizing the\ndigital copies they download and to take precautions to prevent dissemination of\ntheir digital copies to the public at large. Participant libraries have downloaded at\nleast 2.7 million digital copies of their own volumes.\nThe Law of Fair Use\nThe ultimate goal of copyright is to expand public knowledge and understanding,\nwhich copyright seeks to achieve by giving potential creators exclusive control over\ncopying of their works, thus giving them a financial incentive to create informative,\nintellectually enriching works for public consumption. This objective is clearly\nreflected in the Constitution\xe2\x80\x99s empowerment of Congress \xe2\x80\x9cTo promote the Progress of\nScience ... by securing for limited Times to Authors ... the exclusive Right to their\nrespective Writings.\xe2\x80\x9d US Const., Art. I, \xc2\xa7 8, cl. 8 (emphasis added). Thus, while\nauthors are undoubtedly important intended beneficiaries of copyright, the ultimate,\nprimary intended beneficiary is the public, whose access to knowledge copyright\nseeks to advance by providing rewards for authorship.\n\n295\n\n\x0cFor nearly three hundred years, since shortly after the birth of copyright in England\nin 1710, courts have recognized that, in certain circumstances, giving authors\nabsolute control over all copying from their works would tend in some\ncircumstances to limit, rather than expand, public knowledge. In the words of Lord\nEllenborough, \xe2\x80\x9cWhile I shall think myself bound to secure every man in the\nenjoyment of his copy-right, one must not put manacles upon science.\xe2\x80\x9d Cary v.\nKearsley, 170 Eng. Rep. 679, 681(1802). Courts thus developed the doctrine,\neventually named fair use, which permits unauthorized copying in some\ncircumstances, so as to further \xe2\x80\x9ccopyright\xe2\x80\x99s very purpose, to promote the Progress\nof Science and useful Arts.\xe2\x80\x9d Campbell v. Acuff-Rose Music, Inc., 510 US 569, 575 (1994).\nAlthough well established in the common law development of copyright, fair use was\nnot recognized in the terms of our statute until the adoption of \xc2\xa7 107 in the\nCopyright Act of 1976.\nSection 107, in its present form, provides:\n[T]he fair use of a copyrighted work ... for purposes such as criticism, comment,\nnews reporting, teaching (including multiple copies for classroom use), scholarship,\nor research, is not an infringement of copyright. In determining whether the use\nmade of a work in any particular case is a fair use the factors to be considered shall\ninclude \xe2\x80\x94\n(1) the purpose and character of the use, including whether such use is of a\ncommercial nature or is for nonprofit educational purposes;\n(2) the nature of the copyrighted work;\n(3) the amount and substantiality of the portion used in relation to the copyrighted\nwork as a whole; and\n(4) the effect of the use upon the potential market for or value of the copyrighted\nwork.\nThe fact that a work is unpublished shall not itself bar a finding of fair use if such\nfinding is made upon consideration of all the above factors.\n\n17 U.S.C. \xc2\xa7 107. As the Supreme Court has designated fair use an affirmative defense,\nsee Campbell, 510 US at 590, the party asserting fair use bears the burden of proof,\nAmerican Geophysical Union v. Texaco Inc., 60 F.3d 913, 918 (2d Cir.1994).\nThe statute\xe2\x80\x99s wording, derived from a brief observation of Justice Joseph Story in\nFolsom v. Marsh, does not furnish standards for recognition of fair use. Its instruction\nto consider the \xe2\x80\x9cpurpose and character\xe2\x80\x9d of the secondary use and the \xe2\x80\x9cnature\xe2\x80\x9d of\nthe copyrighted work does not explain what types of \xe2\x80\x9cpurpose and character\xe2\x80\x9d or\n\xe2\x80\x9cnature\xe2\x80\x9d favor a finding of fair use and which do not. In fact, as the Supreme Court\nobserved in Campbell, the House Report makes clear that, in passing the statute,\nCongress had no intention of normatively dictating fair use policy. The purpose of\nthe enactment was to give recognition in the statute itself to such an important part\nof copyright law developed by the courts through the common law process.\n\xe2\x80\x9cCongress meant \xc2\xa7 107 to restate the present judicial doctrine of fair use, not to\nchange, narrow, or enlarge it an any way, and intended that courts continue the\ncommon-law tradition of fair use adjudication.\xe2\x80\x9d Campbell, 510 US at 577.\nFurthermore, notwithstanding fair use\xe2\x80\x99s long common-law history, not until the\n\n296\n\n\x0cCampbell ruling in 1994 did courts undertake to explain the standards for finding fair\nuse.\nThe Campbell Court undertook a comprehensive analysis of fair use\xe2\x80\x99s requirements,\ndiscussing every segment of \xc2\xa7 107. Beginning with the examples of purposes set\nforth in the statute\xe2\x80\x99s preamble, the Court made clear that they are \xe2\x80\x9cillustrative and\nnot limitative\xe2\x80\x9d and \xe2\x80\x9cprovide only general guidance about the sorts of copying that\ncourts and Congress most commonly have found to be fair uses.\xe2\x80\x9d 510 US at 577-578.\nThe statute \xe2\x80\x9ccalls for case-by-case analysis\xe2\x80\x9d and \xe2\x80\x9cis not to be simplified with brightline rules.\xe2\x80\x9d Id. at 577. Section 107\xe2\x80\x99s four factors are not to \xe2\x80\x9cbe treated in isolation,\none from another. All are to be explored, and the results weighed together, in light of\nthe purposes of copyright.\xe2\x80\x9d Id. at 578. Each factor thus stands as part of a\nmultifaceted assessment of the crucial question: how to define the boundary limit of\nthe original author\xe2\x80\x99s exclusive rights in order to best serve the overall objectives of\nthe copyright law to expand public learning while protecting the incentives of\nauthors to create for the public good.\nAt the same time, the Supreme Court has made clear that some of the statute\xe2\x80\x99s four\nlisted factors are more significant than others. The Court observed in Harper & Row\nthat the fourth factor, which assesses the harm the secondary use can cause to the\nmarket for, or the value of, the copyright for the original, \xe2\x80\x9cis undoubtedly the single\nmost important element of fair use.\xe2\x80\x9d 471 US 539, 566 (1985). This is consistent with\nthe fact that the copyright is a commercial right, intended to protect the ability of\nauthors to profit from the exclusive right to merchandise their own work.\nIn Campbell, the Court stressed also the importance of the first factor, the \xe2\x80\x9cpurpose\nand character of the secondary use.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(1). The more the appropriator\nis using the copied material for new, transformative purposes, the more it serves\ncopyright\xe2\x80\x99s goal of enriching public knowledge and the less likely it is that the\nappropriation will serve as a substitute for the original or its plausible derivatives,\nshrinking the protected market opportunities of the copyrighted work. 510 US at 591\n(noting that, when the secondary use is transformative, \xe2\x80\x9cmarket substitution is at\nleast less certain, and market harm may not be so readily inferred.\xe2\x80\x9d).\nWith this background, we proceed to discuss each of the statutory factors, as\nilluminated by Campbell and subsequent case law, in relation to the issues here in\ndispute.\nThe Search and Snippet View Functions\nA. Factor One\n(1) Transformative purpose. Campbell\xe2\x80\x99s explanation of the first factor\xe2\x80\x99s inquiry into\nthe \xe2\x80\x9cpurpose and character\xe2\x80\x9d of the secondary use focuses on whether the new work,\n\xe2\x80\x9cin Justice Story\xe2\x80\x99s words, merely supersedes the objects\xe2\x80\x99 of the original creation, or\ninstead adds something new, with a further purpose. It asks, in other words, whether\nand to what extent the new work is transformative.\xe2\x80\x9d 510 US at 578-579 (citations\nomitted).73 While recognizing that a transformative use is \xe2\x80\x9cnot absolutely necessary\nJudge Level is quite modest in not citing the Supreme Court\xe2\x80\x99s extensive citation of the judge\xe2\x80\x99s own law\nreview article advocating transformativeness as the basis of fair use. See Pierre N. Leval, Toward a Fair Use\nStandard, 103 HARV. L. REV. 1105 (1990).\n7373\n\n297\n\n\x0cfor a finding of fair use,\xe2\x80\x9d the opinion further explains that the \xe2\x80\x9cgoal of copyright, to\npromote science and the arts, is generally furthered by the creation of transformative\nworks\xe2\x80\x9d and that \xe2\x80\x9csuch works thus lie at the heart of the fair use doctrine\xe2\x80\x99s guarantee\nof breathing space within the confines of copyright.\xe2\x80\x9d Id. at 579. In other words,\ntransformative uses tend to favor a fair use finding because a transformative use is\none that communicates something new and different from the original or expands its\nutility, thus serving copyright\xe2\x80\x99s overall objective of contributing to public knowledge.\nThe word \xe2\x80\x9ctransformative\xe2\x80\x9d cannot be taken too literally as a sufficient key to\nunderstanding the elements of fair use. It is rather a suggestive symbol for a complex\nthought, and does not mean that any and all changes made to an author\xe2\x80\x99s original\ntext will necessarily support a finding of fair use. The Supreme Court\xe2\x80\x99s discussion in\nCampbell gave important guidance on assessing when a transformative use tends to\nsupport a conclusion of fair use. The defendant in that case defended on the ground\nthat its work was a parody of the original and that parody is a time-honored category\nof fair use. Explaining why parody makes a stronger, or in any event more obvious,\nclaim of fair use than satire, the Court stated,\n[T]he heart of any parodist\xe2\x80\x99s claim to quote from existing material ... is the use of ...\na prior author\xe2\x80\x99s composition to ... comment[] on that author\xe2\x80\x99s works.... If, on the contrary,\nthe commentary has no critical bearing on the substance or style of the original\ncomposition, which the alleged infringer merely uses to get attention or to avoid the\ndrudgery in working up something fresh, the claim to fairness in borrowing from\nanother\xe2\x80\x99s work diminishes accordingly (if it does not vanish).... Parody needs to\nmimic an original to make its point, and so has some claim to use the creation of its\nvictim\xe2\x80\x99s ... imagination, whereas satire can stand on its own two feet and so requires\njustification for the very act of borrowing.\n\nId. at 580-81 (emphasis added). In other words, the would-be fair user of another\xe2\x80\x99s\nwork must have justification for the taking. A secondary author is not necessarily at\nliberty to make wholesale takings of the original author\xe2\x80\x99s expression merely because\nof how well the original author\xe2\x80\x99s expression would convey the secondary author\xe2\x80\x99s\ndifferent message. Among the best recognized justifications for copying from\nanother\xe2\x80\x99s work is to provide comment on it or criticism of it. A taking from another\nauthor\xe2\x80\x99s work for the purpose of making points that have no bearing on the original\nmay well be fair use, but the taker would need to show a justification. This part of\nthe Supreme Court\xe2\x80\x99s discussion is significant in assessing Google\xe2\x80\x99s claim of fair use\nbecause, as discussed extensively below, Google\xe2\x80\x99s claim of transformative purpose\nfor copying from the works of others is to provide otherwise unavailable information\nabout the originals.\nA further complication that can result from oversimplified reliance on whether the\ncopying involves transformation is that the word \xe2\x80\x9ctransform\xe2\x80\x9d also plays a role in\ndefining \xe2\x80\x9cderivative works,\xe2\x80\x9d over which the original rights holder retains exclusive\ncontrol. Section 106 of the Act specifies the exclusive right of the copyright owner\n\xe2\x80\x9c(2) to prepare derivative works based upon the copyrighted work.\xe2\x80\x9d See 17 U.S.C. \xc2\xa7\n106. The statute defines derivative works largely by example, rather than explanation.\nThe examples include \xe2\x80\x9ctranslation, musical arrangement, dramatization,\nfictionalization, motion picture version, sound recording, art reproduction,\nabridgement, condensation,\xe2\x80\x9d to which list the statute adds \xe2\x80\x9cany other form in which\n\n298\n\n\x0ca work may be ... transformed.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101 (emphasis added). As we noted in\nAuthors Guild, Inc. v. HathiTrust, \xe2\x80\x9cparadigmatic examples of derivative works include\nthe translation of a novel into another language, the adaptation of a novel into a\nmovie or play, or the recasting of a novel as an e-book or an audiobook.\xe2\x80\x9d 755 F.3d\n87, 95 (2d Cir.2014). While such changes can be described as transformations, they\ndo not involve the kind of transformative purpose that favors a fair use finding. The\nstatutory definition suggests that derivative works generally involve transformations\nin the nature of changes of form. 17 U.S.C. \xc2\xa7 101. By contrast, copying from an\noriginal for the purpose of criticism or commentary on the original or provision of\ninformation about it,17 tends most clearly to satisfy Campbell\xe2\x80\x99s notion of the\n\xe2\x80\x9ctransformative\xe2\x80\x9d purpose involved in the analysis of Factor One.18\nFootnote 17: See, e.g., HathiTrust, 755 F.3d at 97-98 (justifying as transformative fair use purpose the digital\ncopying of original for purpose of permitting searchers to determine whether its text employs particular words);\nA.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 638-640 (4th Cir.2009) (justifying as transformative fair\nuse purpose the complete digital copying of a manuscript to determine whether the original included matter\nplagiarized from other works); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007) (justifying as\ntransformative fair use purpose the use of a digital, thumbnail copy of the original to provide an Internet pathway\nto the original); Kelly v. Arriba Soft Corp., 336 F.3d 811, 818-819 (9th Cir.2003) (same); Bond v. Blum, 317 F.3d 385\n(4th Cir.2003) (justifying as fair use purpose the copying of author\xe2\x80\x99s original unpublished autobiographical\nmanuscript for the purpose of showing that he murdered his father and was an unfit custodian of his children);\nNu\xc3\xb1ez v. Caribbean Int\xe2\x80\x99l News Corp., 235 F.3d 18, 21-23 (1st Cir.2000) (justifying as transformative fair use purpose\na newspaper\xe2\x80\x99s copying of a photo of winner of beauty pageant in a revealing pose for the purpose of informing\nthe public of the reason the winner\xe2\x80\x99s title was withdrawn).\nFootnote 18: The Seventh Circuit takes the position that the kind of secondary use that favors satisfaction of the\nfair use test is better described as a \xe2\x80\x9ccomplementary\xe2\x80\x9d use, referring to how a hammer and nail complement one\nanother in that together they achieve results that neither can accomplish on its own. Ty, Inc. v. Publications\nInternational, Ltd., 292 F.3d 512, 517-518 (7th Cir.2002); see also Kienitz v. Sconnie Nation LLC, 766 F.3d 756,\n758 (7th Cir.2014). We do not find the term \xe2\x80\x9ccomplementary\xe2\x80\x9d particularly helpful in explaining fair use. The term\nwould encompass changes of form that are generally understood to produce derivative works, rather than fair\nuses, and, at the same time, would fail to encompass copying for purposes that are generally and properly viewed\nas creating fair uses. When a novel is converted into film, for example, the original novel and the film ideally\ncomplement one another in that each contributes to achieving results that neither can accomplish on its own.\nThe invention of the original author combines with the cinematographic interpretive skills of the filmmaker to\nproduce something that neither could have produced independently. Nonetheless, at least when the intention of\nthe film is to make a \xe2\x80\x9cmotion picture version\xe2\x80\x9d of the novel, 17 U.S.C. \xc2\xa7 101, without undertaking to parody it or\nto comment on it, the film is generally understood to be a derivative work, which under \xc2\xa7 106, falls within the\nexclusive rights of the copyright owner. Although they complement one another, the film is not a fair use. At the\nsame time, when a secondary work quotes an original for the purpose of parodying it, or discrediting it by\nexposing its inaccuracies, illogic, or dishonesty, such an undertaking is not within the exclusive prerogatives of\nthe rights holder; it produces a fair use. Yet, when the purpose of the second is essentially to destroy the first, the\ntwo are not comfortably described as complementaries that combine to produce together something that neither\ncould have produced independently of the other. We recognize, as just noted above, that the word\n\xe2\x80\x9ctransformative,\xe2\x80\x9d if interpreted too broadly, can also seem to authorize copying that should fall within the scope\nof an author\xe2\x80\x99s derivative rights. Attempts to find a circumspect shorthand for a complex concept are best\nunderstood as suggestive of a general direction, rather than as definitive descriptions.\n\nWith these considerations in mind, we first consider whether Google\xe2\x80\x99s search and\nsnippet views functions satisfy the first fair use factor with respect to Plaintiffs\xe2\x80\x99 rights\nin their books. (The question whether these functions might infringe upon Plaintiffs\xe2\x80\x99\nderivative rights is discussed in the next Part.)\n(2) Search Function. We have no difficulty concluding that Google\xe2\x80\x99s making of a\ndigital copy of Plaintiffs\xe2\x80\x99 books for the purpose of enabling a search for\nidentification of books containing a term of interest to the searcher involves a highly\ntransformative purpose, in the sense intended by Campbell. Our court\xe2\x80\x99s exemplary\n\n299\n\n\x0cdiscussion in HathiTrust informs our ruling. That case involved a dispute that is\nclosely related, although not identical, to this one. Authors brought claims of\ncopyright infringement against HathiTrust, an entity formed by libraries participating\nin the Google Library Project to pool the digital copies of their books created for\nthem by Google. The suit challenged various usages HathiTrust made of the digital\ncopies. Among the challenged uses was HathiTrust\xe2\x80\x99s offer to its patrons of \xe2\x80\x9cfull-text\nsearches,\xe2\x80\x9d which, very much like the search offered by Google Books to Internet\nusers, permitted patrons of the libraries to locate in which of the digitized books\nspecific words or phrases appeared. 755 F.3d at 98. (HathiTrust\xe2\x80\x99s search facility did\nnot include the snippet view function, or any other display of text.) We concluded\nthat both the making of the digital copies and the use of those copies to offer the\nsearch tool were fair uses. Id. at 105.\nNotwithstanding that the libraries had downloaded and stored complete digital\ncopies of entire books, we noted that such copying was essential to permit searchers\nto identify and locate the books in which words or phrases of interest to them\nappeared. Id. at 97. We concluded \xe2\x80\x9cthat the creation of a full-text searchable\ndatabase is a quintessentially transformative use ... [as] the result of a word search is\ndifferent in purpose, character, expression, meaning, and message from the page\n(and the book) from which it is drawn.\xe2\x80\x9d Id. We cited A.V. ex rel. Vanderhye v.\niParadigms, LLC, 562 F.3d 630, 639-40 (4th Cir.2009), Perfect 10, Inc. v. Amazon.com,\nInc., 508 F.3d 1146, 1165 (9th Cir.2007), and Kelly v. Arriba Soft Corp., 336 F.3d 811,\n819 (9th Cir.2003) as examples of cases in which courts had similarly found the\ncreation of complete digital copies of copyrighted works to be transformative fair\nuses when the copies \xe2\x80\x9cserved a different function from the original.\xe2\x80\x9d HathiTrust, 755\nF.3d at 97.\nAs with HathiTrust (and iParadigms), the purpose of Google\xe2\x80\x99s copying of the original\ncopyrighted books is to make available significant information about those books,\npermitting a searcher to identify those that contain a word or term of interest, as well\nas those that do not include reference to it. In addition, through the ngrams tool,\nGoogle allows readers to learn the frequency of usage of selected words in the\naggregate corpus of published books in different historical periods. We have no\ndoubt that the purpose of this copying is the sort of transformative purpose\ndescribed in Campbell as strongly favoring satisfaction of the first factor.\nWe recognize that our case differs from HathiTrust in two potentially significant\nrespects. First, HathiTrust did not \xe2\x80\x9cdisplay to the user any text from the underlying\ncopyrighted work,\xe2\x80\x9d 755 F.3d at 91, whereas Google Books provides the searcher\nwith snippets containing the word that is the subject of the search. Second,\nHathiTrust was a nonprofit educational entity, while Google is a profit-motivated\ncommercial corporation. We discuss those differences below.\n(3) Snippet View. Plaintiffs correctly point out that this case is significantly different\nfrom HathiTrust in that the Google Books search function allows searchers to read\nsnippets from the book searched, whereas HathiTrust did not allow searchers to\nview any part of the book. Snippet view adds important value to the basic\ntransformative search function, which tells only whether and how often the searched\nterm appears in the book. Merely knowing that a term of interest appears in a book\ndoes not necessarily tell the searcher whether she needs to obtain the book, because\n300\n\n\x0cit does not reveal whether the term is discussed in a manner or context falling within\nthe scope of the searcher\xe2\x80\x99s interest. For example, a searcher seeking books that\nexplore Einstein\xe2\x80\x99s theories, who finds that a particular book includes 39 usages of\n\xe2\x80\x9cEinstein,\xe2\x80\x9d will nonetheless conclude she can skip that book if the snippets reveal\nthat the book speaks of \xe2\x80\x9cEinstein\xe2\x80\x9d because that is the name of the author\xe2\x80\x99s cat. In\ncontrast, the snippet will tell the searcher that this is a book she needs to obtain if\nthe snippet shows that the author is engaging with Einstein\xe2\x80\x99s theories.\nGoogle\xe2\x80\x99s division of the page into tiny snippets is designed to show the searcher just\nenough context surrounding the searched term to help her evaluate whether the\nbook falls within the scope of her interest (without revealing so much as to threaten\nthe author\xe2\x80\x99s copyright interests). Snippet view thus adds importantly to the highly\ntransformative purpose of identifying books of interest to the searcher. With respect\nto the first factor test, it favors a finding of fair use (unless the value of its\ntransformative purpose is overcome by its providing text in a manner that offers a\ncompeting substitute for Plaintiffs\xe2\x80\x99 books, which we discuss under factors three and\nfour below).\n(4) Google\xe2\x80\x99s Commercial Motivation. Plaintiffs also contend that Google\xe2\x80\x99s\ncommercial motivation weighs in their favor under the first factor. Google\xe2\x80\x99s\ncommercial motivation distinguishes this case from HathiTrust, as the defendant in\nthat case was a non-profit entity founded by, and acting as the representative of,\nlibraries. Although Google has no revenues flowing directly from its operation of the\nGoogle Books functions, Plaintiffs stress that Google is profit-motivated and seeks\nto use its dominance of book search to fortify its overall dominance of the Internet\nsearch market, and that thereby Google indirectly reaps profits from the Google\nBooks functions.\nFor these arguments Plaintiffs rely primarily on two sources. First is Congress\xe2\x80\x99s\nspecification in spelling out the first fair use factor in the text of \xc2\xa7 107 that\nconsideration of the \xe2\x80\x9cpurpose and character of the [secondary] use\xe2\x80\x9d should \xe2\x80\x9cinclude\nwhether such use is of a commercial nature or is for nonprofit educational purposes.\xe2\x80\x9d\nSecond is the Supreme Court\xe2\x80\x99s assertion in dictum in Sony Corporation of America v.\nUniversal City Studios that \xe2\x80\x9cevery commercial use of copyrighted material is\npresumptively ... unfair.\xe2\x80\x9d 464 US 417, 451 (1984). If that were the extent of\nprecedential authority on the relevance of commercial motivation, Plaintiffs\xe2\x80\x99\narguments would muster impressive support. However, while the commercial\nmotivation of the secondary use can undoubtedly weigh against a finding of fair use\nin some circumstances, the Supreme Court, our court, and others have eventually\nrecognized that the Sony dictum was enormously overstated.19\nFootnote 19: Campbell, 510 US at 583-84; Cariou v. Prince, 714 F.3d 694, 708 (2d Cir.2013); Castle Rock Entm\xe2\x80\x99t, Inc. v.\nCarol Pub. Grp., Inc., 150 F.3d 132, 141-42 (2d Cir.1998); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165\n(9th Cir.2007); Kelly v. Arriba Soft Corp., 336 F.3d 811, 819 (9th Cir.2003); see also Monge v. Maya Magazines, Inc.,\n688 F.3d 1164, 1172 (9th Cir.2012) (noting that Campbell \xe2\x80\x9cdebunked the notion that Sony called for a `hard\nevidentiary presumption\xe2\x80\x99 that commercial use is presumptively unfair.\xe2\x80\x9d)\n\nThe Sixth Circuit took the Sony dictum at its word in Acuff-Rose Music, Inc. v. Campbell,\nconcluding that, because the defendant rap music group\xe2\x80\x99s spoof of the plaintiff\xe2\x80\x99s\nballad was done for profit, it could not be fair use. 972 F.2d 1429, 1436-1437 (6th\nCir.1992). The Supreme Court reversed on this very point, observing that \xe2\x80\x9cCongress\ncould not have intended\xe2\x80\x9d such a broad presumption against commercial fair uses, as\n301\n\n\x0c\xe2\x80\x9cnearly all of the illustrative uses listed in the preamble paragraph of \xc2\xa7 107 ... are\ngenerally conducted for profit in this country.\xe2\x80\x9d Campbell, 510 US at 584 (internal\nquotation marks and citations omitted). The Court emphasized Congress\xe2\x80\x99s statement\nin the House Report to the effect that the commercial or nonprofit character of a\nwork is \xe2\x80\x9cnot conclusive\xe2\x80\x9d but merely \xe2\x80\x9ca fact to be `weighed along with other[s] in fair\nuse decisions.\xe2\x80\x99\xe2\x80\x9c Id. at 585. In explaining the first fair use factor, the Court clarified\nthat \xe2\x80\x9cthe more transformative the [secondary] work, the less will be the significance\nof other factors, like commercialism, that may weigh against a finding of fair use.\xe2\x80\x9d Id.\nat 579.\nOur court has since repeatedly rejected the contention that commercial motivation\nshould outweigh a convincing transformative purpose and absence of significant\nsubstitutive competition with the original. See Cariou v. Prince, 714 F.3d 694, 708 (2d\nCir.2013); Castle Rock Entertainment, Inc. v. Carol Publication Group, Inc., 150 F.3d 132,\n141-42 (2d Cir.1998).\nWhile we recognize that in some circumstances, a commercial motivation on the part\nof the secondary user will weigh against her, especially, as the Supreme Court\nsuggested, when a persuasive transformative purpose is lacking, Campbell, 510 US at\n579, we see no reason in this case why Google\xe2\x80\x99s overall profit motivation should\nprevail as a reason for denying fair use over its highly convincing transformative\npurpose, together with the absence of significant substitutive competition, as reasons\nfor granting fair use. Many of the most universally accepted forms of fair use, such as\nnews reporting and commentary, quotation in historical or analytic books, reviews of\nbooks, and performances, as well as parody, are all normally done commercially for\nprofit.20\nFootnote 20: Just as there is no reason for presuming that a commercial use is not a fair use, which would defeat\nthe most widely accepted and logically justified areas of fair use, there is likewise no reason to presume\ncategorically that a nonprofit educational purpose should qualify as a fair use. Authors who write for educational\npurposes, and publishers who invest substantial funds to publish educational materials, would lose the ability to\nearn revenues if users were permitted to copy the materials freely merely because such copying was in the service\nof a nonprofit educational mission. The publication of educational materials would be substantially curtailed if\nsuch publications could be freely copied for non-profit educational purposes.\n\nB. Factor Two\nThe second fair use factor directs consideration of the \xe2\x80\x9cnature of the copyrighted\nwork.\xe2\x80\x9d While the \xe2\x80\x9ctransformative purpose\xe2\x80\x9d inquiry discussed above is conventionally\ntreated as a part of first factor analysis, it inevitably involves the second factor as well.\nOne cannot assess whether the copying work has an objective that differs from the\noriginal without considering both works, and their respective objectives.\nThe second factor has rarely played a significant role in the determination of a fair\nuse dispute. The Supreme Court in Harper & Row made a passing observation in\ndictum that, \xe2\x80\x9c[t]he law generally recognizes a greater need to disseminate factual\nworks than works of fiction or fantasy.\xe2\x80\x9d 471 US 539, 563 (1985). Courts have\nsometimes speculated that this might mean that a finding of fair use is more favored\nwhen the copying is of factual works than when copying is from works of fiction.\nHowever, while the copyright does not protect facts or ideas set forth in a work, it\ndoes protect that author\xe2\x80\x99s manner of expressing those facts and ideas. At least unless\na persuasive fair use justification is involved, authors of factual works, like authors of\nfiction, should be entitled to copyright protection of their protected expression. The\n302\n\n\x0cmere fact that the original is a factual work therefore should not imply that others\nmay freely copy it. Those who report the news undoubtedly create factual works. It\ncannot seriously be argued that, for that reason, others may freely copy and redisseminate news reports.21\nFootnote 21: We think it unlikely that the Supreme Court meant in its concise dictum that secondary authors are\nat liberty to copy extensively from the protected expression of the original author merely because the material is\nfactual. What the Harper & Row dictum may well have meant is that, because in the case of factual writings, there\nis often occasion to test the accuracy of, to rely on, or to repeat their factual propositions, and such testing and\nreliance may reasonably require quotation (lest a change of expression unwittingly alter the facts), factual works\noften present well justified fair uses, even if the mere fact that the work is factual does not necessarily justify\ncopying of its protected expression.\n\nIn considering the second factor in HathiTrust, we concluded that it was \xe2\x80\x9cnot\ndispositive,\xe2\x80\x9d 755 F.3d at 98, commenting that courts have hardly ever found that the\nsecond factor in isolation played a large role in explaining a fair use decision. The\nsame is true here. While each of the three Plaintiffs\xe2\x80\x99 books in this case is factual, we\ndo not consider that as a boost to Google\xe2\x80\x99s claim of fair use. If one (or all) of the\nplaintiff works were fiction, we do not think that would change in any way our\nappraisal. Nothing in this case influences us one way or the other with respect to the\nsecond factor considered in isolation. To the extent that the \xe2\x80\x9cnature\xe2\x80\x9d of the original\ncopyrighted work necessarily combines with the \xe2\x80\x9cpurpose and character\xe2\x80\x9d of the\nsecondary work to permit assessment of whether the secondary work uses the\noriginal in a \xe2\x80\x9ctransformative\xe2\x80\x9d manner, as the term is used in Campbell, the second\nfactor favors fair use not because Plaintiffs\xe2\x80\x99 works are factual, but because the\nsecondary use transformatively provides valuable information about the original,\nrather than replicating protected expression in a manner that provides a meaningful\nsubstitute for the original.\nC. Factor Three\nThe third statutory factor instructs us to consider \xe2\x80\x9cthe amount and substantiality of\nthe portion used in relation to the copyrighted work as a whole.\xe2\x80\x9d The clear\nimplication of the third factor is that a finding of fair use is more likely when small\namounts, or less important passages, are copied than when the copying is extensive,\nor encompasses the most important parts of the original. The obvious reason for this\nlies in the relationship between the third and the fourth factors. The larger the\namount, or the more important the part, of the original that is copied, the greater the\nlikelihood that the secondary work might serve as an effectively competing substitute\nfor the original, and might therefore diminish the original rights holder\xe2\x80\x99s sales and\nprofits.\n(1) Search Function. The Google Books program has made a digital copy of the\nentirety of each of Plaintiffs\xe2\x80\x99 books. Notwithstanding the reasonable implication of\nFactor Three that fair use is more likely to be favored by the copying of smaller,\nrather than larger, portions of the original, courts have rejected any categorical rule\nthat a copying of the entirety cannot be a fair use. Complete unchanged copying has\nrepeatedly been found justified as fair use when the copying was reasonably\nappropriate to achieve the copier\xe2\x80\x99s transformative purpose and was done in such a\nmanner that it did not offer a competing substitute for the original.24\nFootnote 24: See cases cited supra note 17; see also Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d\n605, 613 (2d Cir.2006) (Copying the entirety of a work is sometimes necessary to make a fair use of the work).\n\n303\n\n\x0cThe Supreme Court said in Campbell that \xe2\x80\x9cthe extent of permissible copying varies\nwith the purpose and character of the use\xe2\x80\x9d and characterized the relevant questions\nas whether \xe2\x80\x9cthe amount and substantiality of the portion used ... are reasonable in\nrelation to the purpose of the copying,\xe2\x80\x9d Campbell, 510 US at 586-587, noting that the\nanswer to that question will be affected by \xe2\x80\x9cthe degree to which the [copying work]\nmay serve as a market substitute for the original or potentially licensed derivatives,\xe2\x80\x9d\nid. at 587-588 (finding that, in the case of a parodic song, \xe2\x80\x9chow much ... is reasonable\nwill depend, say, on the extent to which the song\xe2\x80\x99s overriding purpose and character\nis to parody the original or, in contrast, the likelihood that the parody may serve as a\nmarket substitute for the original\xe2\x80\x9d).\nIn HathiTrust, our court concluded in its discussion of the third factor that \xe2\x80\x9cbecause\nit was reasonably necessary for the [HathiTrust Digital Library] to make use of the\nentirety of the works in order to enable the full-text search function, we do not\nbelieve the copying was excessive.\xe2\x80\x9d 755 F.3d at 98. As with HathiTrust, not only is\nthe copying of the totality of the original reasonably appropriate to Google\xe2\x80\x99s\ntransformative purpose, it is literally necessary to achieve that purpose. If Google\ncopied less than the totality of the originals, its search function could not advise\nsearchers reliably whether their searched term appears in a book (or how many\ntimes).\nWhile Google makes an unauthorized digital copy of the entire book, it does not\nreveal that digital copy to the public. The copy is made to enable the search\nfunctions to reveal limited, important information about the books. With respect to\nthe search function, Google satisfies the third factor test, as illuminated by the\nSupreme Court in Campbell.\n(2) Snippet View. Google\xe2\x80\x99s provision of snippet view makes our third factor inquiry\ndifferent from that inquiry in HathiTrust. What matters in such cases is not so much\n\xe2\x80\x9cthe amount and substantiality of the portion used\xe2\x80\x9d in making a copy, but rather the\namount and substantiality of what is thereby made accessible to a public for which it\nmay serve as a competing substitute. In HathiTrust, notwithstanding the defendant\xe2\x80\x99s\nfull-text copying, the search function revealed virtually nothing of the text of the\noriginals to the public. Here, through the snippet view, more is revealed to searchers\nthan in HathiTrust.\nWithout doubt, enabling searchers to see portions of the copied texts could have\ndeterminative effect on the fair use analysis. The larger the quantity of the\ncopyrighted text the searcher can see and the more control the searcher can exercise\nover what part of the text she sees, the greater the likelihood that those revelations\ncould serve her as an effective, free substitute for the purchase of the plaintiff\xe2\x80\x99s book.\nWe nonetheless conclude that, at least as presently structured by Google, the snippet\nview does not reveal matter that offers the marketplace a significantly competing\nsubstitute for the copyrighted work.\nGoogle has constructed the snippet feature in a manner that substantially protects\nagainst its serving as an effectively competing substitute for Plaintiffs\xe2\x80\x99 books. In the\nBackground section of this opinion, we describe a variety of limitations Google\nimposes on the snippet function. These include the small size of the snippets\n(normally one eighth of a page), the blacklisting of one snippet per page and of one\n\n304\n\n\x0cpage in every ten, the fact that no more than three snippets are shown \xe2\x80\x94 and no\nmore than one per page \xe2\x80\x94 for each term searched, and the fact that the same\nsnippets are shown for a searched term no matter how many times, or from how\nmany different computers, the term is searched. In addition, Google does not\nprovide snippet view for types of books, such as dictionaries and cookbooks, for\nwhich viewing a small segment is likely to satisfy the searcher\xe2\x80\x99s need. The result of\nthese restrictions is, so far as the record demonstrates, that a searcher cannot succeed,\neven after long extended effort to multiply what can be revealed, in revealing\nthrough a snippet search what could usefully serve as a competing substitute for the\noriginal.\nThe blacklisting, which permanently blocks about 22% of a book\xe2\x80\x99s text from snippet\nview, is by no means the most important of the obstacles Google has designed.\nWhile it is true that the blacklisting of 22% leaves 78% of a book theoretically\naccessible to a searcher, it does not follow that any large part of that 78% is in fact\naccessible. The other restrictions built into the program work together to ensure that,\neven after protracted effort over a substantial period of time, only small and\nrandomly scattered portions of a book will be accessible. In an effort to show what\nlarge portions of text searchers can read through persistently augmented snippet\nsearches, Plaintiffs\xe2\x80\x99 counsel employed researchers over a period of weeks to do\nmultiple word searches on Plaintiffs\xe2\x80\x99 books. In no case were they able to access as\nmuch as 16% of the text, and the snippets collected were usually not sequential but\nscattered randomly throughout the book. Because Google\xe2\x80\x99s snippets are arbitrarily\nand uniformly divided by lines of text, and not by complete sentences, paragraphs, or\nany measure dictated by content, a searcher would have great difficulty constructing\na search so as to provide any extensive information about the book\xe2\x80\x99s use of that term.\nAs snippet view never reveals more than one snippet per page in response to\nrepeated searches for the same term, it is at least difficult, and often impossible, for a\nsearcher to gain access to more than a single snippet\xe2\x80\x99s worth of an extended,\ncontinuous discussion of the term.\nThe fact that Plaintiffs\xe2\x80\x99 searchers managed to reveal nearly 16% of the text of\nPlaintiffs\xe2\x80\x99 books overstates the degree to which snippet view can provide a\nmeaningful substitute. At least as important as the percentage of words of a book\nthat are revealed is the manner and order in which they are revealed. Even if the\nsearch function revealed 100% of the words of the copyrighted book, this would be\nof little substitutive value if the words were revealed in alphabetical order, or any\norder other than the order they follow in the original book. It cannot be said that a\nrevelation is \xe2\x80\x9csubstantial\xe2\x80\x9d in the sense intended by the statute\xe2\x80\x99s third factor if the\nrevelation is in a form that communicates little of the sense of the original. The\nfragmentary and scattered nature of the snippets revealed, even after a determined,\nassiduous, time-consuming search, results in a revelation that is not \xe2\x80\x9csubstantial,\xe2\x80\x9d\neven if it includes an aggregate 16% of the text of the book. If snippet view could be\nused to reveal a coherent block amounting to 16% of a book, that would raise a very\ndifferent question beyond the scope of our inquiry.\nD. Factor Four\nThe fourth fair use factor, \xe2\x80\x9cthe effect of the [copying] use upon the potential market\nfor or value of the copyrighted work,\xe2\x80\x9d focuses on whether the copy brings to the\n305\n\n\x0cmarketplace a competing substitute for the original, or its derivative, so as to deprive\nthe rights holder of significant revenues because of the likelihood that potential\npurchasers may opt to acquire the copy in preference to the original. Because\ncopyright is a commercial doctrine whose objective is to stimulate creativity among\npotential authors by enabling them to earn money from their creations, the fourth\nfactor is of great importance in making a fair use assessment. See Harper & Row, 471\nUS at 566 (describing the fourth factor as \xe2\x80\x9cundoubtedly the single most important\nelement of fair use\xe2\x80\x9d).\nCampbell stressed the close linkage between the first and fourth factors, in that the\nmore the copying is done to achieve a purpose that differs from the purpose of the\noriginal, the less likely it is that the copy will serve as a satisfactory substitute for the\noriginal. 510 US at 591. Consistent with that observation, the HathiTrust court\nfound that the fourth factor favored the defendant and supported a finding of fair\nuse because the ability to search the text of the book to determine whether it\nincludes selected words \xe2\x80\x9cdoes not serve as a substitute for the books that are being\nsearched.\xe2\x80\x9d 755 F.3d at 100.\nHowever, Campbell\xe2\x80\x99s observation as to the likelihood of a secondary use serving as an\neffective substitute goes only so far. Even if the purpose of the copying is for a\nvaluably transformative purpose, such copying might nonetheless harm the value of\nthe copyrighted original if done in a manner that results in widespread revelation of\nsufficiently significant portions of the original as to make available a significantly\ncompeting substitute. The question for us is whether snippet view, notwithstanding\nits transformative purpose, does that. We conclude that, at least as snippet view is\npresently constructed, it does not.\nEspecially in view of the fact that the normal purchase price of a book is relatively\nlow in relation to the cost of manpower needed to secure an arbitrary assortment of\nrandomly scattered snippets, we conclude that the snippet function does not give\nsearchers access to effectively competing substitutes. Snippet view, at best and after a\nlarge commitment of manpower, produces discontinuous, tiny fragments, amounting\nin the aggregate to no more than 16% of a book. This does not threaten the rights\nholders with any significant harm to the value of their copyrights or diminish their\nharvest of copyright revenue.\nWe recognize that the snippet function can cause some loss of sales. There are surely\ninstances in which a searcher\xe2\x80\x99s need for access to a text will be satisfied by the\nsnippet view, resulting in either the loss of a sale to that searcher, or reduction of\ndemand on libraries for that title, which might have resulted in libraries purchasing\nadditional copies. But the possibility, or even the probability or certainty, of some\nloss of sales does not suffice to make the copy an effectively competing substitute\nthat would tilt the weighty fourth factor in favor of the rights holder in the original.\nThere must be a meaningful or significant effect \xe2\x80\x9cupon the potential market for or\nvalue of the copyrighted work.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(4).\nFurthermore, the type of loss of sale envisioned above will generally occur in relation\nto interests that are not protected by the copyright. A snippet\xe2\x80\x99s capacity to satisfy a\nsearcher\xe2\x80\x99s need for access to a copyrighted book will at times be because the snippet\nconveys a historical fact that the searcher needs to ascertain. For example, a student\n\n306\n\n\x0cwriting a paper on Franklin D. Roosevelt might need to learn the year Roosevelt was\nstricken with polio. By entering \xe2\x80\x9cRoosevelt polio\xe2\x80\x9d in a Google Books search, the\nstudent would be taken to (among numerous sites) a snippet from page 31 of\nRichard Thayer Goldberg\xe2\x80\x99s The Making of Franklin D. Roosevelt (1981), telling that\nthe polio attack occurred in 1921. This would satisfy the searcher\xe2\x80\x99s need for the book,\neliminating any need to purchase it or acquire it from a library. But what the searcher\nderived from the snippet was a historical fact. Author Goldberg\xe2\x80\x99s copyright does not\nextend to the facts communicated by his book. It protects only the author\xe2\x80\x99s manner\nof expression. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 974 (2d Cir.1980)\n(\xe2\x80\x9cA grant of copyright in a published work secures for its author a limited monopoly\nover the expression it contains.\xe2\x80\x9d) (emphasis added). Google would be entitled, without\ninfringement of Goldberg\xe2\x80\x99s copyright, to answer the student\xe2\x80\x99s query about the year\nRoosevelt was afflicted, taking the information from Goldberg\xe2\x80\x99s book. The fact that,\nin the case of the student\xe2\x80\x99s snippet search, the information came embedded in three\nlines of Goldberg\xe2\x80\x99s writing, which were superfluous to the searcher\xe2\x80\x99s needs, would\nnot change the taking of an unprotected fact into a copyright infringement.\nEven if the snippet reveals some authorial expression, because of the brevity of a\nsingle snippet and the cumbersome, disjointed, and incomplete nature of the\naggregation of snippets made available through snippet view, we think it would be a\nrare case in which the searcher\xe2\x80\x99s interest in the protected aspect of the author\xe2\x80\x99s work\nwould be satisfied by what is available from snippet view, and rarer still \xe2\x80\x94 because\nof the cumbersome, disjointed, and incomplete nature of the aggregation of snippets\nmade available through snippet view \xe2\x80\x94 that snippet view could provide a significant\nsubstitute for the purchase of the author\xe2\x80\x99s book.\nAccordingly, considering the four fair use factors in light of the goals of copyright,\nwe conclude that Google\xe2\x80\x99s making of a complete digital copy of Plaintiffs\xe2\x80\x99 works for\nthe purpose of providing the public with its search and snippet view functions (at\nleast as snippet view is presently designed) is a fair use and does not infringe\nPlaintiffs\xe2\x80\x99 copyrights in their books.\nIII. Derivative Rights in Search and Snippet View\nPlaintiffs next contend that, under Section 106(2), they have a derivative right in the\napplication of search and snippet view functions to their works, and that Google has\nusurped their exclusive market for such derivatives.\nThere is no merit to this argument. As explained above, Google does not infringe\nPlaintiffs\xe2\x80\x99 copyright in their works by making digital copies of them, where the\ncopies are used to enable the public to get information about the works, such as\nwhether, and how often they use specified words or terms (together with peripheral\nsnippets of text, sufficient to show the context in which the word is used but too\nsmall to provide a meaningful substitute for the work\xe2\x80\x99s copyrighted expression). The\ncopyright resulting from the Plaintiffs\xe2\x80\x99 authorship of their works does not include an\nexclusive right to furnish the kind of information about the works that Google\xe2\x80\x99s\nprograms provide to the public. For substantially the same reasons, the copyright\nthat protects Plaintiffs\xe2\x80\x99 works does not include an exclusive derivative right to supply\nsuch information through query of a digitized copy.\n\n307\n\n\x0cThe extension of copyright protection beyond the copying of the work in its original\nform to cover also the copying of a derivative reflects a clear and logical policy\nchoice. An author\xe2\x80\x99s right to control and profit from the dissemination of her work\nought not to be evaded by conversion of the work into a different form. The author\nof a book written in English should be entitled to control also the dissemination of\nthe same book translated into other languages, or a conversion of the book into a\nfilm. The copyright of a composer of a symphony or song should cover also\nconversions of the piece into scores for different instrumentation, as well as into\nrecordings of performances.\nThis policy is reflected in the statutory definition, which explains the scope of the\n\xe2\x80\x9cderivative\xe2\x80\x9d largely by examples \xe2\x80\x94 including \xe2\x80\x9ca translation, musical arrangement,\ndramatization, fictionalization, motion picture version, sound recording, art\nreproduction, abridgement, [or] condensation\xe2\x80\x9d \xe2\x80\x94 before adding, \xe2\x80\x9cor any other form\nin which a work may be recast, transformed, or adapted.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101. As noted\nabove, this definition, while imprecise, strongly implies that derivative works over\nwhich the author of the original enjoys exclusive rights ordinarily are those that represent the protected aspects of the original work, i.e., its expressive content,\nconverted into an altered form, such as the conversion of a novel into a film, the\ntranslation of a writing into a different language, the reproduction of a painting in the\nform of a poster or post card, recreation of a cartoon character in the form of a\nthree-dimensional plush toy, adaptation of a musical composition for different\ninstruments, or other similar conversions. If Plaintiffs\xe2\x80\x99 claim were based on Google\xe2\x80\x99s\nconverting their books into a digitized form and making that digitized version\naccessible to the public, their claim would be strong. But as noted above, Google\nsafeguards from public view the digitized copies it makes and allows access only to\nthe extent of permitting the public to search for the very limited information\naccessible through the search function and snippet view. The program does not\nallow access in any substantial way to a book\xe2\x80\x99s expressive content. Nothing in the\nstatutory definition of a derivative work, or of the logic that underlies it, suggests that\nthe author of an original work enjoys an exclusive derivative right to supply\ninformation about that work of the sort communicated by Google\xe2\x80\x99s search functions.\nPlaintiffs seek to support their derivative claim by a showing that there exist, or\nwould have existed, paid licensing markets in digitized works, such as those provided\nby the Copyright Clearance Center or the previous, revenue-generating version of\nthe Google Partners Program. Plaintiffs also point to the proposed settlement\nagreement rejected by the district court in this case, according to which Google\nwould have paid authors for its use of digitized copies of their works. The existence\nor potential existence of such paid licensing schemes does not support Plaintiffs\xe2\x80\x99\nderivative argument. The access to the expressive content of the original that is or\nwould have been provided by the paid licensing arrangements Plaintiffs cite is far\nmore extensive than that which Google\xe2\x80\x99s search and snippet view functions provide.\nThose arrangements allow or would have allowed public users to read substantial\nportions of the book. Such access would most likely constitute copyright\ninfringement if not licensed by the rights holders. Accordingly, such arrangements\nhave no bearing on Google\xe2\x80\x99s present programs, which, in a non-infringing manner,\nallow the public to obtain limited data about the contents of the book, without\nallowing any substantial reading of its text.\n308\n\n\x0cPlaintiffs also seek to support their derivative claim by a showing that there is a\ncurrent unpaid market in licenses for partial viewing of digitized books, such as the\nlicenses that publishers currently grant to the Google Partners program and\nAmazon\xe2\x80\x99s Search Inside the Book program to display substantial portions of their\nbooks. Plaintiffs rely on Infinity Broadcast Corporation v. Kirkwood, 150 F.3d 104 (2nd\nCir.1998) and United States v. American Society of Composers, Authors and Publishers\n(ASCAP), 599 F.Supp.2d 415 (S.D.N.Y.2009) for the proposition that \xe2\x80\x9ca secondary\nuse that replaces a comparable service licensed by the copyright holder, even without\ncharge, may cause market harm.\xe2\x80\x9d In the cases cited, however, the purpose of the\nchallenged secondary uses was not the dissemination of information about the\noriginal works, which falls outside the protection of the copyright, but was rather the\nre-transmission, or re-dissemination, of their expressive content. Those precedents\ndo not support the proposition Plaintiffs assert \xe2\x80\x94 namely that the availability of\nlicenses for providing unprotected information about a copyrighted work, or\nsupplying unprotected services related to it, gives the copyright holder the right to\nexclude others from providing such information or services.\nWhile the telephone ringtones at issue in the ASCAP case Plaintiffs cite are\nsuperficially comparable to Google\xe2\x80\x99s snippets in that both consist of brief segments\nof the copyrighted work, in a more significant way they are fundamentally different.\nWhile it is true that Google\xe2\x80\x99s snippets display a fragment of expressive content, the\nfragments it displays result from the appearance of the term selected by the searcher\nin an otherwise arbitrarily selected snippet of text. Unlike the reading experience that\nthe Google Partners program or the Amazon Search Inside the Book program\nprovides, the snippet function does not provide searchers with any meaningful\nexperience of the expressive content of the book. Its purpose is not to communicate\ncopyrighted expression, but rather, by revealing to the searcher a tiny segment\nsurrounding the searched term, to give some minimal contextual information to help\nthe searcher learn whether the book\xe2\x80\x99s use of that term will be of interest to her. The\nsegments taken from copyrighted music as ringtones, in contrast, are selected\nprecisely because they play the most famous, beloved passages of the particular piece\n\xe2\x80\x94 the expressive content that members of the public want to hear when their phone\nrings. The value of the ringtone to the purchaser is not that it provides information\nbut that it provides a mini-performance of the most appealing segment of the\nauthor\xe2\x80\x99s expressive content. There is no reason to think the courts in the cited cases\nwould have come to the same conclusion if the service being provided by the\nsecondary user had been simply to identify to a subscriber in what key a selected\ncomposition was written, the year it was written, or the name of the composer.\nThese cases, and the existence of unpaid licensing schemes for substantial viewing of\ndigitized works, do not support Plaintiffs\xe2\x80\x99 derivative works argument.\nIV. Plaintiffs\xe2\x80\x99 Exposure to Risks of Hacking of Google\xe2\x80\x99s Files\nPlaintiffs argue that Google\xe2\x80\x99s storage of its digitized copies of Plaintiffs\xe2\x80\x99 books\nexposes them to the risk that hackers might gain access and make the books widely\navailable, thus destroying the value of their copyrights. Unlike the Plaintiffs\xe2\x80\x99\nargument just considered based on a supposed derivative right to supply information\nabout their books, this claim has a reasonable theoretical basis. If, in the course of\nmaking an arguable fair use of a copyrighted work, a secondary user unreasonably\n\n309\n\n\x0cexposed the rights holder to destruction of the value of the copyright resulting from\nthe public\xe2\x80\x99s opportunity to employ the secondary use as a substitute for purchase of\nthe original (even though this was not the intent of the secondary user), this might\nwell furnish a substantial rebuttal to the secondary user\xe2\x80\x99s claim of fair use. For this\nreason, the Arriba Soft and Perfect 10 courts, in upholding the secondary user\xe2\x80\x99s\nclaim of fair use, observed that thumbnail images, which transformatively provided\nan Internet pathway to the original images, were of sufficiently low resolution that\nthey were not usable as effective substitutes for the originals. Arriba Soft, 336 F.3d\n811 at 819; Perfect 10, 508 F.3d at 1165.\nWhile Plaintiffs\xe2\x80\x99 claim is theoretically sound, it is not supported by the evidence. In\nHathiTrust, we faced substantially the same exposure-to-piracy argument. The record\nin HathiTrust, however, \xe2\x80\x9cdocumented the extensive security measures [the secondary\nuser] had undertaken to safeguard against the risk of a data breach,\xe2\x80\x9d evidence which\nwas unrebutted. 755 F.3d at 100. The HathiTrust court thus found \xe2\x80\x9cno basis ... on\nwhich to conclude that a security breach is likely to occur, much less one that would\nresult in the public release of the specific copyrighted works belonging to any of the\nplaintiffs in this case.\xe2\x80\x9d Id. at 100-101 (citing Clapper v. Amnesty Int\xe2\x80\x99l USA, 133 S.Ct.\n1138, 1143 (2013) (finding that risk of future harm must be \xe2\x80\x9ccertainly impending,\xe2\x80\x9d\nrather than merely \xe2\x80\x9cconjectural\xe2\x80\x9d or \xe2\x80\x9chypothetical,\xe2\x80\x9d to constitute a cognizable injuryin-fact), and Sony Corp., 464 US at 453-454 (concluding that time-shifting using a\nBetamax is fair use because the copyright owners\xe2\x80\x99 \xe2\x80\x9cprediction that live television or\nmovie audiences will decrease\xe2\x80\x9d was merely \xe2\x80\x9cspeculative\xe2\x80\x9d)).\nGoogle has documented that Google Books\xe2\x80\x99 digital scans are stored on computers\nwalled off from public Internet access and protected by the same impressive security\nmeasures used by Google to guard its own confidential information. As Google\nnotes, Plaintiffs\xe2\x80\x99 own security expert praised these security systems, remarking that\n\xe2\x80\x9cGoogle is fortunate to have ample resources and top-notch technical talents\xe2\x80\x9d that\nenable it to protect its data. Nor have Plaintiffs identified any thefts from Google\nBooks (or from the Google Library Project). Google has made a sufficient showing\nof protection of its digitized copies of Plaintiffs\xe2\x80\x99 works to carry its burden on this\naspect of its claim of fair use and thus to shift to Plaintiffs the burden of rebutting\nGoogle\xe2\x80\x99s showing. Plaintiffs\xe2\x80\x99 effort to do so falls far short.\nV. Google\xe2\x80\x99s Distribution of Digital Copies to Participant Libraries\nFinally, Plaintiffs contend that Google\xe2\x80\x99s distribution to a participating library of a\ndigital copy of Plaintiffs\xe2\x80\x99 books is not a fair use and exposes the Plaintiffs to risks of\nloss if the library uses its digital copy in an infringing manner, or if the library fails to\nmaintain security over its digital copy with the consequence that the book may\nbecome freely available as a result of the incursions of hackers. The claim fails.\nAlthough Plaintiffs describe the arrangement between Google and the libraries in\nmore nefarious terms, those arrangements are essentially that each participant library\nhas contracted with Google that Google will create for it a digital copy of each book\nthe library submits to Google, so as to permit the library to use its digital copy in a\nnon-infringing fair use manner. The libraries propose to use their digital copies to\nenable the very kinds of searches that we here hold to be fair uses in connection with\nGoogle\xe2\x80\x99s offer of such searches to the Internet public, and which we held in\n\n310\n\n\x0cHathiTrust to be fair uses when offered by HathiTrust to its users. The contract\nbetween Google and each of the participating libraries commits the library to use its\ndigital copy only in a manner consistent with the copyright law, and to take\nprecautions to prevent dissemination of their digital copies to the public at large.\nIn these circumstances, Google\xe2\x80\x99s creation for each library of a digital copy of that\nlibrary\xe2\x80\x99s already owned book in order to permit that library to make fair use through\nprovision of digital searches is not an infringement. If the library had created its own\ndigital copy to enable its provision of fair use digital searches, the making of the\ndigital copy would not have been infringement. Nor does it become an infringement\nbecause, instead of making its own digital copy, the library contracted with Google\nthat Google would use its expertise and resources to make the digital conversion for\nthe library\xe2\x80\x99s benefit.\nWe recognize the possibility that libraries may use the digital copies Google created\nfor them in an infringing manner. If they do, such libraries may be liable to Plaintiffs\nfor their infringement. It is also possible that, in such a suit, Plaintiffs might adduce\nevidence that Google was aware of or encouraged such infringing practices, in which\ncase Google could be liable as a contributory infringer. But on the present record,\nthe possibility that libraries may misuse their digital copies is sheer speculation. Nor\nis there any basis on the present record to hold Google liable as a contributory\ninfringer based on the mere speculative possibility that libraries, in addition to, or\ninstead of, using their digital copies of Plaintiffs\xe2\x80\x99 books in a non-infringing manner,\nmay use them in an infringing manner.\nWe recognize the additional possibility that the libraries might incur liability by\nnegligent mishandling of, and failure to protect, their digital copies, leaving them\nunreasonably vulnerable to hacking. That also, however, is nothing more than a\nspeculative possibility. There is no basis in the record to impose liability on Google\nfor having lawfully made a digital copy for a participating library so as to enable that\nlibrary to make non-infringing use of its copy, merely because of the speculative\npossibility that the library may fail to guard sufficiently against the dangers of hacking,\nas it is contractually obligated to do. Plaintiffs have failed to establish any basis for\nholding Google liable for its creation of a digital copy of a book submitted to it by a\nparticipating library so as to enable that library to make fair use of it.\nIn sum, we conclude that: (1) Google\xe2\x80\x99s unauthorized digitizing of copyrightprotected works, creation of a search functionality, and display of snippets from\nthose works are non-infringing fair uses. The purpose of the copying is highly\ntransformative, the public display of text is limited, and the revelations do not\nprovide a significant market substitute for the protected aspects of the originals.\nGoogle\xe2\x80\x99s commercial nature and profit motivation do not justify denial of fair use.\n(2) Google\xe2\x80\x99s provision of digitized copies to the libraries that supplied the books, on\nthe understanding that the libraries will use the copies in a manner consistent with\nthe copyright law, also does not constitute infringement. Nor, on this record, is\nGoogle a contributory infringer.\nNotes and questions\n\n311\n\n\x0c(1) In both Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014) and Authors Guild v.\nGoogle, Inc., 804 F.3d 202 (2d Cir. 2015), the Second Circuit held that library digitization for\nsearch related purposes was transformative and ultimately fair use. How does the defendants\xe2\x80\x99\nuse in these cases compare to Campbell v. Acuff-Rose?\n\nThe relationship between transformative use and non-expressive use\nMatthew Sag, The New Legal Landscape for Text Mining and Machine Learning,\n(Available at https://ssrn.com/abstract=3331606)\nExtracted and adapted with permission\n\nCopyright law is fundamentally concerned with the communication of original\nexpression to the public and not with the mechanical act of copying per se. To see\nthat this is so, one need only reflect on the fact that the exclusive rights of the\ncopyright owner are defined in terms of public communication of original expression.\nIt follows as a corollary that limiting them to such communication does not\nundermine the basic logic of copyright. I propose, in short, a principle of nonexpressive use: that the use of copyrighted work for a purpose that does not\nultimately (or substantially) convey the original expression encoded within the work\nshould not infringe copyright.\nAnother way of saying the same thing to observe that such uses pose no threat of\nexpressive substitution: information about a work may be useful, it may be valuable, it\nmay even effect the demand for that work, but it does not in any way fulfill the\npublic demand for the author\xe2\x80\x99s original expression.\nReframing the argument in favor of non-expressive use in terms of expressive\nsubstitution provides a bridge to the concept of transformative use. Focusing on\nexpressive substitution makes sense of both transformative use in general and nonexpressive use specifically. Classic transformative uses are generally fair uses because,\nin spite of communicating some of the author\xe2\x80\x99s original expression, they do not\nsubstitute for it. Parody, commentary, criticism, illustration and explanation may\ninclude large portions of the author\xe2\x80\x99s original expression, but these expressive\ntransformative uses do not usually pose any risk of expressive substitution. Nonexpressive use is also justified in terms of expressive substitution, but even more\nemphatically so. By definition a non-expressive use does not usurp the copyright\nowner\xe2\x80\x99s communication of her original expression to the public because the\nexpression is not communicated. The key difference between the two categories is\nthat non-expressive uses pose no threat of expressive substitution whatsoever,\nwhereas expressive-transformative uses don\xe2\x80\x99t generally threaten expressive\nsubstitution, but they might in particular circumstances. As a result, expressivetransformative use cases will continue to require courts to pay careful attention to\nthe third and fourth fair use factors\xe2\x80\x94the amount used and the market effect of that\nuse. In contrast, because non-expressive uses are by definition acts of copying that\ndo not communicate the author\xe2\x80\x99s original expression to the public, the amount\ncopied will almost never be instructive and there will be no cognizable market effect.\nUnderstanding transformative use and non-expressive use in terms of expressive\nsubstitution should also help courts to evaluate the significance of minor expressive\n312\n\n\x0cuses embedded within a broader text mining or machine learning project. Most\nresearchers using text mining tools will need to compare their metadata to selections\nof the actual text from time to time to evaluate the reliability of an algorithm or some\nother aspect of their methodology. Whether we label these uses as intermediate or\nnot is largely beside the point. The important point is that, such uses are orthogonal\nto the work\xe2\x80\x99s ordinary expressive purpose and that they do not pose any threat of\nexpressive substitution. Limited expressive uses for purposes such as presenting\nsearch results in context, or verifying the accuracy of results fit easily within the\ntraditional transformative use paradigm. Such uses are likely to be fair but need to be\nevaluated to confirm that they are unlikely to pose any risk of expressive substitution.\nThe Second Circuit\xe2\x80\x99s discussion of snippets in the Google Books case is an excellent\nexample of this approach.\nNow we come to issues of terminology. First, the relative merits of the terms \xe2\x80\x9cnonexpressive use\xe2\x80\x9d and \xe2\x80\x9cnon-consumptive use.\xe2\x80\x9d The ill-fated settlement agreement\nbetween Google and the Authors Guild defined \xe2\x80\x9cNon-Consumptive Research\xe2\x80\x9d as\n\xe2\x80\x9cresearch in which computational analysis is performed on one or more Books, but\nnot research in which a researcher reads or displays substantial portions of a Book to\nunderstand the intellectual content presented within the Book.\xe2\x80\x9d74 Since that time,\nmany in the library community have continued to use the term non-consumptive use\nin place of non-expressive use. This is unfortunate for several reasons. First, nonconsumptive use is already a term of art in the water rights literature with a\nsubstantially different meaning.75 Second, the term non-consumptive research is too\nclosely tied to the controversial settlement agreement. The term makes sense as used\nin the settlement agreement between Google and the Authors Guild, but outside that\ncontext of the definition in the agreement is too narrow. Third, the term nonexpressive use directs the reader\xe2\x80\x99s attention to the fundamental copyright distinction\nbetween ideas and their expression and between facts and their expression. In\ncontrast, some people may well see the digitization of works as a form of\nconsumption in the sense that the underlying works are consumed as inputs to the\ntext mining process.\nThe second issue of terminology to address is the relationship between\n\xe2\x80\x9ctransformative use\xe2\x80\x9d and \xe2\x80\x9cnon-expressive use.\xe2\x80\x9d In Copyright and Copy-Reliant\nTechnology (2009) I suggested that it might be better to recognize the transformative\nuse and non-expressive use as distinct categories emanating from a deeper copyright\nprinciple relating to expressive substitution. However, at the end of the day, whether\none uses the term non-consumptive use over non-expressive use, and whether one\nregards non-expressive use as just one more manifestation of transformative use as\nopposed to a separate category should not matter, except to the extent that clear\nterminology facilitates clear thinking. Given the influence of Campbell v. Acuff-Rose,\ncourts will probably continue to equate non-expressive use with transformative use, a\n\nAmended Settlement Agreement \xc2\xa7 1.93., Authors Guild et al. v. Google Inc., 770 F. Supp. 2d 666 (S.D.N.Y.\n2011) (No. 05 Civ. 8136).\n74\n\nSee e.g., \xc2\xa7 5:25.Waters subject to appropriation\xe2\x80\x94Non-consumptive use of consumptive rights, L. OF WATER\nRIGHTS AND RESOURCES \xc2\xa7 5:25.\n75\n\n313\n\n\x0cfact that makes it all the more important to understand how the two concepts are\nlinked to the deeper animating principle of expressive substitution.\n\nText data mining in the European Union\nIn April 2019, the European Union adopted the Digital Single Market Directive (\xe2\x80\x9cDSM\nDirective\xe2\x80\x9d) featuring two mandatory exceptions for text and data mining along with a raft of\nother measures relating to online activity and platform regulation.\nArticle 3 of the European Union Digital Single Market Directive\nCopyright in the Digital Single Market Directive of 2019\nArticle 3: Text and data mining for the purposes of scientific research\n1. Member States shall provide for an exception to the rights provided for in Article\n5(a) and Article 7(1) of Directive 96/9/EC [the Database Directive of 1996], Article\n2 of Directive 2001/29/EC [the reproduction right of the Copyright Directive in\nthe Information Society Directive of 2001], and Article 15(1) of this Directive [the\npress publications right] for reproductions and extractions made by research\norganisations and cultural heritage institutions in order to carry out, for the purposes\nof scientific research, text and data mining of works or other subject matter to\nwhich they have lawful access.\n2. Copies of works or other subject matter made in compliance with paragraph 1\nshall be stored with an appropriate level of security and may be retained for the\npurposes of scientific research, including for the verification of research results.\n3. Rightholders shall be allowed to apply measures to ensure the security and\nintegrity of the networks and databases where the works or other subject matter are\nhosted. Such measures shall not go beyond what is necessary to achieve that\nobjective.\n4. Member States shall encourage rightholders, research organisations and cultural\nheritage institutions to define commonly agreed best practices concerning the\napplication of the obligation and of the measures referred to in paragraphs 2 and 3\nrespectively.\nArticle 4: Exception or limitation for text and data mining\n1. Member States shall provide for an exception or limitation to the rights provided\nfor in Article 5(a) and Article 7(1) of Directive 96/9/EC [the Database Directive of\n1996], Article 2 of Directive 2001/29/EC [the reproduction right of the Copyright\nin the Information Society Directive of 2001], Article 4(1)(a) and (b) of Directive\n2009/24/EC [the Computer Programs Directive] and Article 15(1) of this Directive\n[the press publications right] for reproductions and extractions of lawfully accessible\nworks and other subject matter for the purposes of text and data mining.\n2. Reproductions and extractions made pursuant to paragraph 1 may be retained for\nas long as is necessary for the purposes of text and data mining.\n3. The exception or limitation provided for in paragraph 1 shall apply on condition\nthat the use of works and other subject matter referred to in that paragraph has not\n\n314\n\n\x0cbeen expressly reserved by their rightholders in an appropriate manner, such as\nmachine readable means in the case of content made publicly available online.\n4. This Article shall not affect the application of Article 3 of this Directive.\nArticle 2: Definitions\n(1) \xe2\x80\x98research organisation\xe2\x80\x99 means a university, including its libraries, a research\ninstitute or any other entity, the primary goal of which is to conduct scientific\nresearch or to carry out educational activities involving also the conduct of scientific\nresearch:\n(a) on a not-for-profit basis or by reinvesting all the profits in its scientific\nresearch; or\n(b) pursuant to a public interest mission recognised by a Member State;\nin such a way that the access to the results generated by such scientific research\ncannot be enjoyed on a preferential basis by an undertaking that exercises a decisive\ninfluence upon such organisation;\n(2) \xe2\x80\x98text and data mining\xe2\x80\x99 means any automated analytical technique aimed at\nanalysing text and data in digital form in order to generate information which\nincludes but is not limited to patterns, trends and correlations;\n(3) \xe2\x80\x98cultural heritage institution\xe2\x80\x99 means a publicly accessible library or museum, an\narchive or a film or audio heritage institution;\nArticle 7 Common provisions\n1. Any contractual provision contrary to the exceptions provided for in Articles 3, 5\nand 6 shall be unenforceable.\n2. Article 5(5) of Directive 2001/29/EC [The Copyright in the Information Society\nDirective] shall apply to the exceptions and limitations provided for under this Title.\nThe first, third and fifth subparagraphs of Article 6(4) of Directive 2001/29/EC\nshall apply to Articles 3 to 6 of this Directive.\n\nArticle 3 of the DSM Directive requires all members of the European Union to implement a\nbroad copyright exception for TDM in the not-for-profit research sector. Specifically,\nmembers must allow research organizations and cultural heritage institutions to make\nreproductions and extractions of copyrighted works \xe2\x80\x9cfor the purposes of scientific research,\ntext and data mining.\xe2\x80\x9d The exemption is premised on the user\xe2\x80\x99s lawful access to the works\nbeing mined. The Article 3 exemption is intended to be robust. Thanks to Article 7(1) of the\nDSM Directive, the Article 3 exemption is immune from contractual override. Furthermore,\nArticle 3(3) provides that rightholders may adopt measures to secure their networks and\ndatabases, but that \xe2\x80\x9csuch measures shall not go beyond what is necessary to achieve that\nobjective.\xe2\x80\x9d It is hard to imagine any theory of the fair use doctrine that would impose a\nsimilar non-obstruction requirement on copyright owners in the United States.\nArticle 4 of the DSM Directive contains a second mandatory exemption that is more\ninclusive, but narrower in scope. The Article 4 exemption is open to all would-be data\nminers (commercial and non-commercial alike), but it is focused more narrowly on\nreproductions and extractions for the purpose of \xe2\x80\x9ctext and data mining,\xe2\x80\x9d i.e., it lacks the\n\n315\n\n\x0cbroader \xe2\x80\x9cscientific research\xe2\x80\x9d purpose of Article 3. Consistent with Article 3, the Article 4\nexemption is premised on lawful access to the works in question. Unlike Article 3, the\nArticle 4 exemption is not protected from contractual override or technological roadblocks.\nMoreover, the Article 4 exemption is subject to an express reservation by the rightsholders.\nThis means that although the right to apply TDM methods to a text will soon be the new\ndefault throughout the EU, rightsholders will be able to opt out of that default by simply\nreserving their rights \xe2\x80\x9cin an appropriate manner, such as machine readable means in the case\nof content made publicly available online.\xe2\x80\x9d We should expect to see a lot of boilerplate notext mining notices on public facing websites, e-books, and broadcasts in the very near\nfuture.\nAnother significant difference between Article 3 and Article 4 relates to retention of works\ncopied as part of a text mining process. Under the Article 3 exemption, the covered\norganization must adopt an \xe2\x80\x9cappropriate level of security\xe2\x80\x9d and may be retain the works \xe2\x80\x9cfor\nthe purposes of scientific research, including for the verification of research results.\xe2\x80\x9d\nWhereas, under Article 4 the works may be retained only \xe2\x80\x9cfor as long as is necessary for the\npurposes of text and data mining.\xe2\x80\x9d This stricter retention requirement could prove to be\nsignificantly more restrictive for commercial text miners than what is required under United\nStates law.\nNotes and questions\n(1) How do the exemptions in Article 3 and 4 of the DSM Directive differ from rulings in\nHathiTrust and Google Books?\n(2) Sci-Hub provides free access to millions of research papers and books, without regard to\nand essentially in defiance of copyright law. Sci-Hub was founded by Alexandra Elbakyan in\n2011 in Kazakhstan. For some, Sci-Hub is a solution to the high cost of research papers\nsecured behind publisher paywalls, for others it is nothing more than theft. Would a\nresearcher violate copyright in the United States by downloading academic articles from SciHub to conduct text data mining? Would the result be any different in the European Union\nonce Article 3 of the DSM Directive has been implemented by member states?\n\n316\n\n\x0c9. COPYRIGHT SUBJECT MATTER AND THE BOUNDARIES OF THE WORK\n\nLocating the threshold of copyrightability\nCategories of work recognized by the Copyright Act.\nIt is important to understand the way the 1976 Act categorizes copyrightable subject matter.\n17 U.S. Code \xc2\xa7 102 - Subject matter of copyright: In general\n(a) Copyright protection subsists, in accordance with this title, in original works of\nauthorship fixed in any tangible medium of expression, now known or later\ndeveloped, from which they can be perceived, reproduced, or otherwise\ncommunicated, either directly or with the aid of a machine or device. Works of\nauthorship include the following categories:\n(1) literary works;\n(2) musical works, including any accompanying words;\n(3) dramatic works, including any accompanying music;\n(4) pantomimes and choreographic works;\n(5) pictorial, graphic, and sculptural works;\n(6) motion pictures and other audiovisual works;\n(7) sound recordings; and\n(8) architectural works.\n\nSection 102(a) lists eight categories of copyrightable subject matter. This list is not definitive;\nsubject matter falling outside of any of the eight categories could potentially be copyrightable\nso long as it is \xe2\x80\x9can original work of authorship fixed in a tangible medium of expression.\xe2\x80\x9d\nThis seems clear from the structure of the section and from the legislative history. 76\nHowever, the Copyright Office takes the view that neither it, nor the federal courts, has the\nauthority to establish new categories of copyright subject matter.77 Nonetheless, there is\nsufficient elasticity within categories such as \xe2\x80\x9cliterary works\xe2\x80\x9d to allow notions of\ncopyrightability to expand and adjust over time.\nOriginality\nUnder Section 102(a), even works that fit within the eight categories of potentially\ncopyrightable subject matter must also meet two additional requirements: they must be\n\xe2\x80\x9coriginal works of authorship\xe2\x80\x9d and they must be \xe2\x80\x9cfixed in any tangible medium of\nexpression.\xe2\x80\x9d\xc2\xa7 102(a) (emphasis added). In Feist Publications, Inc. v. Rural Telephone Service, Co.,\n499 U.S. 340, 346 (1991), the Supreme Court held that, \xe2\x80\x9coriginality is a constitutional\nrequirement.\xe2\x80\x9d And it explained (at 345):\n\xe2\x80\x9cThe use of the word \xe2\x80\x9cinclude,\xe2\x80\x9d as defined in section 101, makes clear that the listing is \xe2\x80\x9cillustrative and not\nlimitative,\xe2\x80\x9d and that the seven categories do not necessarily exhaust the scope of \xe2\x80\x9coriginal works of authorship\xe2\x80\x9d\nthat the bill is intended to protect.\xe2\x80\x9d House Report, at 53.\n76\n\n\xe2\x80\x9cCongress did not delegate authority to the courts to create new categories of authorship. Congress reserved\nthis option to itself. If the federal courts do not have authority to establish new categories of subject matter, it\nnecessarily follows that the Copyright Office also has no such authority\xe2\x80\xa6\xe2\x80\x9d 77 Fed. Reg. 37,605 (2012)\n77\n\n317\n\n\x0cOriginal, as the term is used in copyright, means only that the work was independently\ncreated by the author (as opposed to copied from other works), and that it possesses\nat least some minimal degree of creativity. (emphasis added)\n\nIn theory, every copyrightable work embodies \xe2\x80\x9cat least some minimal degree of creativity,\xe2\x80\x9d but\ncourts rarely have cause to define what that quantum of creativity is, although they often\nobserve its absence is particular contexts. Usually we don\xe2\x80\x99t need to know much more than\nthat fact that telephone books lack creativity entirely and novels possess it in abundance.\nHowever, the originality requirement has some important implications for the minimum size\nof copyrightable works and the copyright office has a long established practice of refusing\nregistration to words and short phrases on this basis.\n37 C.F.R. \xc2\xa7 202.1(a) Material not subject to copyright.\nThe following are examples of works not subject to copyright and applications for\nregistration of such works cannot be entertained:\n(a) Words and short phrases such as names, titles, and slogans; familiar symbols or\ndesigns; mere variations of typographic ornamentation, lettering or coloring; mere\nlisting of ingredients or contents; \xe2\x80\xa6\n\nThe requirement of originality is a good enough reason to preclude copyright for most\nwords and short phrases, but perhaps not all. Words and short phrases that are novel (in the\npatent law sense of being entirely new) arguably are original in that they owe their existence\nto the author, but they should probably be denied independent copyright status by virtue of\nthe merger doctrine and the idea-expression distinction, rather than a lack of creativity as\nsuch.78 For example, the word \xe2\x80\x9cQuidditch\xe2\x80\x9d was new and creative when JK Rowling invented it.\nShe apparently selected it from five notebook pages of words beginning with \xe2\x80\x9cQ\xe2\x80\x9d. The word\nQuidditch could not be copyrighted without depriving the public of only plausible way of\nreferring to the popular contact sport played on flying broomsticks in the Harry Potter\nfantasy series. Quidditch is uncopyrightable because the word is merged with the much more\ncomplicate set of ideas the word represents.\nOn the other hand, \xe2\x80\x9csupercalifragilisticexpialidocious\xe2\x80\x9d in Mary Poppins is also creative, and more\nimportantly, because it is nonsense it is hard to see that merger and idea-expression\ndistinction would bar it from copyright protection. But even if it could have been registered\nas a one-word literary work, the fact that it wasn\xe2\x80\x99t should mean something for copyright\nanalysis.79\nNotes and questions\n(1) Is the warning on the Starbucks cup copyrightable? Are other aspects of the cup\xe2\x80\x99s design\ncopyrightable?\n\nSee e.g. Perma Greetings, Inc. v. Russ Berrie & Co., 598 F. Supp 445, 448-49 (E.D. Mo. 1984) (finding that\nphrases such as \xe2\x80\x9chang in there,\xe2\x80\x9d \xe2\x80\x9cmessage,\xe2\x80\x9d and \xe2\x80\x9calong the way take time to smell the flowers\xe2\x80\x9d are unprotected\nand considering ideas of images and simple design characteristics to be uncopyrightable). See also, Matthews v.\nFreedman, 157 F.3d 25, 26 (1stCir.1998).\n78\n\n79\n\nLife Music, Inc. v. Wonderland Music Co. 241 F. Supp. 653 (S.D.N.Y.1965).\n\n318\n\n\x0cFixation\nThe Copyright Clause gives Congress the power to \xe2\x80\x9cpromote the Progress of Science and\nthe useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right\nto their respective Writings and Discoveries.\xe2\x80\x9d The Supreme Court has given the word\n\xe2\x80\x9cwritings\xe2\x80\x9d a broad interpretation\xe2\x80\x94see e.g. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53\n(1884)(photographs copyrightable as writings)\xe2\x80\x94but always subject to the limitation of a\nfixed material form.\nThe fixation requirement for copyright protection is both Constitutional and statutory.\nCongress has enacted anti-bootlegging laws which prohibit the unauthorized recording of\nlive performances. The right to prevent bootlegging may look like a copyright right, but it\nisn\xe2\x80\x99t because it protects unfixed performances. The Constitutional solution was to pass the\nanti-bootlegging laws under the authority of the commerce clause to circumvent the fixation\nrequirement.80 As noted above, Section 102(a) provides that for something to be eligible for\ncopyright protection it must be an original work of authorship and it must be \xe2\x80\x9cfixed\xe2\x80\x9d in some\n\xe2\x80\x9ctangible medium of expression\xe2\x80\x9d.\n17 U.S. Code \xc2\xa7 102(a)\nCopyright protection subsists, in accordance with this title, in original works of\nauthorship fixed in any tangible medium of expression, now known or later developed,\nfrom which they can be perceived, reproduced, or otherwise communicated, either\ndirectly or with the aid of a machine or device.\n17 U.S. Code \xc2\xa7 101\nA work is \xe2\x80\x9cfixed\xe2\x80\x9d in a tangible medium of expression when its embodiment in a\ncopy or phonorecord, by or under the authority of the author, is sufficiently\npermanent or stable to permit it to be perceived, reproduced, or otherwise\ncommunicated for a period of more than transitory duration. A work consisting of\n\nSee 17 U.S.C. \xc2\xa7 1101 (prohibiting the unauthorized fixation and trafficking in sound recordings and music\nvideos), constitutionality upheld in Kiss Catalog, Ltd. v. Passport Int\xe2\x80\x99l Prods. 350 F. Supp. 2d 823 (C.D. Cal. 2004).\nSee also the criminal anti-bootlegging provision in 18 U.S.C. \xc2\xa7 2319A, constitutionality upheld in United States v.\nMoghadam 175 F.3d 1269 (11th Cir. 1999), United States v. Martignon 492 F.3d 140 (2d Cir. 2007).\n80\n\n319\n\n\x0csounds, images, or both, that are being transmitted, is \xe2\x80\x9cfixed\xe2\x80\x9d for purposes of this\ntitle if a fixation of the work is being made simultaneously with its transmission.\n\xe2\x80\x9cCopies\xe2\x80\x9d are material objects, other than phonorecords, in which a work is fixed by\nany method now known or later developed, and from which the work can be\nperceived, reproduced, or otherwise communicated, either directly or with the aid of\na machine or device. The term \xe2\x80\x9ccopies\xe2\x80\x9d includes the material object, other than a\nphonorecord, in which the work is first fixed.\n\xe2\x80\x9cPhonorecords\xe2\x80\x9d are material objects in which sounds, other than those\naccompanying a motion picture or other audiovisual work, are fixed by any method\nnow known or later developed, and from which the sounds can be perceived,\nreproduced, or otherwise communicated, either directly or with the aid of a machine\nor device. The term \xe2\x80\x9cphonorecords\xe2\x80\x9d includes the material object in which the\nsounds are first fixed.\n\nThe definition of when a work is \xe2\x80\x9cfixed in a tangible medium of expression\xe2\x80\x9d in Section 101\nrefers specifically to reduction to material form in a \xe2\x80\x9ccopy\xe2\x80\x9d or a \xe2\x80\x9cphonorecord.\xe2\x80\x9d The terms\n\xe2\x80\x9ccopies\xe2\x80\x9d and \xe2\x80\x9cphonorecords\xe2\x80\x9d are also defined in Section 101. For most purposes we can\nthink of phonorecords as a subset of copies, although technically each term is defined in\nexclusion to the other. A \xe2\x80\x9ccopy\xe2\x80\x9d in this broader sense is the physical embodiment of the\nwork and it includes the first or original copy. The term is meant to be technologically\nneutral, so it does not matter if the work is fixed in computer memory or papyrus, the only\nlimitation is that one must be able to \xe2\x80\x9cperceive,\xe2\x80\x9d \xe2\x80\x9creproduce\xe2\x80\x9d, or \xe2\x80\x9cotherwise communicate\xe2\x80\x9d\nthe work from the copy. There is no requirement that a copy is directly human readable\n(obviously anything digital is not), so long as it can be \xe2\x80\x9cperceived, reproduced, or otherwise\ncommunicated \xe2\x80\xa6 with the aid of a machine or device.\xe2\x80\x9d\nNotice that to be \xe2\x80\x9cfixed in a tangible medium of expression\xe2\x80\x9d requires a bit more than\nidentifying a copy/phonorecord, the work must be fixed \xe2\x80\x9cby or under the authority of the\nauthor\xe2\x80\x9d and it must be \xe2\x80\x9csufficiently permanent or stable to permit it to be perceived,\nreproduced, or otherwise communicated for a period of more than transitory duration.\xe2\x80\x9d The\npermanence requirement has some interesting implications when it comes to infringement\nand the cases on that issue are discussed elsewhere in these materials.\n\nChallenging cases\nGarcia v. Google, Inc., 786 F. 3d 733 (9th Circuit 2015) (en banc)\nOpinion by Circuit Judge McKeown\nIn this case, a heartfelt plea for personal protection is juxtaposed with the limits of\ncopyright law and fundamental principles of free speech. The appeal teaches a simple\nlesson \xe2\x80\x94 a weak copyright claim cannot justify censorship in the guise of authorship.\nBy all accounts, Cindy Lee Garcia was bamboozled when a movie producer\ntransformed her five-second acting performance into part of a blasphemous video\nproclamation against the Prophet Mohammed. The producer \xe2\x80\x94 now in jail on\nunrelated matters \xe2\x80\x94 uploaded a trailer of the film, Innocence of Muslims, to\nYouTube. Millions of viewers soon watched it online, according to Garcia. News\noutlets credited the film as a source of violence in the Middle East. Garcia received\ndeath threats.\n320\n\n\x0cAsserting that she holds a copyright interest in her fleeting performance, Garcia\nsought a preliminary injunction requiring Google to remove the film from all of its\nplatforms, including YouTube. The district court denied the injunction, finding that\nGarcia did not establish likely success on the merits for her copyright claim. Nor did\nshe demonstrate that the injunction would prevent any alleged harm in light of the\nfilm\xe2\x80\x99s five-month presence on the Internet. A divided panel of our court reversed,\nlabeled her copyright claim as \xe2\x80\x9cfairly debatable,\xe2\x80\x9d but then entered a mandatory\ninjunction requiring Google to remove the film. That injunction was later limited to\nversions of the film featuring Garcia\xe2\x80\x99s performance.\nAs Garcia characterizes it, \xe2\x80\x9cthe main issue in this case involves the vicious frenzy\nagainst Ms. Garcia that the Film caused among certain radical elements of the\nMuslim community.\xe2\x80\x9d We are sympathetic to her plight. Nonetheless, the claim\nagainst Google is grounded in copyright law, not privacy, emotional distress, or tort\nlaw, and Garcia seeks to impose speech restrictions under copyright laws meant to\nfoster rather than repress free expression. Garcia\xe2\x80\x99s theory can be likened to\n\xe2\x80\x9ccopyright cherry picking,\xe2\x80\x9d which would enable any contributor from a costume\ndesigner down to an extra or best boy to claim copyright in random bits and pieces\nof a unitary motion picture without satisfying the requirements of the Copyright Act.\nPutting aside the rhetoric of Hollywood hijinks and the dissent\xe2\x80\x99s dramatics, this case\nmust be decided on the law.\nIn light of the Copyright Act\xe2\x80\x99s requirements of an \xe2\x80\x9coriginal work of authorship fixed\nin any tangible medium,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102(a), the mismatch between Garcia\xe2\x80\x99s\ncopyright claim and the relief sought, and the Copyright Office\xe2\x80\x99s rejection of\nGarcia\xe2\x80\x99s application for a copyright in her brief performance, we conclude that the\ndistrict court did not abuse its discretion in denying Garcia\xe2\x80\x99s request for the\npreliminary injunction. As a consequence, the panel\xe2\x80\x99s mandatory injunction against\nGoogle was unjustified and is dissolved upon publication of this opinion.\nBACKGROUND AND PROCEDURAL HISTORY\nIn July 2011, Cindy Lee Garcia responded to a casting call for a film titled Desert\nWarrior, an action-adventure thriller set in ancient Arabia. Garcia was cast in a\ncameo role, for which she earned $500. She received and reviewed a few pages of\nscript. Acting under a professional director hired to oversee production, Garcia\nspoke two sentences: \xe2\x80\x9cIs George crazy? Our daughter is but a child?\xe2\x80\x9d Her role was\nto deliver those lines and to \xe2\x80\x9cseem concerned.\xe2\x80\x9d\nGarcia later discovered that writer-director Mark Basseley Youssef (a.k.a. Nakoula\nBasseley Nakoula or Sam Bacile) had a different film in mind: an anti-Islam polemic\nrenamed Innocence of Muslims. The film, featuring a crude production, depicts the\nProphet Mohammed as, among other things, a murderer, pedophile, and homosexual.\nFilm producers dubbed over Garcia\xe2\x80\x99s lines and replaced them with a voice asking,\n\xe2\x80\x9cIs your Mohammed a child molester?\xe2\x80\x9d Garcia appears on screen for only five\nseconds.\nAlmost a year after the casting call, in June 2012, Youssef uploaded a 13-minute-and51-second trailer of Innocence of Muslims to YouTube, the video-sharing website\nowned by Google, Inc., which boasts a global audience of more than one billion\nvisitors per month. After it was translated into Arabic, the film fomented outrage\n321\n\n\x0cacross the Middle East, and media reports linked it to numerous violent protests.\nThe film also has been a subject of political controversy over its purported\nconnection to the September 11, 2012, attack on the United States Consulate in\nBenghazi, Libya.\nShortly after the Benghazi attack, an Egyptian cleric issued a fatwa against anyone\nassociated with Innocence of Muslims, calling upon the \xe2\x80\x9cMuslim Youth in America\nand Europe\xe2\x80\x9d to \xe2\x80\x9ckill the director, the producer, and the actors and everyone who\nhelped and promoted this film.\xe2\x80\x9d Garcia received multiple death threats.\nLegal wrangling ensued. Garcia asked Google to remove the film, asserting it was\nhate speech and violated her state law rights to privacy and to control her likeness.\nGarcia also sent Google five takedown notices under the Digital Millenium\nCopyright Act, 17 U.S.C. \xc2\xa7 512, claiming that YouTube\xe2\x80\x99s broadcast of Innocence of\nMuslims infringed her copyright in her \xe2\x80\x9caudio-visual dramatic performance.\xe2\x80\x9d Google\ndeclined to remove the film.\nOn September 19, 2012, Garcia first sued Google, Youssef, and other unnamed\nproduction assistants in Los Angeles Superior Court. Her complaint alleged a\ncompendium of torts and assorted wrongdoing under California law. As against\nGoogle, Garcia made claims for invasion of privacy, false light, and violating her\nright to publicity. She brought the same claims against Youssef and added fraud,\nunfair business practices, slander, and intentional infliction of emotional distress. The\nstate court denied Garcia\xe2\x80\x99s motion for a \xe2\x80\x9ctemporary restraining order and for an\norder to show cause re preliminary injunction,\xe2\x80\x9d because she had \xe2\x80\x9cnot shown a\nlikelihood of success on the merits.\xe2\x80\x9d On September 25, 2012, Garcia voluntarily\ndismissed her state court suit.\nOne day later, Garcia turned to federal court. She filed suit in the United States\nDistrict Court for the Central District of California and again named Google and\nYoussef as codefendants. Garcia alleged copyright infringement against both\ndefendants and revived her state law claims against Youssef for fraud, unfair business\npractices, libel, and intentional infliction of emotional distress.\nGarcia then moved for a temporary restraining order and for an order to show cause\non a preliminary injunction \xe2\x80\x94 but only on the copyright claim. She sought to bar\nGoogle from hosting Innocence of Muslims on YouTube or any other Google-run\nwebsite.\nOn November 30, 2012, the district court denied Garcia\xe2\x80\x99s motion for a preliminary\ninjunction. As an initial matter, the court concluded that \xe2\x80\x9cGarcia had not\ndemonstrated that the requested relief would prevent any alleged harm,\xe2\x80\x9d because, by\nthat point, the film trailer had been on the Internet for five months. Nor did Garcia\nestablish a likelihood of success on the merits. In particular, the district court found\nthat the nature of Garcia\xe2\x80\x99s copyright interest was unclear, and even if she could\nestablish such a copyright, she granted the film directors an implied license to\n\xe2\x80\x9cdistribute her performance as a contribution incorporated into the indivisible whole\nof the Film.\xe2\x80\x9d\nA divided panel of our court reversed. More than a year and a half after the film was\nfirst uploaded, the panel majority first issued a secret takedown order, giving Google\n\n322\n\n\x0ctwenty-four hours to remove all copies of Innocence of Muslims from YouTube and\nother Google-controlled platforms. The panel embargoed disclosure of the order\nuntil it issued its opinion. The panel later amended the order to allow YouTube to\npost any version of the film that did not include Garcia\xe2\x80\x99s performance.\nIn its later-issued opinion, the panel majority reversed the district court and granted\nGarcia\xe2\x80\x99s preliminary injunction. Garcia v. Google, Inc., 743 F.3d 1258, amended by\nGarcia v. Google, Inc., 766 F.3d 929 (9th Cir.2014). Despite characterizing Garcia\xe2\x80\x99s\ncopyright claim as \xe2\x80\x9cfairly debatable,\xe2\x80\x9d the panel majority nonetheless concluded that\nGarcia was likely to prevail on her copyright claim as to her individual performance\nin Innocence of Muslims. 766 F.3d at 935. In contrast to the district court\xe2\x80\x99s factual\nfinding of an implied license from Garcia to Youssef, the panel opinion held that the\nlicense ran in the opposite direction: \xe2\x80\x9cYoussef implicitly granted [Garcia] a license to\nperform his screenplay,\xe2\x80\x9d and that Garcia did not grant Youssef an implied license to\nincorporate her performance into the film. Id. at 935-38. Finally, the panel majority\nheld that, because of the death threats against her, Garcia had established irreparable\nharm and the equities and public interest favored an injunction. Id. at 938-40. The\nopinion did not address the First Amendment consequences of the mandatory\ntakedown injunction, beyond stating that the First Amendment does not protect\ncopyright infringement.\nJudge N.R. Smith dissented. He wrote that Garcia had not met the high burden\nrequired for a mandatory preliminary injunction because she was unlikely to succeed\non her copyright claim. Id. at 941 (N.R. Smith, J., dissenting). Specifically, Garcia was\nnot likely to prove her performance was a \xe2\x80\x9cwork,\xe2\x80\x9d nor would she likely meet the\ncopyright requirements of authorship and fixation, among other shortcomings with\nher claim. Id. at 946. In sum, \xe2\x80\x9cbecause the facts and law do not \xe2\x80\x98clearly favor\xe2\x80\x99 issuing\na preliminary injunction to Garcia, the district court did not abuse its discretion in\ndenying Garcia\xe2\x80\x99s requested relief.\xe2\x80\x9d Id. at 940.\nWe granted rehearing en banc.\nThe central question is whether the law and facts clearly favor Garcia\xe2\x80\x99s claim to a\ncopyright in her five-second acting performance as it appears in Innocence of\nMuslims. The answer is no. This conclusion does not mean that a plaintiff like\nGarcia is without options or that she couldn\xe2\x80\x99t have sought an injunction against\ndifferent parties or on other legal theories, like the right of publicity and defamation.\nUnder the Copyright Act, \xe2\x80\x9ccopyright protection subsists ... in original works of\nauthorship fixed in any tangible medium of expression ... [including] motion pictures.\xe2\x80\x9d\n17 U.S.C. \xc2\xa7 102(a). That fixation must be done \xe2\x80\x9cby or under the authority of the\nauthor.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101. Benchmarked against this statutory standard, the law does\nnot clearly favor Garcia\xe2\x80\x99s position.\nThe statute purposefully left \xe2\x80\x9cworks of authorship\xe2\x80\x9d undefined to provide for some\nflexibility. Nevertheless, several other provisions provide useful guidance. An\naudiovisual work is one that consists of \xe2\x80\x9ca series of related images which are\nintrinsically intended to be shown\xe2\x80\x9d by machines or other electronic equipment, plus\n\xe2\x80\x9caccompanying sounds.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101. In turn, a \xe2\x80\x9cmotion picture\xe2\x80\x9d is an\n\xe2\x80\x9caudiovisual work[ ] consisting of a series of related images which, when shown in\nsuccession, impart an impression of motion, together with accompanying sounds, if\n323\n\n\x0cany.\xe2\x80\x9d Id. These two definitions embody the work here: Innocence of Muslims is an\naudiovisual work that is categorized as a motion picture and is derivative of the script.\nGarcia is the author of none of this and makes no copyright claim to the film or to\nthe script. Instead, Garcia claims that her five-second performance itself merits\ncopyright protection.\nIn the face of this statutory scheme, it comes as no surprise that during this litigation,\nthe Copyright Office found that Garcia\xe2\x80\x99s performance was not a copyrightable work\nwhen it rejected her copyright application. The Copyright Office explained that its\n\xe2\x80\x9clongstanding practices do not allow a copyright claim by an individual actor or\nactress in his or her performance contained within a motion picture.\xe2\x80\x9d Thus, \xe2\x80\x9cfor\ncopyright registration purposes, a motion picture is a single integrated work....\nAssuming Ms. Garcia\xe2\x80\x99s contribution was limited to her acting performance, we\ncannot register her performance apart from the motion picture.\xe2\x80\x9d\nWe credit this expert opinion of the Copyright Office \xe2\x80\x94 the office charged with\nadministration and enforcement of the copyright laws and registration. The\nCopyright Office\xe2\x80\x99s well-reasoned position reflects a body of experience and\ninformed judgment to which courts and litigants may properly resort for guidance.\nIn analyzing whether the law clearly favors Garcia, Aalmuhammed v. Lee, 202 F.3d\n1227 (9th Cir.2000), provides a useful foundation. There, we examined the meaning\nof \xe2\x80\x9cwork\xe2\x80\x9d as the first step in analyzing joint authorship of the movie Malcolm X.\nThe Copyright Act provides that when a work is \xe2\x80\x9cprepared by two or more authors\nwith the intention that their contributions be merged into inseparable or\ninterdependent parts of a unitary whole,\xe2\x80\x9d the work becomes a \xe2\x80\x9cjoint work\xe2\x80\x9d with two\nor more authors. 17 U.S.C. \xc2\xa7 101 (emphasis added). Garcia unequivocally disclaims\njoint authorship of the film.\nIn Aalmuhammed, we concluded that defining a \xe2\x80\x9cwork\xe2\x80\x9d based upon \xe2\x80\x9csome minimal\nlevel of creativity or originality ... would be too broad and indeterminate to be useful.\xe2\x80\x9d\n202 F.3d at 1233 (internal quotation marks omitted).9\nFootnote 9: Although the ultimate issue in Aalmuhammed pertained to joint authorship, the definition of \xe2\x80\x9cwork\xe2\x80\x9d\nwas essential, just as in our case, to the analysis. 202 F.3d at 1233-34; see also Richlin v. Metro-Goldwyn-Mayer Pictures,\nInc., 531 F.3d 962, 968 (9th Cir. 2008) (relying on Aalmuhammed in reasoning that to determine authorship, the\ncourt must first determine the \xe2\x80\x9cwork\xe2\x80\x9d to be examined).\n\nOur animating concern was that this definition of \xe2\x80\x9cwork\xe2\x80\x9d would fragment copyright\nprotection for the unitary film Malcolm X into many little pieces:\nSo many people might qualify as an \xe2\x80\x9cauthor\xe2\x80\x9d if the question were limited to whether\nthey made a substantial creative contribution that that test would not distinguish one\nfrom another. Everyone from the producer and director to casting director,\ncostumer, hairstylist, and \xe2\x80\x9cbest boy\xe2\x80\x9d gets listed in the movie credits because all of\ntheir creative contributions really do matter.\n\nId.\nGarcia\xe2\x80\x99s theory of copyright law would result in the legal morass we warned against\nin Aalmuhammed \xe2\x80\x94 splintering a movie into many different \xe2\x80\x9cworks,\xe2\x80\x9d even in the\nabsence of an independent fixation. Simply put, as Google claimed, it makes Swiss\ncheese of copyrights.\n\n324\n\n\x0cTake, for example, films with a large cast \xe2\x80\x94 the proverbial \xe2\x80\x9ccast of thousands\xe2\x80\x9d \xe2\x80\x94\nsuch as Ben-Hur or Lord of the Rings. The silent epic Ben-Hur advertised a cast of\n125,000 people. In the Lord of the Rings trilogy, 20,000 extras tramped around\nMiddle-Earth alongside Frodo Baggins (played by Elijah Wood). Treating every\nacting performance as an independent work would not only be a logistical and\nfinancial nightmare, it would turn cast of thousands into a new mantra: copyright of\nthousands.\nThe dissent spins speculative hypotheticals about copyright protection for book\nchapters, movie outtakes, baseball games, and Jimi Hendrix concerts. This hyperbole\nsounds a false alarm. Substituting moral outrage and colorful language for legal\nanalysis, the dissent mixes and matches copyright concepts such as collective works,\nderivative works, the requirement of fixation, and sound recordings. The statutory\ndefinitions and their application counsel precision, not convolution. See, e.g., 17\nU.S.C. \xc2\xa7\xc2\xa7 101, 103, 114, 201. The citation to Effects Associates, Inc. v. Cohen, 908 F.2d\n555 (9th Cir.1990) (Kozinski, J.), is particularly puzzling. There, neither party\ndisputed the plaintiff\xe2\x80\x99s copyright, and the plaintiff independently fixed the specialeffects footage and licensed it to the filmmakers.\nThe reality is that contracts and the work-made-for-hire doctrine govern much of the\nbig-budget Hollywood performance and production world. Absent these formalities,\ncourts have looked to implied licenses. Indeed, the district court found that Garcia\ngranted Youssef just such an implied license to incorporate her performance into the\nfilm. But these legal niceties do not necessarily dictate whether something is\nprotected by copyright, and licensing has its limitations. As filmmakers warn, lowbudget films rarely use licenses. Even if filmmakers diligently obtain licenses for\neveryone on set, the contracts are not a panacea. Third-party content distributors,\nlike YouTube and Netflix, won\xe2\x80\x99t have easy access to the licenses; litigants may\ndispute their terms and scope; and actors and other content contributors can\nterminate licenses after thirty five years. See 17 U.S.C. \xc2\xa7 203(a)(3). Untangling the\ncomplex, difficult-to-access, and often phantom chain of title to tens, hundreds, or\neven thousands of standalone copyrights is a task that could tie the distribution chain\nin knots. And filming group scenes like a public parade, or the 1963 March on\nWashington, would pose a huge burden if each of the thousands of marchers could\nclaim an independent copyright.\nGarcia\xe2\x80\x99s copyright claim faces yet another statutory barrier: She never fixed her\nacting performance in a tangible medium, as required by 17 U.S.C. \xc2\xa7 101 (\xe2\x80\x9cA work is\n\xe2\x80\x98fixed\xe2\x80\x99 in a tangible medium of expression when its embodiment in a copy or\nphonorecord, by or under the authority of the author, is sufficiently permanent or stable to\npermit it to be perceived, reproduced, or otherwise communicated for a period of\nmore than transitory duration.\xe2\x80\x9d) (emphasis added). According to the Supreme Court,\n\xe2\x80\x9cthe author is the party who actually creates the work, that is, the person who\ntranslates an idea into a fixed, tangible expression entitled to copyright protection.\xe2\x80\x9d\nCommunity for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989). Garcia did\nnothing of the sort.\nFor better or for worse, Youssef and his crew \xe2\x80\x9cfixed\xe2\x80\x9d Garcia\xe2\x80\x99s performance in the\ntangible medium, whether in physical film or in digital form. However one might\ncharacterize Garcia\xe2\x80\x99s performance, she played no role in fixation. On top of this,\n325\n\n\x0cGarcia claims that she never agreed to the film\xe2\x80\x99s ultimate rendition or how she was\nportrayed in Innocence of Muslims, so she can hardly argue that the film or her\ncameo in it was fixed \xe2\x80\x9cby or under [her] authority.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101.\nIn sum, the district court committed no error in its copyright analysis. Issuance of\nthe mandatory preliminary injunction requires more than a possible or fairly\ndebatable claim; it requires a showing that the law clearly favors Garcia. Because\nneither the Copyright Act nor the Copyright Office\xe2\x80\x99s interpretation supports\nGarcia\xe2\x80\x99s claim, this is a hurdle she cannot clear. \xe2\x80\xa6\nAt this stage of the proceedings, we have no reason to question Garcia\xe2\x80\x99s claims that\nshe was duped by an unscrupulous filmmaker and has suffered greatly from her\ndisastrous association with the Innocence of Muslims film. Nonetheless, the district\ncourt did not abuse its discretion when it denied Garcia\xe2\x80\x99s motion for a preliminary\ninjunction under the copyright laws.\nCircuit Judge Kozinski, dissenting:\nGarcia\xe2\x80\x99s dramatic performance met all of the requirements for copyright protection:\nIt was copyrightable subject matter, it was original and it was fixed at the moment it\nwas recorded. So what happened to the copyright? At times, the majority says that\nGarcia\xe2\x80\x99s performance was not copyrightable at all. And at other times, it seems to say\nthat Garcia just didn\xe2\x80\x99t do enough to gain a copyright in the scene. Either way, the\nmajority is wrong and makes a total mess of copyright law, right here in the\nHollywood Circuit. In its haste to take Internet service providers off the hook for\ninfringement, the court today robs performers and other creative talent of rights\nCongress gave them. I won\xe2\x80\x99t be a party to it.\nI\nYoussef handed Garcia a script. Garcia performed it. Youssef recorded Garcia\xe2\x80\x99s\nperformance on video and saved the clip. Until today, I understood that the rights in\nsuch a performance are determined according to elementary copyright principles: An\n\xe2\x80\x9coriginal work[] of authorship,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102(a), requires only copyrightable\nsubject matter and a \xe2\x80\x9cminimal degree of creativity.\xe2\x80\x9d Feist Publications v. Rural Telephone,\n499 U.S. 340, 345, (1991). The work is \xe2\x80\x9cfixed\xe2\x80\x9d when it is \xe2\x80\x9csufficiently permanent or\nstable to permit it to be perceived, reproduced, or otherwise communicated for a\nperiod of more than transitory duration.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101. And at that moment, the\n\xe2\x80\x9cauthor or authors of the work\xe2\x80\x9d instantly and automatically acquire a copyright\ninterest in it. 17 U.S.C. \xc2\xa7 201(a). This isn\xe2\x80\x99t exactly String Theory; more like Copyright\n101.\nGarcia\xe2\x80\x99s performance met these minimal requirements; the majority doesn\xe2\x80\x99t contend\notherwise. The majority nevertheless holds that Garcia\xe2\x80\x99s performance isn\xe2\x80\x99t a \xe2\x80\x9cwork,\xe2\x80\x9d\napparently because it was created during the production of a later-assembled film,\nInnocence of Muslims. But if you say something is not a work, it means that it isn\xe2\x80\x99t\ncopyrightable by anyone. Under the majority\xe2\x80\x99s definition of \xe2\x80\x9cwork,\xe2\x80\x9d no one (not\neven Youssef) can claim a copyright in any part of Garcia\xe2\x80\x99s performance, even\nthough it was recorded several months before Innocence of Muslims was assembled.\nInstead, Innocence of Muslims \xe2\x80\x94 the ultimate film \xe2\x80\x94 is the only thing that can be a\n326\n\n\x0c\xe2\x80\x9cwork.\xe2\x80\x9d If this is what my colleagues are saying, they are casting doubt on the\ncopyrightability of vast swaths of material created during production of a film or\nother composite work.\nThe implications are daunting. If Garcia\xe2\x80\x99s scene is not a work, then every take of\nevery scene of, say, Lord of the Rings is not a work, and thus not protected by\ncopyright, unless and until the clips become part of the final movie. If some\ndastardly crew member were to run off with a copy of the Battle of Morannon, the\ndastard would be free to display it for profit until it was made part of the final movie.\nAnd, of course, the take-outs, the alternative scenes, the special effects never used, all\nof those things would be fair game because none of these things would be \xe2\x80\x9cworks\xe2\x80\x9d\nunder the majority\xe2\x80\x99s definition. And what about a draft chapter of a novel? Is there\nno copyright in the draft chapter unless it gets included in the published book? Or if\npart of the draft gets included, is there no copyright in the rest of it?\nThis is a remarkable proposition, for which the majority provides remarkably little\nauthority. Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir.2000), the only case that the\nmajority cites, says just the opposite. In Aalmuhammed, we considered a claim by a\ncontributor to the movie Malcolm X that he was a joint author of the entire movie.\nEveryone in Aalmuhammed agreed that the relevant \xe2\x80\x9cwork\xe2\x80\x9d was Malcolm X. The\nonly question was whether the contributor was a joint author of that work. We went\nout of our way to emphasize that joint authorship of a movie is a \xe2\x80\x9cdifferent question\xe2\x80\x9d\nfrom whether a contribution to the movie can be a \xe2\x80\x9cwork\xe2\x80\x9d under section 102(a). Id.\nat 1233. And we clearly stated that a contribution to a movie can be copyrightable\n(and thus can be a \xe2\x80\x9cwork\xe2\x80\x9d). Id. at 1232.\nThe majority\xe2\x80\x99s newfangled definition of \xe2\x80\x9cwork\xe2\x80\x9d is directly contrary to a quartercentury-old precedent that has never been questioned, Effects Associates, Inc. v. Cohen,\n908 F.2d 555 (9th Cir.1990). There, we held that a company that created special\neffects footage during film production retained a copyright interest in the footage\neven though it became part of the film. The majority tries to distinguish Effects\nAssociates by arguing that the footage there was a standalone work that was\nseparately fixed and incorporated into a film. But Garcia\xe2\x80\x99s performance was also\n\xe2\x80\x9cseparately fixed and incorporated into\xe2\x80\x9d Innocence of Muslims. Why then are the\nseven shots \xe2\x80\x9cfeaturing great gobs of alien yogurt oozing out of a defunct factory\xe2\x80\x9d\ninterspersed in The Stuff, any more a \xe2\x80\x9cstandalone work\xe2\x80\x9d than Garcia\xe2\x80\x99s performance?\nYoussef wasn\xe2\x80\x99t required to use any part of Garcia\xe2\x80\x99s performance in the film; he could\nhave sold the video clip to someone else. The clip might not have had much\ncommercial value, but neither did the special effects scenes in Effects Associates.\nNothing in the Copyright Act says that special effects scenes are \xe2\x80\x9cworks\xe2\x80\x9d entitled to\ncopyright protection but other scenes are not. And what about scenes that have\nactors and special effects? Are those scenes entitled to copyright protection (as in\nEffects Associates), or are they denied copyright protection like Garcia\xe2\x80\x99s scene?\nII\nA.\nThe majority also seems to hold that Garcia is not entitled to copyright protection\nbecause she is not an author of the recorded scene. According to the majority,\n\n327\n\n\x0cGarcia can\xe2\x80\x99t be an author of her own scene because she played no role in her\nperformance\xe2\x80\x99s fixation.\nBut a performer need not operate the recording equipment to be an author of his\nown performance. See House Report at 56 (1976); Senate Report at 53-54 (1975).\nWithout Garcia\xe2\x80\x99s performance, all that existed was a script. To convert the script into\na video, there needed to be both an actor physically performing it and filmmakers\nrecording the performance. Both kinds of activities can result in copyrightable\nexpression. Garcia\xe2\x80\x99s performance had at least \xe2\x80\x9csome minimal degree of creativity\xe2\x80\x9d\napart from the script and Youssef\xe2\x80\x99s direction. See Feist, 499 U.S. at 345. One\xe2\x80\x99s\n\xe2\x80\x9cpersonality always contains something unique. It expresses its singularity even in\nhandwriting, and a very modest grade of art has in it something which is one man\xe2\x80\x99s\nalone.\xe2\x80\x9d Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250 (1903). To dispute\nthis is to claim that Gone With the Wind would be the same movie if Rhett Butler\nwere played by Peter Lorre.\nActors usually sign away their rights when contracting to do a movie, but Garcia\ndidn\xe2\x80\x99t and she wasn\xe2\x80\x99t Youssef\xe2\x80\x99s employee. I\xe2\x80\x99d therefore find that Garcia acquired a\ncopyright in her performance the moment it was fixed. When dealing with material\ncreated during production of a film or other composite work, the absence of a\ncontract always complicates things. See Effects Associates, 908 F.2d at 556\n(\xe2\x80\x9cMoviemakers do lunch, not contracts.\xe2\x80\x9d). Without a contract the parties are left\nwith whatever rights the copyright law gives them. It\xe2\x80\x99s not our job to take away from\nperformers rights Congress gave them. Did Jimi Hendrix acquire no copyright in the\nrecordings of his concerts because he didn\xe2\x80\x99t run the recorder in addition to playing\nthe guitar? Garcia may not be as talented as Hendrix \xe2\x80\x94 who is? \xe2\x80\x94 but she\xe2\x80\x99s no less\nentitled to the protections of the Copyright Act.\nB.\nWhile the Copyright Office claims that its \xe2\x80\x9clongstanding practices\xe2\x80\x9d don\xe2\x80\x99t recognize\nGarcia\xe2\x80\x99s copyright interest, it doesn\xe2\x80\x99t seem that the Register of Copyrights got the\nmemo. The Register was a member of the U.S. delegation that signed the Beijing\nTreaty on Audiovisual Performances. See U.S. Copyright Office, Annual Report of\nthe Register of Copyrights 8 (2012). The Treaty would recognize Garcia\xe2\x80\x99s rights in\nher performance. It provides that \xe2\x80\x9cperformers\xe2\x80\x9d have the \xe2\x80\x9cexclusive right of\nauthorizing ... the fixation of their unfixed performances,\xe2\x80\x9d and \xe2\x80\x9creproduction of\ntheir performances fixed in audiovisual fixations, in any manner or form.\xe2\x80\x9d World\nIntellectual Property Organization, Beijing Treaty on Audiovisual Performances, Art. 6(ii), 7\n(2012).\nThe Patent Office, which led the delegation, states that U.S. law is \xe2\x80\x9cgenerally\ncompatible\xe2\x80\x9d with the Treaty, as \xe2\x80\x9cactors and musicians are considered to be \xe2\x80\x98authors\xe2\x80\x99\nof their performances providing them with copyright rights.\xe2\x80\x9d U.S. Patent &\nTrademark Office, Background and Summary of the 2012 WIPO Audiovisual\nPerformances Treaty 2 (2012). Although the Copyright Office hasn\xe2\x80\x99t issued a\nstatement of compatibility, it\xe2\x80\x99s hard to believe that it would sign on if it believed that\nthe Treaty\xe2\x80\x99s key provisions are inconsistent with U.S. copyright law. In fact, the\nCopyright Office praised the Treaty as \xe2\x80\x9can important step forward in protecting the\n\n328\n\n\x0cperformances of television and film actors throughout the world.\xe2\x80\x9d Except in the\nNinth Circuit.\nThe Copyright Office\xe2\x80\x99s position is thus inconsistent at best. And, in any event,\nneither the Copyright Office\xe2\x80\x99s reasoning nor the authority it relies on in its letter to\nGarcia fare any better than the majority\xe2\x80\x99s. The Copyright Office would refuse\ncopyright registration to an actor like Garcia because \xe2\x80\x9can actor or an actress in a\nmotion picture is either a joint author in the entire work or, as most often is the case,\nis not an author at all by virtue of a work made for hire agreement.\xe2\x80\x9d However,\nGarcia isn\xe2\x80\x99t a joint author of the entire movie and didn\xe2\x80\x99t sign any agreements. She\ndoesn\xe2\x80\x99t fit into either category. Like the majority, the Copyright Office would wish\nthis problem away by refusing registration unless the copyright claimant personally\nrecorded his performance. But nothing in the legislative history relied on by the\nCopyright Office (which concerned joint authorship of an entire film) suggests that a\nnon-employee doesn\xe2\x80\x99t retain any copyright interest in a video clip of his acting\nperformance because it\xe2\x80\x99s recorded by the film\xe2\x80\x99s producer. See House Report at 120.\nIII\nThe harm the majority fears would result from recognizing performers\xe2\x80\x99 copyright\nclaims in their fixed, original expression is overstated. The vast majority of copyright\nclaims by performers in their contributions are defeated by a contract and the work\nfor hire doctrine. And most of the performers that fall through the cracks would be\nfound to have given an implied license to the film\xe2\x80\x99s producers to use the\ncontribution in the ultimate film. See Effects Associates, 908 F.2d at 558. Very few\nperformers would be left to sue at all, and the ones that remain would have to find\nsuing worth their while. They wouldn\xe2\x80\x99t be able to claim the valuable rights of joint\nauthorship of the movie, such as an undivided share in the movie or the right to\nexploit the movie for themselves. Rather, their copyright claims would be limited to\nthe original expression they created. See Aalmuhammed, 202 F.3d at 1232; Effects\nAssociates, 908 F.2d at 559. Which is why filmmaking hasn\xe2\x80\x99t ground to a halt even\nthough we held a quarter-century ago that \xe2\x80\x9cwhere a non-employee contributes to a\nbook or movie, ... the exclusive rights of copyright ownership vest in the creator of\nthe contribution, unless there is a written agreement to the contrary.\xe2\x80\x9d Effects Associates,\n908 F.2d at 557.\nRegardless, the Supreme Court has reminded us that \xe2\x80\x9cspeculation about future\nharms is no basis for [courts] to shrink authorial rights.\xe2\x80\x9d N.Y. Times Co. v. Tasini, 533\nU.S. 483, 505-06 (2001). In Tasini, freelance authors argued that the inclusion in\ndatabases of their articles that originally appeared in periodicals infringed their\ncopyrights in the works. Publishers warned that \xe2\x80\x9c\xe2\x80\x98devastating\xe2\x80\x99 consequences,\xe2\x80\x9d\nincluding massive damages awards, would result if the Court were to hold for the\nfreelancers. The Court nonetheless held for the freelancers, turning back the parade\nof horribles deployed by the publishers. The Court explained that there are\n\xe2\x80\x9cnumerous models for distributing copyrighted works and remunerating authors for\ntheir distribution.\xe2\x80\x9d Tasini is a powerful reminder that movie producers, publishers\nand distributors will always claim that the sky is falling in cases that might recognize\nan individual contributor\xe2\x80\x99s copyright interest in material he created. They will always\nsay, as Google says here, that holding in the contributor\xe2\x80\x99s favor will make \xe2\x80\x9cSwiss\ncheese\xe2\x80\x9d of copyrights.\n329\n\n\x0cBut under our copyright law, the creators of original, copyrightable material\nautomatically acquire a copyright interest in the material as soon as it is fixed. There\xe2\x80\x99s\nno exception for material created during production of a film or other composite\nwork. When modern works, such as films or plays, are produced, contributors will\noften create separate, copyrightable works as part of the process. Our copyright law\nsays that the copyright interests in this material vest initially with its creators, who\nwill then have leverage to obtain compensation by contract. The answer to the\n\xe2\x80\x9cSwiss cheese\xe2\x80\x9d bugbear isn\xe2\x80\x99t for courts to limit who can acquire copyrights in order\nto make life simpler for producers and internet service providers. It\xe2\x80\x99s for the parties\nto allocate their rights by contract. See Effects Associates, 908 F.2d at 557. Google\nmakes oodles of dollars by enabling its users to upload almost any video without prescreening for potential copyright infringement. Google\xe2\x80\x99s business model, like that of\nthe database owners in Tasini, assumes the risk that a user\xe2\x80\x99s upload infringes\nsomeone else\xe2\x80\x99s copyright, and that it may have to take corrective action if a copyright\nholder comes forward.\nThe majority credits the doomsday claims at the expense of property rights that\nCongress created. Its new standard artificially shrinks authorial rights by holding that\na performer must personally record his creative expression in order to retain any\ncopyright interest in it, speculating that a contrary rule might curb filmmaking and\nburden the internet. But our injunction has been in place for over a year; reports of\nthe Internet\xe2\x80\x99s demise have been greatly exaggerated. For the reasons stated here and\nin the majority opinion in Garcia v. Google, Inc., 766 F.3d 929, 933-36 (9th Cir.2014), I\nconclude that Garcia\xe2\x80\x99s copyright claim is likely to succeed. I\xe2\x80\x99d also find that Garcia\nhas made an ample showing of irreparable harm. It\xe2\x80\x99s her life that\xe2\x80\x99s at stake.\nNotes and questions\n(1) In Garcia v. Google, Inc., 786 F. 3d 733 (9th Cir. 2015) (en banc), the Ninth Circuit en banc\nagreed with the position of the Copyright Office that a motion picture is a single integrated\nwork and that there is no scope for a separately copyrighted simultaneously created subwork consisting of an actor\xe2\x80\x99s performance. The Ninth Circuit majority argued that to hold\notherwise would encumber the ordinary motion picture in a tangle of hundreds if not\nthousands of fractured ownership claims. The essence of majority opinion was its analysis (at\n742) that:\nGarcia\xe2\x80\x99s theory of copyright law would result in a legal morass, making Swiss cheese\nof copyrights.\n\nThe court did not consider the work made for hire doctrine or implied license to be a\nsufficient solution to the problem of fractured ownership in this context.\n(2) Consider an iconic moment in cinema such as the scene in Dirty Harry where Clint\nEastwood says \xe2\x80\x9cSo you gotta ask yourself this question: \xe2\x80\x98Do I feel lucky?\xe2\x80\x99 Well, do ya, punk?\xe2\x80\x9d\nThe scene is memorable, and Eastwood\xe2\x80\x99s performance is original to him, even if he did not\nwrite the dialogue, and quite arguably displays a modicum of creativity. Does it make sense\nto think of this isolated fragment as a distinct copyrighted work within a larger copyrighted\nwork?\n(3) The Ninth Circuit also held that even if Garcia\xe2\x80\x99s performance was potentially a separate\ncopyright work, she never fixed her acting performance in a tangible medium, as required by\n330\n\n\x0c\xc2\xa7 102(a) and defined in \xc2\xa7 101. In the majority\xe2\x80\x99s view, although her performance was fixed, it\nwas not fixed under her authority because she had no control over that part of the process. Is\nthe majority stretching when it says that Garcia\xe2\x80\x99s performance was not fixed under her\nauthority? She voluntarily performed for the camera, why isn\xe2\x80\x99t that enough?\n(4) In dissent, Judge Kozinski noted that under the Beijing Treaty on Audiovisual Performances\n\xe2\x80\x9cperformers\xe2\x80\x9d have the \xe2\x80\x9cexclusive right of authorizing the fixation of their unfixed\nperformances,\xe2\x80\x9d and \xe2\x80\x9creproduction of their performances fixed in audiovisual fixations, in\nany manner or form.\xe2\x80\x9d See World Intellectual Property Organization, Beijing Treaty on\nAudiovisual Performances, Art. 6(ii), 7 (2012). Such international treaties do not have direct\neffect under United States law, but Judge Kozinski argued that the court should have given\nsome weight to representations by the U.S. Patent and Trademark Office that United States\nlaw is \xe2\x80\x9cgenerally compatible\xe2\x80\x9d with the Treaty, as \xe2\x80\x9cactors and musicians are considered to be\n\xe2\x80\x98authors\xe2\x80\x99 of their performances providing them with copyright rights.\xe2\x80\x9d See U.S. Patent &\nTrademark Office, Background and Summary of the 2012 WIPO Audiovisual Performances\nTreaty 2 (2012). Is this argument convincing?\n(5) In his dissent, Judge Kozinski asks a series of questions about the disappearing copyright\nunder the majority\xe2\x80\x99s theory. At 749, he says:\nGarcia\xe2\x80\x99s dramatic performance met all of the requirements for copyright protection:\nIt was copyrightable subject matter, it was original and it was fixed at the moment it\nwas recorded. So what happened to the copyright?\n\nAnd later at 750, he continued:\nAnd what about a draft chapter of a novel? Is there no copyright in the draft chapter\nunless it gets included in the published book? Or if part of the draft gets included, is\nthere no copyright in the rest of it?\n\nDoes he have a point?\n(6) Judge Kozinski\xe2\x80\x99s embrace of pop culture, relaxed writing style, and punchy rhetoric make\nhis decisions great fodder for textbooks. Kozinski is the author of many excellent and\nquotable opinions. However, we should be wary of lionizing judges and Supreme Court\njustices simply because we appreciate their writing, or their politics. Judge Kozinski\nannounced his retirement on December 18, 2017, after a growing number of allegations of\nimproper sexual conduct and abusive practices toward law clerks.81 For all his swaggering\nopinions, that is his legacy.\n16 Casa Duse, LLC v. Merkin, 791 F. 3d 247 (2nd Cir. 2015)\nIn September 2010, Robert Krakovski, acting at all relevant times as the principal of the a film-production company 16\nCasa Duse, purchased the rights to a screenplay entitled Heads Up from the work\xe2\x80\x99s author, Ben Carlin. Krakovski hired\nAlex Merkn to direct a short film shot over three days of filming. Merkn, the director was not an employee and, in spite of\nlong negotiations, the parties ultimately never agreed to a work for hire contract. The parties agreed that the director was\nnot a co-author of the final film, but the director claimed both a copyright interest in his directorial contributions to the\nfinished film and a separate copyright interest in the entire local footage shot under his direction. The relationship ended\npoorly.\n\nOpinion by Circuit Judge Sack\nBACKGROUND\n81\n\nThe details are set out in a Wikipedia entry, among other places.\n\n331\n\n\x0c\xe2\x80\xa6 In January 2012, as the dispute continued to simmer, Merkin registered a\ncopyright in the film with the United States Copyright Office. The title of the\nregistration was \xe2\x80\x9cRaw footage for film \xe2\x80\x98Heads Up\xe2\x80\x99 Disks 1-4,\xe2\x80\x9d reflecting the fact that\nMerkin had copied the footage from the hard drive onto four DVDs. The\nregistration listed the type of work as \xe2\x80\x9cMotion Picture\xe2\x80\x9d and asserted that Merkin was\nits sole author. Merkin did not obtain Casa Duse\xe2\x80\x99s permission to register the\ncopyright, and Krakovski was unaware of the registration.\nIn March 2012, Krakovski began submitting Heads Up to film festivals and making\nplans to publicize the film. To that end, he scheduled an invitation-only screening for\napproximately seventy persons at the New York Film Academy (\xe2\x80\x9cNYFA\xe2\x80\x9d) on April\n18, 2012. Krakovski also organized a reception to follow at a nearby restaurant, City\nCrab, for which he paid a non-refundable deposit of $1,956.58.\nOn the date of the event, the NYFA chairperson contacted Krakovski to tell him\nthat Merkin\xe2\x80\x99s attorney (Reichman) had threatened the NYFA with a cease-and-desist\norder to prevent the screening from proceeding. According to Reichman, it was\nMerkin \xe2\x80\x94 not Reichman \xe2\x80\x94 who contacted the NYFA and mentioned a cease and\ndesist \xe2\x80\x9cnotice,\xe2\x80\x9d not an order, at which point the NYFA contacted Reichman. In any\nevent, the NYFA cancelled the screening in response to these threats, and Casa Duse\nlost its restaurant deposit. Casa Duse subsequently missed at least four film festival\nsubmission deadlines as a result of the dispute. Merkin did not return the hard drive,\nthe DVDs, or the raw footage in any form.\nCasa Duse brought suit against Merkin and his limited liability company, A. Merkin\nEntertainment, LLC, (\xe2\x80\x9cAME\xe2\x80\x9d) in May 2012 seeking, inter alia, a temporary\nrestraining order and injunction enjoining Merkin from interfering with its use of the\nfilm.\nDISCUSSION\nThis case requires us to answer a question of first impression in this Circuit: May a\ncontributor to a creative work whose contributions are inseparable from, and\nintegrated into, the work maintain a copyright interest in his or her contributions\nalone? We conclude that, at least on the facts of the present case, he or she may not.\nMerkin argues that the district court erred in concluding, first, that Merkin could not\ncopyright his creative contributions to the film, and, second, that he lacks copyright\nownership of the \xe2\x80\x9craw film footage.\xe2\x80\x9d Casa Duse responds that individual\ncontributions to a film, such as direction, are not themselves subject to copyright\nprotection and that Casa Duse retains sole copyright ownership of the film and the\n\xe2\x80\x9craw footage,\xe2\x80\x9d to the extent the two are distinguishable for copyright purposes.\nTwo points merit mention at the outset.\nFirst, the parties agree that Merkin is not a \xe2\x80\x9cjoint author\xe2\x80\x9d or \xe2\x80\x9cco-author\xe2\x80\x9d of the film\nunder the 1976 Copyright Act. See 17 U.S.C. \xc2\xa7 101 (\xe2\x80\x9cA \xe2\x80\x98joint work\xe2\x80\x99 is a work\nprepared by two or more authors with the intention that their contributions be\nmerged into inseparable or interdependent parts of a unitary whole.\xe2\x80\x9d). If he were,\nthat fact would likely prohibit his interference with Casa Duse\xe2\x80\x99s use and display of\nthe film, because one joint owner cannot be liable for copyright infringement to\nanother joint owner. A co-authorship claimant in our Circuit generally must show\n332\n\n\x0cthat \xe2\x80\x9ceach of the putative co-authors (1) made independently copyrightable\ncontributions to the work; and (2) fully intended to be co-authors.\xe2\x80\x9d Thomson v. Larson,\n147 F.3d 195, 200 (2d Cir.1998) (citing Childress v. Taylor, 945 F.2d 500, 507-08 (2d\nCir.1991)). Even assuming the first prong3 is met here, we agree with the district\ncourt that the record uniformly establishes that Casa Duse, through its principal,\nKrakovski, never intended to share authorship of the film with Merkin or anyone\nelse, and there is also considerable evidence that Merkin never intended to be Casa\nDuse\xe2\x80\x99s co-author.\xe2\x80\x9d4\nFootnote 3: It seems likely that by \xe2\x80\x9ccopyrightable\xe2\x80\x9d the Childress court meant only to say that the coauthor\xe2\x80\x99s\ncontribution must be the product of authorship, i.e., expression. The court did not mean that in order to be a\ncoauthor one must be able to obtain a copyright on his or her separate contribution, or even that such would be\npossible. See 2 Patry on Copyright \xc2\xa7 5:15\nFootnote 4: We noted in Thomson that \xe2\x80\x9cthe test of co-authorship intent will vary depending on the specific factual\ncircumstances.\xe2\x80\x9d Thomson, 147 F.3d at 201 n. 16. We need not determine the ways in which the test might vary in\nthe circumstances presented by this case, because the parties disclaim joint authorship.\n\nSecond, the parties also agree that Merkin\xe2\x80\x99s efforts cannot be deemed a \xe2\x80\x9cwork made\nfor hire.\xe2\x80\x9d See 17 U.S.C. \xc2\xa7 201(b) (\xe2\x80\x9cThe ... person for whom the work[-for-hire] was\nprepared is considered the author ... and, unless the parties have expressly agreed\notherwise in a written instrument signed by them, owns all of the rights comprised in\nthe copyright.\xe2\x80\x9d). A work-for-hire arrangement requires:\n(1) a work prepared by an employee within the scope of his or her employment; or\n(2) a work specially ordered or commissioned for use as a contribution to a\ncollective work, as a part of a motion picture[, or for other specified purposes] ... if\nthe parties expressly agree in a written instrument signed by them that the work shall\nbe considered a work made for hire.\n\nId. \xc2\xa7 101. Merkin was not Casa Duse\xe2\x80\x99s employee and the parties failed to execute a\nwritten agreement.\nA. Copyright in Creative Contributions to a Work\n\xe2\x80\x9cCopyright protection subsists ... in original works of authorship fixed in any tangible\nmedium of expression, now known or later developed, from which they can be\nperceived, reproduced, or otherwise communicated, either directly or with the aid of\na machine or device.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102(a). We have never decided whether an\nindividual\xe2\x80\x99s non-de minimis creative contributions to a work in which copyright\nprotection subsists, such as a film, fall within the subject matter of copyright, when\nthe contributions are inseparable from the work and the individual is neither the sole\nnor a joint author of the work and is not a party to a work-for-hire arrangement. See\nThomson, 147 F.3d at 206 (acknowledging open question and resolving case on\nalternative grounds). We answer that question in the negative on the facts of the\npresent case, finding that the Copyright Act\xe2\x80\x99s terms, structure, and history support\nthe conclusion that Merkin\xe2\x80\x99s contributions to the film do not themselves constitute a\n\xe2\x80\x9cwork of authorship\xe2\x80\x9d amenable to copyright protection.\nThe Copyright Act does not define the term \xe2\x80\x9cworks of authorship.\xe2\x80\x9d Section 102 of\nthe Act, however, lists examples of categories of \xe2\x80\x9cworks of authorship,\xe2\x80\x9d including\n\xe2\x80\x9cliterary works,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102(a)(1), \xe2\x80\x9cmusical works,\xe2\x80\x9d id. \xc2\xa7 102(a)(2), and \xe2\x80\x94 most\nrelevant here \xe2\x80\x94 \xe2\x80\x9cmotion pictures and other audiovisual works,\xe2\x80\x9d id. \xc2\xa7 102(a)(6). This\nlist is not exhaustive, but as we have previously observed, categories of creative\nefforts that are not \xe2\x80\x9csimilar [] or analogous to any of the listed categories\xe2\x80\x9d are\n333\n\n\x0cunlikely to fall within the subject matter of federal copyright protection. National\nBasketball Association v. Motorola, Inc., 105 F.3d 841, 846 (2d Cir.1997) (concluding that\n\xe2\x80\x9cbasketball games do not fall within the subject matter of federal copyright\nprotection because they do not constitute \xe2\x80\x98original works of authorship\xe2\x80\x99 under 17\nU.S.C. \xc2\xa7 102(a).\xe2\x80\x9d). Motion pictures, like \xe2\x80\x9cpantomimes,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102(a)(4), and\n\xe2\x80\x9cdramatic works,\xe2\x80\x9d id. \xc2\xa7 102(a)(3), are works that may be expected to contain\ncontributions from multiple individuals. See Richlin v. Metro-Goldwyn-Mayer Pictures, Inc.,\n531 F.3d 962, 975 (9th Cir.2008) (\xe2\x80\x9cA motion picture is a work to which many\ncontribute; however, those contributions ultimately merge to create a unitary\nwhole.\xe2\x80\x9d). But the Act lists none of the constituent parts of any of these kinds of\nworks as \xe2\x80\x9cworks of authorship.\xe2\x80\x9d This uniform absence of explicit protection\nsuggests that non-freestanding contributions to works of authorship are not\nordinarily themselves works of authorship.\nOther provisions of the Act support this conclusion. The Act\xe2\x80\x99s definition of \xe2\x80\x9cjoint\nwork,\xe2\x80\x9d a work prepared by multiple authors \xe2\x80\x9cwith the intention that their\ncontributions be merged into inseparable or interdependent parts of a unitary whole,\xe2\x80\x9d\n17 U.S.C. \xc2\xa7 101 (emphasis added), suggests that such inseparable contributions are\nnot themselves \xe2\x80\x9cworks of authorship.\xe2\x80\x9d Copyright may subsist in contributions to a\ncollective work, see id. \xc2\xa7 201(c) (\xe2\x80\x9cCopyright in each separate contribution to a\ncollective work is distinct from copyright in the collective work as a whole.\xe2\x80\x9d), but\nonly when such contributions constitute \xe2\x80\x9cseparate and independent\xe2\x80\x9d works. Id. \xc2\xa7\n101 (\xe2\x80\x9cA \xe2\x80\x98collective work\xe2\x80\x99 is a work, such as a periodical issue, anthology, or\nencyclopedia, in which a number of contributions, constituting separate and\nindependent works in themselves, are assembled into a collective whole.\xe2\x80\x9d (emphasis\nadded)). The requirement that contributions be \xe2\x80\x9cseparate and independent\xe2\x80\x9d in order\nto obtain their own copyright protection also indicates that inseparable contributions\nintegrated into a single work cannot separately obtain such protection.\nThe legislative history of the Copyright Act further supports this reading. According\nto the House Report on the 1976 Act:\n[A] motion picture would normally be a joint rather than a collective work with\nrespect to those authors who actually work on the film, although their usual status\nas employees for hire would keep the question of coownership from coming up. On\nthe other hand, although a novelist, playwright, or songwriter may write a work with\nthe hope or expectation that it will be used in a motion picture, this is clearly a case\nof separate or independent authorship rather than one where the basic intention\nbehind the writing of the work was for motion picture use.\n\nHouse Report at 120 (1976). While issues of \xe2\x80\x9ccoownership\xe2\x80\x9d of a copyright may arise in\nthe motion picture context, the question of separate contributions meriting separate\ncopyrights as \xe2\x80\x9cworks\xe2\x80\x9d ordinarily would not, unless the motion picture incorporates\nseparate, freestanding pieces that independently constitute \xe2\x80\x9cworks of authorship.\xe2\x80\x9d In\na joint work, \xe2\x80\x9cthe separate elements [comprising the work] merge into a unified\nwhole,\xe2\x80\x9d whereas in a collective work, individuals\xe2\x80\x99 contributions \xe2\x80\x9cremain unintegrated\nand disparate.\xe2\x80\x9d Id.\nAs Casa Duse observes, the Copyright Office has, in an unrelated case, suggested a\nsimilar interpretation of the Act. The Office has stated that an individual who lacks a\nwork-for-hire agreement but who \xe2\x80\x9cintend[s] her contribution or performance to \xe2\x80\x98be\n334\n\n\x0cmerged into inseparable or interdependent parts of a unitary whole[,]\xe2\x80\x99 17 U.S.C. \xc2\xa7\n101[,] ... may assert a claim in joint authorship in the motion picture, but not sole\nauthorship of her performance in a portion of the work.\xe2\x80\x9d82 We need not defer to the\nCopyright Office\xe2\x80\x99s interpretation as a general matter, see Carol Barnhart Inc. v. Econ.\nCover Corp., 773 F.2d 411, 414 (2d Cir.1985), or under the factually distinct\ncircumstances of the present case. We find its analysis persuasive nonetheless.\nThere was, until recently, some authority apparently to the contrary. The majority of\na three-judge panel of the Ninth Circuit concluded that copyright protection may\nsubsist in an actor\xe2\x80\x99s performance in a motion picture. See Garcia v. Google, Inc., 766\nF.3d 929, 933-36 (9th Cir.), reversed en banc, 786 F.3d 733 (9th Cir.2015) (\xe2\x80\x9cGarcia\n(en banc)\xe2\x80\x9d). In Garcia, as in the present case, an individual who made a contribution\nto a finished film \xe2\x80\x94 in that case, an actor \xe2\x80\x94 claimed ownership of a copyright\ninterest in her contribution. The court reasoned that the actor\xe2\x80\x99s performance\nexhibited at least a \xe2\x80\x9cminimal degree of creativity\xe2\x80\x9d such that the actor had probably\nengaged in an original act of authorship. Id. at 934 (quoting Feist). And the\nperformance was, in the court\xe2\x80\x99s view, \xe2\x80\x9cfixed\xe2\x80\x9d in a tangible medium as part of the\nfinished film. Id.\nAn en banc panel reversed, however, adhering to the Copyright Office\xe2\x80\x99s view and,\nbased thereon, concluding that the actor\xe2\x80\x99s \xe2\x80\x9ctheory of copyright law would result in a\nlegal morass, making Swiss cheese of copyrights.\xe2\x80\x9d Garcia (en banc), 786 F.3d at 742.\nWe agree. Filmmaking is a collaborative process typically involving artistic\ncontributions from large numbers of people, including \xe2\x80\x94 in addition to producers,\ndirectors, and screenwriters \xe2\x80\x94 actors, designers, cinematographers, camera operators,\nand a host of skilled technical contributors. If copyright subsisted separately in each\nof their contributions to the completed film, the copyright in the film itself, which is\nrecognized by statute as a work of authorship, could be undermined by any number\nof individual claims. These various contributors may make original artistic\nexpressions, which are arguably fixed in the medium of film footage. But while\noriginality and fixation are necessary prerequisites to obtaining copyright protection,\nsee 17 U.S.C. \xc2\xa7 102(a), they are not alone sufficient: Authors are not entitled to\ncopyright protection except for the \xe2\x80\x9cworks of authorship\xe2\x80\x9d they create and fix. See\nid.; see also Garcia, 766 F.3d at 941 (N.R. Smith, J., dissenting).\nOur conclusion in the present case does not suggest that motion picture directors\nsuch as Merkin may never achieve copyright protection for their creative efforts. The\ndirector of a film may, of course, be the sole or joint author of that film, such that\nshe or he can secure copyright protection for the work. See Community for Creative\nNon-Violence, 490 U.S. at 737 (\xe2\x80\x9cAs a general rule, the author is the party who actually\ncreates the work, that is, the person who translates an idea into a fixed, tangible\nexpression entitled to copyright protection.\xe2\x80\x9d); see also F. Jay Dougherty, Not A Spike\nLee Joint? Issues in the Authorship of Motion Pictures Under U.S. Copyright Law, 49 UCLA\nL.Rev. 225, 312 (2001) (\xe2\x80\x9cThe director of the film is certainly potentially one of its\nLetter from Robert J. Kasunic, Assoc. Register of Copyrights and Dir. of Registration Policy and Practices,\nU.S. Copyright Office, 11 to M. Cris Armenta, The Armenta Law Firm (Mar. 6, 2014) (attached as appendix 12\nto Brief in Response to Suggestion of Rehearing En Banc [Dkt. 54] at ADD47, Garcia v. Google, No. 1257302 (9th Cir. Mar. 12, 2014)).\n82\n\n335\n\n\x0cmost important authors.\xe2\x80\x9d). And authors of freestanding works that are incorporated\ninto a film, such as dance performances or songs, may copyright these \xe2\x80\x9cseparate and\nindependent works.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101 (defining \xe2\x80\x9ccollective work\xe2\x80\x9d). But a director\xe2\x80\x99s\ncontribution to an integrated \xe2\x80\x9cwork of authorship\xe2\x80\x9d such as a film is not itself a\n\xe2\x80\x9cwork of authorship\xe2\x80\x9d subject to its own copyright protection.\nA final observation: A conclusion other than the one we adopt would grant\ncontributors like Merkin greater rights than joint authors, who, as we have noted,\nhave no right to interfere with a co-author\xe2\x80\x99s use of the copyrighted work. See\nChildress, 945 F.2d at 508 (\xe2\x80\x9cJoint authorship entitles the co-authors to equal\nundivided interests in the work.\xe2\x80\x9d). We doubt that Congress intended for contributors\nwho are not joint authors to have greater rights enabling them to hamstring authors\xe2\x80\x99\nuse of copyrighted works, as apparently occurred in the case at bar. We agree with\nthe en banc Ninth Circuit, then, that the creation of \xe2\x80\x9cthousands of standalone\ncopyrights\xe2\x80\x9d in a given work was likely not intended. Garcia (en banc), 786 F.3d at 743.\nWe conclude that Merkin did not obtain and does not possess a copyright in his\ndirectorial contributions to the finished film.\nB. Copyright in Raw Film Footage\nMerkin also contends that he and not Casa Duse owns all copyright interests in the\n\xe2\x80\x9craw film footage\xe2\x80\x9d which was contained on the hard drive and DVDs and from\nwhich the final film Heads Up was or will be produced.\nUnlike Merkin\xe2\x80\x99s creative contributions to the film, the film footage is subject to\ncopyright protection. An original motion picture is surely a \xe2\x80\x9cwork of authorship\xe2\x80\x9d in\nwhich copyright protection \xe2\x80\x9csubsists\xe2\x80\x9d under the Copyright Act. See 17 U.S.C. \xc2\xa7\n102(a)(6). And \xe2\x80\x9cwhere a work is prepared over a period of time, the portion of it that\nhas been fixed at any particular time constitutes the work as of that time.\xe2\x80\x9d Id. \xc2\xa7 101.\nThe unedited film footage at issue in this case seems to us to be an early version of\nthe finished product, constituting the film \xe2\x80\x9cas of that time.\xe2\x80\x9d Because \xe2\x80\x9cthe Copyright\nAct [] affords protection to each work at the moment of its creation,\xe2\x80\x9d Weissmann v.\nFreeman, 868 F.2d 1313, 1317 (2d Cir.1989), copyright subsists even in such an\nunfinished work.[6]\nWith respect to the ownership of any such copyright, \xe2\x80\x9c[c]opyright in a work\nprotected under this title vests initially in the author or authors of the work.\xe2\x80\x9d 17\nU.S.C. \xc2\xa7 201(a). The Copyright Act contemplates instances in which multiple authors\nof a single work may maintain some form of copyright ownership in that work, but\nthe parties agree that Heads Up fits into none of those categories.[7] In cases in\nwhich none of the multiple-author scenarios specifically identified by the Copyright\nAct applies, but multiple individuals lay claim to the copyright in a single work, the\ndispositive inquiry is which of the putative authors is the \xe2\x80\x9cdominant author.\xe2\x80\x9d See\nChildress, 945 F.2d at 508.\nThe district court concluded, and we agree, that Casa Duse was that 4 \xe2\x80\x9cdominant\nauthor.\xe2\x80\x9d See 16 Casa Duse, 2013 WL 5510770 at *10, 2013 U.S. Dist. LEXIS 143958\nat *29. Our Circuit has not proffered rules for determining which of multiple authors\nis \xe2\x80\x9cdominant.\xe2\x80\x9d See Childress, 945 F.2d at 508 (discussing joint authorship inquiry\n\xe2\x80\x9cwhere one person [] is indisputably the dominant author of the work and the only\n\n336\n\n\x0cissue is whether that person is the sole author or she and another [] are joint\nauthors\xe2\x80\x9d). We have, however, identified \xe2\x80\x9cfactual indicia of ownership and authorship\xe2\x80\x9d\nrelevant to the joint-author inquiry. Thomson, 147 F.3d at 202. These factors \xe2\x80\x94\nincluding decisionmaking authority, billing, and written agreements with third parties,\nsee id. at 202-04 \xe2\x80\x94 are also relevant to our dominant-author inquiry.\nAs to decisionmaking authority, which refers to the parties\xe2\x80\x99 relative control \xe2\x80\x9cover\nwhat changes are made and what is included in a work,\xe2\x80\x9d id. at 202, the parties agree\nthat Merkin exercised a significant degree of control over many of the creative\ndecisions underlying both the raw film footage and the finished product. As director,\nMerkin made a variety of creative decisions related to camera work, lighting, blocking,\nand actors\xe2\x80\x99 wardrobe, makeup, and dialogue delivery, particularly during the three\ndays of filming. But in the context of the project as a whole, Casa Duse exercised far\nmore decisionmaking authority. Cf. id. at 198 n. 10 (putative co-author\xe2\x80\x99s claim to\nhave \xe2\x80\x9cdeveloped [a play\xe2\x80\x99s] plot and theme, contributed extensively to the story,\ncreated many character elements, [and written] a significant portion of the dialogue\nand song lyrics\xe2\x80\x9d did not render her a joint, let alone dominant, author of play). Casa\nDuse initiated the project; acquired the rights to the screenplay; selected the cast,\ncrew and director; controlled the production schedule; and coordinated (or\nattempted to coordinate) the film\xe2\x80\x99s publicity and release. Cf. Aalmuhammed v. Lee,\n202 F.3d 1227, 1234 (9th Cir.2000) (\xe2\x80\x9c[A]n author superintend[s] the work by\nexercising control. This will likely be ... the inventive or master mind who creates, or\ngives effect to the idea.\xe2\x80\x9d (second alteration in original) (footnotes and internal\nquotation marks omitted)).\nThe second factor is \xe2\x80\x9cthe way in which the parties bill or credit themselves,\xe2\x80\x9d which\nprovides evidence of intent of authorship. Thomson, 147 F.3d at 203. Although\nMerkin evidently sought to retain the right to remove his name from the finished\nfilm, both parties initially intended to take some credit for the final product. The\nbilling inquiry as to the raw footage, then, appears to us to be essentially neutral, as\nwe understand will often be the case in the context of a motion picture. See\nDougherty, supra at 264 (explaining that this factor \xe2\x80\x9cis less helpful in evidencing the\ncontributors\xe2\x80\x99 intent for works such as motion pictures\xe2\x80\x9d).\nThe third factor, \xe2\x80\x9cthe parties\xe2\x80\x99 agreements with outsiders,\xe2\x80\x9d Thomson, 147 F.3d at 204,\npoints decisively in Casa Duse\xe2\x80\x99s favor. Casa Duse obtained written work-for-hire\nagreements from every cast and crew member other than Merkin. Merkin did not, so\nfar as the record shows, enter into any third party agreements. Indeed, nothing in the\nrecord suggests he had any intention to do so. Casa Duse also entered into an\nagreement with the screenwriter, authorizing the very creation of the film as a\nderivative work. See 17 U.S.C. \xc2\xa7 101 (\xe2\x80\x9cA \xe2\x80\x98derivative work\xe2\x80\x99 is a work based upon one\nor more preexisting works....\xe2\x80\x9d). Thus Casa Duse executed all of the relevant thirdparty agreements.\nWe agree with the district court that in this case, Casa Duse was the dominant author\nof the film. The record does not reflect any developments that occurred between the\ncreation of the raw film footage and Casa Duse\xe2\x80\x99s attempts to create a finished\nproduct that would alter this analysis as to the raw footage. We thus conclude that\nCasa Duse, not Merkin, owns the copyright in the finished film and its prior versions,\nincluding the disputed \xe2\x80\x9craw film footage.\xe2\x80\x9d\n337\n\n\x0c\xe2\x80\xa6\nFor the foregoing reasons, we AFFIRM the district court\xe2\x80\x99s grant of summary\njudgment to Casa Duse on its copyright claims and thus the court\xe2\x80\x99s entry of a\npermanent injunction against Merkin, REVERSE the district court\xe2\x80\x99s grant of\nsummary judgment to Casa Duse on its tortious interference with business relations\nclaim, and REMAND to the district court with instructions to enter summary\njudgment in favor of Merkin on that claim, based thereon to reexamine its award of\ncosts and attorney\xe2\x80\x99s fees, and for such other proceedings as are warranted.\nNotes and questions\n(1) In 16 Casa Duse, LLC v. Merkin, 791 F. 3d 247 (2nd Cir. 2015), the Second Circuit held a\nfilm director did not have a copyright interest in either his directorial contributions to the\nfinished film or the raw film footage shot under his direction. The director was not an\nemployee and had not signed a work for hire agreement.\n(2) Note that the director in 16 Casa Duse did not claim to be a joint author of the final film,\nhe claimed to be the sole author of his directorial contributions.\n(3) The Second Circuit seemed to take a dim view of Merkin\xe2\x80\x99s conduct and that may have\ncolored its assessment of his claim to be at least a joint author of the raw film footage. In a\nportion of the opinion not extracted above, the court held that \xe2\x80\x9cin the context of the project\nas a whole, Casa Duse exercised far more decisionmaking authority [than the director].\xe2\x80\x9d And\nthus Merkin was not a joint author of the raw footage. This is dubious. Merkin apparently\nexercised a significant degree of control over many of the creative decisions underlying both\nthe raw film footage and the finished product. As director, Merkin made a variety of creative\ndecisions related to camera work, lighting, blocking, and actors\xe2\x80\x99 wardrobe, makeup, and\ndialogue delivery, particularly during the three days of filming. The court notes \xe2\x80\x9cCasa Duse\ninitiated the project; acquired the rights to the screenplay; selected the cast, crew and\ndirector; controlled the production schedule; and coordinated (or attempted to coordinate)\nthe film\xe2\x80\x99s publicity and release.\xe2\x80\x9d But it does not seem to stop and consider whether these are\nauthorial activities or simply activities that set the stage for authorship. The court also relies\non the fact that Casa Duse obtained work for hire agreements from every other member of\nthe cast and crew whereas Merkin did not to be relevant.\n\n338\n\n\x0c10. OWNERSHIP, AUTHORSHIP AND TRANSFER\nInitial ownership of copyright interests: International framework\nThe initial ownership of copyright interests is not addressed by the TRIPs Agreement or the\nBerne Convention.\n\nInitial ownership of copyright interests under United States copyright\nlaw\nOwnership of the physical embodiment of the work has no bearing on copyright\nownership\nPope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.)\nThe ownership of any particular physical embodiment of a work, even if it is the original and\nonly copy, has no bearing on the question of who owns the copyright in the work. This\nlong-standing principle of copyright law goes all the way back to a 1741 case decided in the\nEnglish Court of Chancery, Pope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.).\nAlexander Pope was a famous and profitable author in an age when professional authorship\nwas considered unworthy of a gentleman.83 In pursuit of fame and profit, Pope very much\nwanted to publish his correspondence, but as a gentleman he needed a pretext to do so in\norder to avoid the charge of vanity. At Pope\xe2\x80\x99s behest, his friend and correspondent Jonathan\nSwift (also a famous author) sent an edited collection of their letters to a publisher in Dublin,\nIreland to have them printed. Dublin was beyond the reach of English copyright law, or\nindeed any copyright law at the time.\nWhen the disreputable London bookseller, Edmund Curl, republished the same volume of\ncorrespondence (as it seemed Pope hoped he would), Pope sued to protect his honor and\nreputation as an author. Curl defended the suit, in part, on the basis that the letters, once\nsold and delivered were the property of the receiver, not the author. Lord Hardwicke noted\nCurl\xe2\x80\x99s argument and rejected it, saying:\nIt has been objected, that where a man writes a letter, it is in the nature of a gift to\nthe receiver.\nBut I am of opinion it is only a special property in the receiver; possibly the\nproperty in the paper may belong to him; but this does not give a licence to any\nperson whatsoever to publish them to the world, for at most the receiver has only a\njoint property with the writer.\n\nPope v. Curl, 2 Atk. 342 (1741) established for the first time the fundamental distinction\nbetween ownership of a particular copy of a copyrighted work and the ownership of the\ncopyrighted work. The principle is reflected in Section 202 of the Copyright Act.\n\nThis account of Pope v. Curl is based on MARK ROSE, AUTHORS IN COURT: SCENES FROM THE THEATER OF\nCOPYRIGHT, 11-35 (2016).\n83\n\n339\n\n\x0c17 U.S. Code \xc2\xa7 202. Ownership of copyright as distinct from ownership of\nmaterial object\nOwnership of a copyright, or of any of the exclusive rights under a copyright, is\ndistinct from ownership of any material object in which the work is embodied.\nTransfer of ownership of any material object, including the copy or phonorecord in\nwhich the work is first fixed, does not of itself convey any rights in the copyrighted\nwork embodied in the object; nor, in the absence of an agreement, does transfer of\nownership of a copyright or of any exclusive rights under a copyright convey\nproperty rights in any material object.\n\nAuthorship and ownership are inextricably entwined\nThe concepts of ownership and authorship are inextricably entwined under the Copyright\nAct of 1976. Copyright ownership vests, at the moment of creation, initially in the author or\nauthors of the work. Under Section 201 of the Act, the creator of a work is, at least\npresumptively, its author and owner of the copyright.\n17 U.S. Code \xc2\xa7 201. Ownership of copyright\n(a) Initial Ownership.--Copyright in a work protected under this title vests initially in\nthe author or authors of the work. The authors of a joint work are co-owners of\ncopyright in the work.\n\nSection 201(b) complicates that picture somewhat by introducing the concept of a work\nmade for hire (see below), but putting that question to one side, we can proceed on the\nassumption that authors are owners. The next natural question is of course, how do we\ndetermine who is the author?\nThe Supreme Court implicitly addressed this question in Burrow-Giles Lithographic Co. v. Sarony\n111 U.S. 53 (1884). The issue in Burrow-Giles was whether a staged photograph of Oscar\nWilde qualified for copyright protection at all, but in answering that question, the Court also\nelaborated how one might go about determining who is the author. The Court relied on an\nEnglish case about the ownership of a photo of the Australian cricket team. In Nottage v.\nJackson, 11 Q.B.D. 627 (1883), the court had to choose between recognizing as author either\nthe photographer or the enterprise that arranged for the photograph to be taken and sold. In\nBurrow-Giles (at 60-61), the Court quotes various members of the House of Lords in Nottage v.\nJackson with approval:\nBrett, M.R., said, in regard to who was the author: \xe2\x80\x9cThe nearest I can come to, is\nthat it is the person who effectively is as near as he can be, the cause of the picture\nwhich is produced, that is, the person who has superintended the arrangement, who\nhas actually formed the picture by putting the persons in position, and arranging the\nplace where the people are to be \xe2\x80\x94 the man who is the effective cause of that.\xe2\x80\x9d\nLord Justice Cotton said: \xe2\x80\x9cIn my opinion, \xe2\x80\x98author\xe2\x80\x99 involves originating, making,\nproducing, as the inventive or master mind, the thing which is to be protected,\nwhether it be a drawing, or a painting, or a photograph;\xe2\x80\x9d and Lord Justice Bowen\nsays that photography is to be treated for the purposes of the act as an art, and the\nauthor is the man who really represents, creates, or gives effect to the idea, fancy, or\nimagination.\n\n340\n\n\x0cCoauthors are joint owners of the work\nIn Burrow-Giles, the question of whether the work contained enough authorship to be\ncopyrightable also settled the question of who should be seen as the author of the work.\nThere was only one photographer and really no other obvious candidate, except perhaps the\nsubject of the photo himself, Oscar Wilde. The attribution of authorship becomes quite\ncomplex where the work in question was produced by some form of collective effort.\nAs Section 201 (quoted above) states: \xe2\x80\x9cThe authors of a joint work are co-owners of\ncopyright in the work.\xe2\x80\x9d A joint work is defined as follows:\n17 U.S. Code \xc2\xa7 101\nA \xe2\x80\x9cjoint work\xe2\x80\x9d is a work prepared by two or more authors with the intention that\ntheir contributions be merged into inseparable or interdependent parts of a unitary\nwhole.\n\nThe authors of a joint work are co-owners of the copyright in the work. Each owns a share\nof an undivided whole or is entitled to undivided ownership or interest in the entire work,\ndespite any differences in each author\xe2\x80\x99s contribution.\nDoes the division of the copyright interest into multiple interests mean that these interests\nmust be equal? Certainly, they are equal in their ability to exercise the rights of the copyright\nowner, but there is a reasonable argument that these undivided shares need not be equal in\nterms of their right to remuneration in the face of unequal contributions.84 How exactly a\ncoauthor would establish her entitlement to a greater than 50% ownership stakes is an\ninteresting question.\nThe implications of joint-ownership are profound. As co-owners of the copyright, joint\nauthors are treated as tenants in common. Tenancy in common is a common law property\nconcept. If A and B own real property as tenants in common, each has the right to possess\nthe entire property and neither has the right to exclude the other. In copyright law, each cotenant has the right to use or license some third party to use the work, and each co-tenant\ncan convey nonexclusive rights to the joint work without the consent of his or her coauthor, subject\nto a duty to account to the other co-owners for any profit.\nWho qualifies as a joint author?\nThe Copyright Act does not use the terms \xe2\x80\x9cjoint author\xe2\x80\x9d or \xe2\x80\x9cco-author,\xe2\x80\x9d but the terms are\nused interchangeably in the relevant case law to describe the authors of a joint work. To\nmeet the definition of a joint work under Section 101, the relevant co-authors must have\n\xe2\x80\x9cthe intention that their contributions be merged into inseparable or interdependent parts of\na unitary whole.\xe2\x80\x9d\nThis deceptively simple sentence raises a number of difficult questions:\n\xe2\x80\xa2\n\xe2\x80\xa2\n\n84\n\nWhat degree of contribution is required for someone to qualify as an author? Indeed, how\nshould contribution be measured: aesthetic merit, control, audience appeal, \xe2\x80\xa6?\nDoes each author need to make the same level of contribution? Are contributions assessed\nrelative to other authors of the work, or only on some absolute scale?\n\nSee Shyam Balganesh, et al. Amicus Brief in Google v. Garcia.\n\n341\n\n\x0c\xe2\x80\xa2\n\xe2\x80\xa2\n\n\xe2\x80\xa2\n\xe2\x80\xa2\n\nDo the contributions of each person claiming to be a co-author need to be something that\ncould have been separately copyrighted?\nHow specific must the putative authors\xe2\x80\x99 \xe2\x80\x9cintention that their contributions be merged\xe2\x80\x9d be?\nI.e., does each co-author need to have a shared vision of the ultimate creation, or is it\nenough that they make their separate contributions in the expectation that those\ncontributions will be subsumed into a larger work?\nWhen exactly do the potential co-authors need to form the relevant intention? Can they\nform it at different times?\nHow do we distinguish between separate works, derivative works, and sub-works that are\n\xe2\x80\x9cinseparable or interdependent parts of a unitary whole?\xe2\x80\x9d\n\nThere are answers to almost all of these questions in the case law, but those answers are not\nnecessarily the same in each circuit.\nBefore delving into the case law, it is useful to think about what kinds of joint authorship\ncases end up in court. As Shyam Balganesh explains in his article on Unplanned Coathorship:\nIn most instances of coauthorship the parties agree with each other in advance, both\nas to the nature of the collaboration and on their respective ownership claims to the\nfinal work, necessitating little judicial interpretation (and validation) of the\narrangement. The principal instances that actually reach courts and require their\nintervention are instead those where there exists no formal agreement between the\nparties, which in turn necessitate courts\xe2\x80\x99 interpretations of the parties\xe2\x80\x99 actions and\nbehaviors to determine the existence of a common design or the intention to\nproduce a work of joint authorship. The courts\xe2\x80\x99 task in such situations is usually\nfurther compounded by the parties\xe2\x80\x99 fundamental disagreement about their real\nintentions while undertaking the collaboration. In these instances, the status of\ncoauthorship is determined ex post and imputed to parties, much like how the\nobjective theory of contract formation interprets the parties\xe2\x80\x99 actions to find the\nexistence of a contract ex post.\nThis ex post nature of the determination introduces an important nuance into the\nprocess of determining whether the parties ought to be classified as coauthors. The\nabsence of an advance ownership arrangement between the parties invariably forces\ncourts to rely extensively on objective evidence of cooperative behavior, often to the\nexclusion of evidence relating to subjective intention on the question of\ncoauthorship from the time of the work\xe2\x80\x99s creation.85\n\nAalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)\nCircuit Judge Kleinfeld\nIn 1991, Warner Brothers contracted with Spike Lee and his production companies\nto make the movie Malcolm X, to be based on the book, The Autobiography of\nMalcolm X. Lee co-wrote the screenplay, directed, and co-produced the movie,\nwhich starred Denzel Washington as Malcolm X. Washington asked Jefri\nAalmuhammed to assist him in his preparation for the starring role because\nAalmuhammed knew a great deal about Malcolm X and Islam. Aalmuhammed, a\ndevout Muslim, was particularly knowledgeable about the life of Malcolm X, having\npreviously written, directed, and produced a documentary film about Malcolm X.\n85\n\nShyamkrishna Balganesh, Unplanned Coauthorship, 100 Va. L. Rev. 1683, 1695-1696 (2014).\n\n342\n\n\x0cAalmuhammed joined Washington on the movie set. The movie was filmed in the\nNew York metropolitan area and Egypt. Aalmuhammed presented evidence that his\ninvolvement in making the movie was very extensive. He reviewed the shooting\nscript for Spike Lee and Denzel Washington and suggested extensive script revisions.\nSome of his script revisions were included in the released version of the film; others\nwere filmed but not included in the released version. Most of the revisions\nAalmuhammed made were to ensure the religious and historical accuracy and\nauthenticity of scenes depicting Malcolm X\xe2\x80\x99s religious conversion and pilgrimage to\nMecca.\nAalmuhammed submitted evidence that he directed Denzel Washington and other\nactors while on the set, created at least two entire scenes with new characters,\ntranslated Arabic into English for subtitles, supplied his own voice for voice-overs,\nselected the proper prayers and religious practices for the characters, and edited parts\nof the movie during post production. Washington testified in his deposition that\nAalmuhammed\xe2\x80\x99s contribution to the movie was \xe2\x80\x9cgreat\xe2\x80\x9d because he \xe2\x80\x9chelped to\nrewrite, to make more authentic.\xe2\x80\x9d Once production ended, Aalmuhammed met with\nnumerous Islamic organizations to persuade them that the movie was an accurate\ndepiction of Malcolm X\xe2\x80\x99s life.\nAalmuhammed never had a written contract with Warner Brothers, Lee, or Lee\xe2\x80\x99s\nproduction companies, but he expected Lee to compensate him for his work. He did\nnot intend to work and bear his expenses in New York and Egypt gratuitously.\nAalmuhammed ultimately received a check for $25,000 from Lee, which he cashed,\nand a check for $100,000 from Washington, which he did not cash.\nDuring the summer before Malcolm X\xe2\x80\x99s November 1992 release, Aalmuhammed\nasked for a writing credit as a co-writer of the film, but was turned down. When the\nfilm was released, it credited Aalmuhammed only as an \xe2\x80\x9cIslamic Technical\nConsultant,\xe2\x80\x9d far down the list. In November 1995, Aalmuhammed applied for a\ncopyright with the U.S. Copyright Office, claiming he was a co-creator, co-writer,\nand co-director of the movie. The Copyright Office issued him a \xe2\x80\x9cCertificate of\nRegistration,\xe2\x80\x9d but advised him in a letter that his \xe2\x80\x9cclaims conflict with previous\nregistrations\xe2\x80\x9d of the film.\nOn November 17, 1995, Aalmuhammed filed a complaint against Spike Lee, his\nproduction companies, and Warner Brothers.\nANALYSIS\nA. Copyright claim\nAalmuhammed claimed that the movie Malcolm X was a \xe2\x80\x9cjoint work\xe2\x80\x9d of which he\nwas an author, thus making him a co-owner of the copyright. He sought a\ndeclaratory judgment to that effect, and an accounting for profits. He is not claiming\ncopyright merely in what he wrote or contributed, but rather in the whole work, as a\nco-author of a \xe2\x80\x9cjoint work.\xe2\x80\x9d The district court granted defendants summary\njudgment against Mr. Aalmuhammed\xe2\x80\x99s copyright claims. We review de novo.\nAalmuhammed argues that he established a genuine issue of fact as to whether he\nwas an author of a \xe2\x80\x9cjoint work,\xe2\x80\x9d Malcolm X. The Copyright Act does not define\n\xe2\x80\x9cauthor,\xe2\x80\x9d but it does define \xe2\x80\x9cjoint work\xe2\x80\x9d:\n343\n\n\x0cA \xe2\x80\x9cjoint work\xe2\x80\x9d is a work prepared by two or more authors with the intention that\ntheir contributions be merged into inseparable or interdependent parts of a unitary\nwhole.\n\n\xe2\x80\x9cWhen interpreting a statute, we look first to the language.\xe2\x80\x9d The statutory language\nestablishes that for a work to be a \xe2\x80\x9cjoint work\xe2\x80\x9d there must be (1) a copyrightable\nwork, (2) two or more \xe2\x80\x9cauthors,\xe2\x80\x9d and (3) the authors must intend their contributions\nbe merged into inseparable or interdependent parts of a unitary whole. A joint work\nin this circuit requires each author to make an independently copyrightable\ncontribution to the disputed work.9\nFootnote 9: Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990).\n\nMalcolm X is a copyrightable work, and it is undisputed that the movie was intended\nby everyone involved with it to be a unitary whole. It is also undisputed that\nAalmuhammed made substantial and valuable contributions to the movie, including\ntechnical help, such as speaking Arabic to the persons in charge of the mosque in\nEgypt, scholarly and creative help, such as teaching the actors how to pray properly\nas Muslims, and script changes to add verisimilitude to the religious aspects of the\nmovie. Speaking Arabic to persons in charge of the mosque, however, does not\nresult in a copyrightable contribution to the motion picture. Coaching of actors, to\nbe copyrightable, must be turned into an expression in a form subject to copyright.\nThe same may be said for many of Aalmuhammed\xe2\x80\x99s other activities. Aalmuhammed\nhas, however, submitted evidence that he rewrote several specific passages of\ndialogue that appeared in Malcolm X, and that he wrote scenes relating to Malcolm\nX\xe2\x80\x99s Hajj pilgrimage that were enacted in the movie. If Aalmuhammed\xe2\x80\x99s evidence is\naccepted, as it must be on summary judgment, these items would have been\nindependently copyrightable. Aalmuhammed, therefore, has presented a genuine\nissue of fact as to whether he made a copyrightable contribution. All persons\ninvolved intended that Aalmuhammed\xe2\x80\x99s contributions would be merged into\ninterdependent parts of the movie as a unitary whole. Aalmuhammed maintains that\nhe has shown a genuine issue of fact for each element of a \xe2\x80\x9cjoint work.\xe2\x80\x9d\nBut there is another element to a \xe2\x80\x9cjoint work.\xe2\x80\x9d A \xe2\x80\x9cjoint work\xe2\x80\x9d includes \xe2\x80\x9ctwo or\nmore authors.\xe2\x80\x9d Aalmuhammed established that he contributed substantially to the\nfilm, but not that he was one of its \xe2\x80\x9cauthors.\xe2\x80\x9d We hold that authorship is required\nunder the statutory definition of a joint work, and that authorship is not the same\nthing as making a valuable and copyrightable contribution. We recognize that a\ncontributor of an expression may be deemed to be the \xe2\x80\x9cauthor\xe2\x80\x9d of that expression\nfor purposes of determining whether it is independently copyrightable. The issue we\ndeal with is a different and larger one: is the contributor an author of the joint work\nwithin the meaning of 17 U.S.C. \xc2\xa7 101.\nBy statutory definition, a \xe2\x80\x9cjoint work\xe2\x80\x9d requires \xe2\x80\x9ctwo or more authors.\xe2\x80\x9d The word\n\xe2\x80\x9cauthor\xe2\x80\x9d is taken from the traditional activity of one person sitting at a desk with a\npen and writing something for publication. It is relatively easy to apply the word\n\xe2\x80\x9cauthor\xe2\x80\x9d to a novel. It is also easy to apply the word to two people who work\ntogether in a fairly traditional pen-and-ink way, like, perhaps, Gilbert and Sullivan. In\nthe song, \xe2\x80\x9cI Am the Very Model of a Modern Major General,\xe2\x80\x9d Gilbert\xe2\x80\x99s words and\nSullivan\xe2\x80\x99s tune are inseparable, and anyone who has heard the song knows that it\nowes its existence to both men, Sir William Gilbert and Sir Arthur Sullivan, as its\n344\n\n\x0ccreative originator. But as the number of contributors grows and the work itself\nbecomes less the product of one or two individuals who create it without much help,\nthe word is harder to apply.\nWho, in the absence of contract, can be considered an author of a movie? The word\nis traditionally used to mean the originator or the person who causes something to\ncome into being, or even the first cause, as when Chaucer refers to the \xe2\x80\x9cAuthor of\nNature.\xe2\x80\x9d For a movie, that might be the producer who raises the money. Eisenstein\nthought the author of a movie was the editor. The \xe2\x80\x9cauteur\xe2\x80\x9d theory suggests that it\nmight be the director, at least if the director is able to impose his artistic judgments\non the film. Traditionally, by analogy to books, the author was regarded as the\nperson who writes the screenplay, but often a movie reflects the work of many\nscreenwriters. Grenier suggests that the person with creative control tends to be the\nperson in whose name the money is raised, perhaps a star, perhaps the director,\nperhaps the producer, with control gravitating to the star as the financial investment\nin scenes already shot grows.13\nFootnote 13: See Richard Grenier, Capturing the Culture, 206-07 (1991).\n\nWhere the visual aspect of the movie is especially important, the chief\ncinematographer might be regarded as the author. And for, say, a Disney animated\nmovie like \xe2\x80\x9cThe Jungle Book,\xe2\x80\x9d it might perhaps be the animators and the composers\nof the music.\nThe Supreme Court dealt with the problem of defining \xe2\x80\x9cauthor\xe2\x80\x9d in new media in\nBurrow-Giles Lithographic Co. v. Sarony. The question there was, who is the author of a\nphotograph: the person who sets it up and snaps the shutter, or the person who\nmakes the lithograph from it. Oscar Wilde, the person whose picture was at issue,\ndoubtless offered some creative advice as well. The Court decided that the\nphotographer was the author, quoting various English authorities: \xe2\x80\x9cthe person who\nhas superintended the arrangement, who has actually formed the picture by putting\nthe persons in position, and arranging the place where the people are to be\xe2\x80\x94the\nman who is the effective cause of that\xe2\x80\x9d; \xe2\x80\x9c\xe2\x80\x98author\xe2\x80\x99 involves originating, making,\nproducing, as the inventive or master mind, the thing which is to be protected\xe2\x80\x9d; \xe2\x80\x9cthe\nman who really represents, creates, or gives effect to the idea, fancy, or imagination.\xe2\x80\x9d\nThe Court said that an \xe2\x80\x9cauthor,\xe2\x80\x9d in the sense that the Founding Fathers used the\nterm in the Constitution, was \xe2\x80\x9c\xe2\x80\x98he to whom anything owes its origin; originator;\nmaker; one who completes a work of science or literature.\xe2\x80\x99\xe2\x80\x9d\nAnswering a different question, what is a copyrightable \xe2\x80\x9cwork,\xe2\x80\x9d as opposed to who\nis the \xe2\x80\x9cauthor,\xe2\x80\x9d the Supreme Court held in Feist Publications that \xe2\x80\x9csome minimal level\nof creativity\xe2\x80\x9d or \xe2\x80\x9coriginality\xe2\x80\x9d suffices. But that measure of a \xe2\x80\x9cwork\xe2\x80\x9d would be too\nbroad and indeterminate to be useful if applied to determine who are \xe2\x80\x9cauthors\xe2\x80\x9d of a\nmovie. So many people might qualify as an \xe2\x80\x9cauthor\xe2\x80\x9d if the question were limited to\nwhether they made a substantial creative contribution that that test would not\ndistinguish one from another. Everyone from the producer and director to casting\ndirector, costumer, hairstylist, and \xe2\x80\x9cbest boy\xe2\x80\x9d gets listed in the movie credits because\nall of their creative contributions really do matter. It is striking in Malcolm X how\nmuch the person who controlled the hue of the lighting contributed, yet no one\nwould use the word \xe2\x80\x9cauthor\xe2\x80\x9d to denote that individual\xe2\x80\x99s relationship to the movie. A\ncreative contribution does not suffice to establish authorship of the movie.\n345\n\n\x0cBurrow-Giles, in defining \xe2\x80\x9cauthor,\xe2\x80\x9d requires more than a minimal creative or original\ncontribution to the work. Burrow-Giles is still good law, and was recently reaffirmed in\nFeist Publications. Burrow-Giles and Feist Publications answer two distinct questions; who\nis an author, and what is a copyrightable work. Burrow-Giles defines author as the\nperson to whom the work owes its origin and who superintended the whole work,\nthe \xe2\x80\x9cmaster mind.\xe2\x80\x9d In a movie this definition, in the absence of a contract to the\ncontrary, would generally limit authorship to someone at the top of the screen credits,\nsometimes the producer, sometimes the director, possibly the star, or the\nscreenwriter\xe2\x80\x94someone who has artistic control. After all, in Burrow-Giles the\nlithographer made a substantial copyrightable creative contribution, and so did the\nperson who posed, Oscar Wilde, but the Court held that the photographer was the\nauthor.\nThe Second and Seventh Circuits have likewise concluded that contribution of\nindependently copyrightable material to a work intended to be an inseparable whole\nwill not suffice to establish authorship of a joint work.24\nFootnote 24: Thomson v. Larson, 147 F.3d 195, (2nd Cir. 1998); Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th\nCir.1994); Childress v. Taylor, 945 F.2d 500 (2d Cir.1991).\n\nAlthough the Second and Seventh Circuits do not base their decisions on the word\n\xe2\x80\x9cauthors\xe2\x80\x9d in the statute, the practical results they reach are consistent with ours.\nThese circuits have held that a person claiming to be an author of a joint work must\nprove that both parties intended each other to be joint authors. In determining\nwhether the parties have the intent to be joint authors, the Second Circuit looks at\nwho has decision making authority, how the parties bill themselves, and other\nevidence.\nIn Thomson v. Larson, an off-Broadway playwright had created a modern version of La\nBoheme, and had been adamant throughout its creation on being the sole author. He\nhired a drama professor for \xe2\x80\x9cdramaturgical assistance and research,\xe2\x80\x9d agreeing to\ncredit her as \xe2\x80\x9cdramaturg\xe2\x80\x9d but not author, but saying nothing about \xe2\x80\x9cjoint work\xe2\x80\x9d or\ncopyright. The playwright tragically died immediately after the final dress rehearsal,\njust before his play became the tremendous Broadway hit, Rent. The dramaturg then\nsued his estate for a declaratory judgment that she was an author of Rent as a \xe2\x80\x9cjoint\nwork,\xe2\x80\x9d and for an accounting. The Second Circuit noted that the dramaturg had no\ndecision making authority, had neither sought nor was billed as a co-author, and that\nthe defendant entered into contracts as the sole author. On this reasoning, the\nSecond Circuit held that there was no intent to be joint authors by the putative\nparties and therefore it was not a joint work.\nConsidering Burrow-Giles, the recent cases on joint works33 (especially the thoughtful\nopinion in Thomson v. Larson), and the Gilbert and Sullivan example, several factors\nsuggest themselves as among the criteria for joint authorship, in the absence of\ncontract.\nFootnote 33: See Thomson v. Larson, 147 F.3d 195, (2nd Cir.1998); Erickson v. Trinity Theatre, Inc., 13 F.3d\n1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2nd Cir.1991).\n\nFirst, an author \xe2\x80\x9csuperintends\xe2\x80\x9d the work by exercising control. This will likely be a\nperson \xe2\x80\x9cwho has actually formed the picture by putting the persons in position, and\narranging the place where the people are to be-the man who is the effective cause of\n\n346\n\n\x0cthat,\xe2\x80\x9d or \xe2\x80\x9cthe inventive or master mind\xe2\x80\x9d who \xe2\x80\x9ccreates, or gives effect to the idea.\xe2\x80\x9d\nSecond, putative coauthors make objective manifestations of a shared intent to be\ncoauthors, as by denoting the authorship of The Pirates of Penzance as \xe2\x80\x9cGilbert and\nSullivan.\xe2\x80\x9d We say objective manifestations because, were the mutual intent to be\ndetermined by subjective intent, it could become an instrument of fraud, were one\ncoauthor to hide from the other an intention to take sole credit for the work. Third,\nthe audience appeal of the work turns on both contributions and \xe2\x80\x9cthe share of each\nin its success cannot be appraised.\xe2\x80\x9d40\nFootnote 40: Edward B. Marks Music Corp. v. Jerry Vogel Music Co., Inc., 140 F.2d 266, 267 (2nd Cir. 1944) (Hand, J.)\nmodified by, 140 F.2d 268 (1944).\n\nControl in many cases will be the most important factor. The best objective\nmanifestation of a shared intent, of course, is a contract saying that the parties intend\nto be or not to be co-authors. In the absence of a contract, the inquiry must of\nnecessity focus on the facts. The factors articulated in this decision and the Second\nand Seventh Circuit decisions cannot be reduced to a rigid formula, because the\ncreative relationships to which they apply vary too much. Different people do\ncreative work together in different ways, and even among the same people working\ntogether the relationship may change over time as the work proceeds.\nAalmuhammed did not at any time have superintendence of the work. Warner\nBrothers and Spike Lee controlled it. Aalmuhammed was not the person \xe2\x80\x9cwho has\nactually formed the picture by putting the persons in position, and arranging the\nplace ....\xe2\x80\x9d Spike Lee was, so far as we can tell from the record. Aalmuhammed, like\nLarson\xe2\x80\x99s dramaturg, could make extremely helpful recommendations, but Spike Lee\nwas not bound to accept any of them, and the work would not benefit in the\nslightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over\nthe work, and absence of control is strong evidence of the absence of co-authorship.\nAlso, neither Aalmuhammed, nor Spike Lee, nor Warner Brothers, made any\nobjective manifestations of an intent to be coauthors. Warner Brothers required\nSpike Lee to sign a \xe2\x80\x9cwork for hire\xe2\x80\x9d agreement, so that even Lee would not be a coauthor and co-owner with Warner Brothers. It would be illogical to conclude that\nWarner Brothers, while not wanting to permit Lee to own the copyright, intended to\nshare ownership with individuals like Aalmuhammed who worked under Lee\xe2\x80\x99s\ncontrol, especially ones who at the time had made known no claim to the role of coauthor. No one, including Aalmuhammed, made any indication to anyone prior to\nlitigation that Aalmuhammed was intended to be a co-author and co-owner.\nAalmuhammed offered no evidence that he was the \xe2\x80\x9cinventive or master mind\xe2\x80\x9d of\nthe movie. He was the author of another less widely known documentary about\nMalcolm X, but was not the master of this one. What Aalmuhammed\xe2\x80\x99s evidence\nshowed, and all it showed, was that, subject to Spike Lee\xe2\x80\x99s authority to accept them,\nhe made very valuable contributions to the movie. That is not enough for coauthorship of a joint work.\nThe Constitution establishes the social policy that our construction of the statutory\nterm \xe2\x80\x9cauthors\xe2\x80\x9d carries out. The Founding Fathers gave Congress the power to give\nauthors copyrights in order \xe2\x80\x9cto promote the progress of Science and useful arts.\xe2\x80\x9d\nProgress would be retarded rather than promoted, if an author could not consult\n\n347\n\n\x0cwith others and adopt their useful suggestions without sacrificing sole ownership of\nthe work. Too open a definition of author would compel authors to insulate\nthemselves and maintain ignorance of the contributions others might make. Spike\nLee could not consult a scholarly Muslim to make a movie about a religious\nconversion to Islam, and the arts would be the poorer for that.\nThe broader construction that Aalmuhammed proposes would extend joint\nauthorship to many overreaching contributors, like the dramaturg in Thomson, and\ndeny sole authors \xe2\x80\x9cexclusive authorship status simply because another person\nrendered some form of assistance.\xe2\x80\x9d Claimjumping by research assistants, editors, and\nformer spouses, lovers and friends would endanger authors who talked with people\nabout what they were doing, if creative copyrightable contribution were all that\nauthorship required.\nAalmuhammed also argues that issuance of a copyright registration certificate to him\nestablishes a prima facie case for ownership. A prima facie case could not in any\nevent prevent summary judgment in the presence of all the evidence rebutting his\nclaim of ownership. The presumptive validity of the certificate may be rebutted and\ndefeated on summary judgment. The Copyright Office stated in its response to\nAalmuhammed\xe2\x80\x99s application for copyright (during the pendency of this litigation)\nthat his claims \xe2\x80\x9cconflict with previous registration claims,\xe2\x80\x9d and therefore the\nCopyright Office had \xe2\x80\x9cseveral questions\xe2\x80\x9d for him. One of the questions dealt with\nthe \xe2\x80\x9cintent\xe2\x80\x9d of \xe2\x80\x9cother authors,\xe2\x80\x9d i.e., Warner Brothers. The evidence discussed above\nestablishes without genuine issue that the answers to these questions were that\nWarner Brothers did not intend to share ownership with Aalmuhammed.\nBecause the record before the district court established no genuine issue of fact as to\nAalmuhammed\xe2\x80\x99s co-authorship of Malcolm X as a joint work, the district court\ncorrectly granted summary judgment dismissing his claims for declaratory judgment\nand an accounting resting on co-authorship.\n[The judgment of the district court was affirmed as it pertains to this extract.]\nNotes and questions\n(0) Why didn\xe2\x80\x99t Aalmuhammed cash the $100,000 check from Denzel Washington?\n(1) In Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), the Ninth Circuit held that\n\xe2\x80\x9csubstantial and valuable contributions\xe2\x80\x9d to a film by a technical consultant did not make the\nconsultant an author of the joint work in the film. The court explicitly stated that\n\xe2\x80\x9cauthorship is not the same thing as making a valuable and copyrightable contribution.\xe2\x80\x9d\nAalmuhammed clearly differentiates between the modest level of creativity required to make a\nwork copyrightable and the extent of contribution required to claim the status of a co-author\nof a joint work.\n(2) In assessing contested claims of co-authorship, the Ninth Circuit looks to three factors:\ncontrol over the final form of the work; objective manifestations of a shared intent to be\ncoauthors; and whether the audience appeal of the work turns on the multiple contributions\nsuch that \xe2\x80\x9cthe share of each in its success cannot be appraised.\xe2\x80\x9d What exactly the court in\nAalmuhammed meant by referring to audience appeal is not entirely clear. In any event,\nAalmuhammed stresses that \xe2\x80\x9ccontrol in many cases will be the most important factor.\xe2\x80\x9d\n348\n\n\x0c(3) Note that the Ninth Circuit does not require a strict requirement of shared intent to be\njoint authors, only \xe2\x80\x9cobjective manifestations\xe2\x80\x9d of such an intention. Why does the court\nprefer an objective mutual intent standard to subjective intent?\nArguably the courts are more interested in identifying collaborative processes than whether\nthe parties understood or intended particular legal consequences. See, for example, Strauss v.\nHearst Corp. 1988 WL 18932 (S.D.N.Y. Feb. 19, 1988) where the court found that the\ndefendant magazine and the professional photographer it hired were coauthors by virtue of\nthe fact that the defendant\xe2\x80\x99s representative had played an active role in positioning the props\nand selecting the photograph to use, and its editors later retouched the photograph before\nfinal publication. As Balganesh explains in Unplanned Coauthorship:\nThe parties never entered into a formal contractual arrangement specifying their\nrelationship and ownership over the photographs. At trial, the court concluded that\nthe parties were indeed coauthors of the photographs. The court\xe2\x80\x99s decision was\nbased entirely on its analysis of the collaboration involved in producing the\nphotograph. Rather interestingly, the court disallowed any reliance on evidence\nrelating to the parties\xe2\x80\x99 subjective state of mind at the time the photographs were\ntaken and before.86\n\n(4) If coauthorship is simply one type of authorship, it makes sense that anyone claiming the\nstatus of author must add something recognizable as original expression to the joint work.\nMany circuits, including the Ninth Circuit in Aalmuhammed, hold that a putative co-author\nmust go further and make an independently copyrightable contribution to the joint work. In\nGaiman v. McFarlane 360 F.3d 644 (7th Cir. 2004), the Seventh Circuit suggested that this rule\nshould not apply in situations where no single contribution meets the standard, but the work\nwould be copyrightable if attributed to a single author.\n(5) The issue of timing: in Shapiro v. Jerry Vogel Music Co., 221 F.2d 569 (2d Cir. 1955), the\nSecond Circuit found that the intention required for joint authorship could be formulated\npost hoc. In The Twelfth Street Rag case (as it is commonly known), the musician Euday L.\nBowman had composed an instrumental piano solo in 1914, and assigned his rights thereto\nto the Jenkins Music Company. In 1918 the Jenkins Company retained James S. Sumner to\nwrite a lyric for Bowman\xe2\x80\x99s music, but Sumner\xe2\x80\x99s contribution was not a work for hire. The\ncourt held that under these circumstances, the combined words and music constituted a joint\nwork.\nIt seems rather remarkable on these facts that the Second Circuit would allow the assignee of\nan ownership interest in a musical composition to add new elements to a pre-existing work\nand thereby create new ownership interests in the resulting \xe2\x80\x9cjoint work,\xe2\x80\x9d and thus\nextinguishing any other ownership interests in the pre-existing work. In Batiste v. Island\nRecords, Inc., 179 F.3d 217, 222 n.7 (5th Cir. 1999), the Fifth Circuit commented that\n\xe2\x80\x9cCongress overruled this doctrine in 1976 by adopting the current definition for \xe2\x80\x9cjoint work,\xe2\x80\x9d\nwhich requires that each author intend the merger at the time the author prepares his or her\ncontribution.\xe2\x80\x9d (emphasis added)) This doesn\xe2\x80\x99t seem quite right either. In general, there is no\nreason why the intention to merge couldn\xe2\x80\x99t arise after the author prepares her contribution,\nafter all, the author can change her mind about other aspects of the work without necessarily\ncreating a new version. Works generally have a certain amount of definitional plasticity until\nthey are released to the public and not every change to a work creates a new derivative work\n86\n\nShyamkrishna Balganesh, Unplanned Coauthorship, 100 VA. L. REV. 1683, 1696-1967 (2014)\n\n349\n\n\x0clayered on top of the old one. However, the Twelfth Street Rag case goes too far in holding\nthat an assignee of the original author can form that intention. At the moment the work is\ntransferred, it loses the plasticity that allows it to grow and morph into a joint work.\n(6) Note that in the United Kingdom joint works are limited to instances \xe2\x80\x9cin which the\ncontribution of each author is not distinct from that of the other authors.\xe2\x80\x9d Copyright Designs and\nPatents Act, 20 1988, c. 48, \xc2\xa7 10 (UK). In other words, the U.K. position is that a joint work\n\nmust be \xe2\x80\x9cinseparable\xe2\x80\x9d and not just \xe2\x80\x9cinterdependent.\xe2\x80\x9d As the Copyright Office Compendium\n(3d) explains at 505.1:\nA contribution to a joint work is considered \xe2\x80\x9cinseparable\xe2\x80\x9d if the work contains a\nsingle form of authorship, such as a novel or painting, and it is considered\n\xe2\x80\x9cinterdependent\xe2\x80\x9d if the work contains multiple forms of authorship, such as motion\npicture, opera, or the music and lyrics of a song. (Citing Senate Report at 103-104).\nWhy would the United States and the United Kingdom have a different conception of what\nconstitutes a joint work? Which is preferable?\n\nJoint works and derivative works\nWeissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989)\nCircuit Judge Cardamone\nThis appeal presents the paradigm of the problems that arise when a long\nrelationship between accomplished professor and brilliant assistant comes to an end.\nTogether the two had researched and co-authored scholarly scientific works. When\nthe appellant \xe2\x80\x94 the younger assistant \xe2\x80\x94 individually wrote what she considered a\nnew work, the appellee \xe2\x80\x94 the mentor \xe2\x80\x94 believing himself a co-author of the new\npiece, used his assistant\xe2\x80\x99s work, styling it as his own, and thereby precipitated the\ninstant litigation.\nThe parties are both accomplished scientists in the field of nuclear medicine.\nAppellant Heidi S. Weissmann, M.D is an Associate Professor of Radiology and\nNuclear Medicine at the Albert Einstein College of Medicine (Einstein), and is an\nattending physician specializing in nuclear medicine at the Montefiore Medical\nCenter (Montefiore). She has received numerous awards in the area of radionuclide\nimaging, and published more than 80 scholarly articles. Appellee Leonard M.\nFreeman, M.D is also a prolific author, and a noted lecturer in the fields of nuclear\nmedicine and diagnostic radiology. He has served as President of the Society of\nNuclear Medicine, and currently is a professor of Radiology and of Nuclear Medicine\nat Einstein, where he has taught since 1964. He is the Director of the Nuclear\nMedicine Service at Montefiore and Vice-Chairman of the Department of Nuclear\nMedicine at Einstein.\nThe parties\xe2\x80\x99 professional association began in 1977 when Dr. Weissmann was in her\nfourth year of residency at Montefiore and Dr. Freeman was Chief of the Division of\nNuclear Medicine at that hospital. In early 1977 appellee was researching the\napplication of the derivatives of a certain radiopharmaceutical, iminodiacetic acid\n(IDA). IDA is a substance labeled with a radioactive isotope that is injected into the\nbloodstream and, when picked up by the liver, permits diagnosis of certain liver and\nbiliary disorders. In the late 1970\xe2\x80\x99s drug manufacturers producing IDA analogs\n350\n\n\x0cneeded scientists to develop a patient data base to obtain approval of their Food and\nDrug Administration applications in order to market the isotopes in the United\nStates. One selected scientist was Dr. Freeman, who began using the IDA analogs in\nhis research efforts. As a fourth-year resident, appellant worked on these initial\nstudies under Dr. Freeman\xe2\x80\x99s tutelage. The parties\xe2\x80\x99 first jointly authored article on\nIDA derivatives was published in January 1979. Over the next several years a series\nof articles on the use of IDA scanning in diagnosing biliary diseases were published\nin the names of Freeman, Weissmann, and other scientists.\nBeginning in 1980 the parties worked together as researchers and co-authors of a\nnumber of papers focusing on various aspects of nuclear medicine, particularly IDA\nimaging. Prior versions of the work alleged to have been infringed in the instant\nlitigation were first written in 1980 for a nuclear medicine review course sponsored\nby the Harvard Medical School. The district court found that the work in which\nappellant claims a copyright (Plaintiff\xe2\x80\x99s exhibit 1 or P-1) is a \xe2\x80\x9csyllabus,\xe2\x80\x9d that is, a\npaper reviewing the state of the art of hepatobiliary imaging techniques, prepared to\naccompany lectures, and used by medical residents to study for specialty boards.\nFrom 1980 to 1985 prior versions of P-1 were constantly revised and updated by the\nparties in an ongoing cooperative effort.\nIn 1985 Dr. Weissmann authored the article that precipitated the present copyright\nsuit. It was entitled \xe2\x80\x9cHepatobiliary Imaging\xe2\x80\x9d (P-1), and reported on a relatively new\ndiagnostic technique employing radioactive analogs of the agent IDA. The work was\nprepared as a chapter for the Radiological Society of North America\xe2\x80\x99s book entitled\n\xe2\x80\x9cSyllabus: A Categorical Course in Nuclear Medicine,\xe2\x80\x9d printed and published in 1985.\nThe publication listed Dr. Weissmann as the article\xe2\x80\x99s sole author.\nAppellant\xe2\x80\x99s creation admittedly was derived from previous papers jointly written by\nthe parties during the course of their professional relationship that extended from\n1977 to 1984. An examination of the relevant documents reveals that portions of P-1\nwere taken virtually verbatim from prior jointly authored pieces that had been\npresented at Einstein and at the Mount Sinai School of Medicine (Mount Sinai) in\n1983 and 1984 respectively. Although P-1 appears to restate the central propositions\nasserted in the prior works, Weissmann\xe2\x80\x99s exhibits includes the following new\nelements: (1) a new selection of photo illustrations and associated captions; (2)\nreferences to four recent reports in the pertinent literature; (3) new textual additions;\nand (4) reorganization of previous material. Appellee conceded at trial that this\nmaterial in P-1 was created solely by appellant.\nIn the summer of 1987 Dr. Freeman was invited to give a review course on nuclear\nmedicine at Mount Sinai. He prepared P-1 to use in giving the course by deleting Dr.\nWeissmann\xe2\x80\x99s name from P-1 and replacing it with his own, and by adding three\nwords to the title. Fifty copies of the article were made. Before the date set for the\ncourse, appellant obtained one of the copies, and through counsel requested that her\nrevised article not be circulated, and that all those who had received copies be\ninformed that she claimed sole authorship of it. The article was removed from the\npacket of course materials. Dr. Freeman delivered his lecture without the use of his\nversion of P-1.\n\n351\n\n\x0cAfter this incident, Weissmann filed the instant suit alleging copyright infringement\nin violation of 17 U.S.C. \xc2\xa7 501. In her prayer for relief she sought a declaration that\nFreeman had committed actionable infringement, an injunction permanently\nrestraining him from infringing, and an award of actual damages and profits.\nAfter a four-day bench trial, Judge Pollack in a written decision concluded that Dr.\nFreeman\xe2\x80\x99s use of P-1 did not violate the copyright law. In support of its\ndetermination that Freeman had not infringed any legally cognizable rights that\nappellant may have had in P-1, the district court found that appellee was a joint\nauthor, and therefore a co-owner of any copyright Weissmann acquired in the article.\nThe trial court also determined that P-1\xe2\x80\x99s new matter was too trivial to qualify for\nprotection as a derivative work under the copyright statute.\nDISCUSSION\nI. Joint Authorship\nBefore discussing whether P-1 was a joint work, we set forth the standard of review\nto be applied to the district court\xe2\x80\x99s determination that P-1 was such a work.\nOrdinarily the clearly erroneous standard under Fed.R.Civ.P. 52(a) would govern.\nBut, when a district court makes findings of fact predicated upon an incorrect legal\nstandard such findings are not binding on an appellate court.\nHere the district court determined that the entire series of the parties\xe2\x80\x99 works on the\nsubject of radionuclide imaging \xe2\x80\x94 including the work alleged to have been infringed\n\xe2\x80\x94 constituted a single evolutionary joint work. It discussed the conceded joint\nauthorship in the preexisting works. Without making any specific findings respecting\nP-1 itself, the court found that Dr. Freeman was a co-owner of P-1 and that P-1 was\na joint work. The trial court made this surprising finding despite Dr. Freeman\xe2\x80\x99s\nconcession that he had no hand in P-1\xe2\x80\x99s preparation. The finding was made based on\nthe district court\xe2\x80\x99s mistaken view that joint authorship of the prior existing works\nautomatically makes the two joint authors co-owners of the derivative work. Such a\nruling stands copyright law on its head. It flies in the face of the Copyright Act which\naffords protection to each work at the moment of its creation. Thus, \xc2\xa7 101 provides\nfor those works prepared over time that \xe2\x80\x9cthe portion of it that has been fixed at any\nparticular time constitutes the work as of that time, and where the work has been\nprepared in different versions, each version constitutes a separate work.\xe2\x80\x9d\nOf greater significance is that the trial court\xe2\x80\x99s view would convert all derivative\nworks based upon jointly authored works into joint works, regardless of whether\nthere had been any joint labor on the subsequent version. If such were the law, it\nwould eviscerate the independent copyright protection that attaches to a derivative\nwork that is wholly independent of the protection afforded the preexisting work. See\n\xc2\xa7 103(b). Hence, it was a plain error for the district court to rule, as a matter of law,\nthat Dr. Freeman\xe2\x80\x99s joint authorship of the prior works made him a joint author with\nappellant in the derivative work.\nThe district court also made a finding of fact that Dr. Freeman was a joint author\nwith Dr. Weissmann of P-1. Section 201(a) of the Act provides: \xe2\x80\x9cCopyright in a\nwork protected under [the Copyright Act] vests initially in the author or co-authors\nof the work.\xe2\x80\x9d Section 101 defines a \xe2\x80\x9cjoint work\xe2\x80\x9d as one \xe2\x80\x9cprepared by two or more\n\n352\n\n\x0cauthors with the intention that their contributions be merged into inseparable or\ninterdependent parts of a unitary whole.\xe2\x80\x9d In a joint work each author automatically\nacquires an undivided ownership in the entire work including any portion of it. Thus,\nan action for infringement between joint owners will not lie because an individual\ncannot infringe his own copyright. The only duty joint owners have with respect to\ntheir joint work is to account for profits from its use.\nA review of the meaning of \xc2\xa7\xc2\xa7 101 and 103(b) and of their legislative history reveals\ntwo basic criteria that must be satisfied before one is a joint author of a derivative\nwork. First, each putative author must have \xe2\x80\x9ccontributed\xe2\x80\x9d to the work. Second, each\nmust intend to contribute to a joint work at the time his or her alleged contribution\nis made. Because \xc2\xa7 103(b) extends independent protection to derivative works, an\nintent to contribute or an actual contribution to previous works does not serve as\nproof of ownership in the derivative work. See House Report at 120. We consider\nthese two criteria.\nA. Contribution to Derivative Work\nThe statute envisions that each author contribute to a joint work. \xe2\x80\x9cUnder the [\xc2\xa7 101]\ndefinition a work would not be \xe2\x80\x98joint\xe2\x80\x99 unless its authors collaborated among\nthemselves or unless each of the authors knew, at the time the work was being\nwritten, that his contribution would be integrated as an \xe2\x80\x98inseparable\xe2\x80\x99 or\n\xe2\x80\x98interdependent\xe2\x80\x99 part of a \xe2\x80\x98unitary whole.\xe2\x80\x99\xe2\x80\x9d Supplementary Report of the Register of\nCopyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill,\n89th Cong., 1st Sess., Copyright Law Revision Part 6, at 65 (House Comm. Print\n1965), reprinted in 1 Copyright Law Revision (1964-1965).\nIn enacting the definition of a joint work set forth in \xc2\xa7 101, Congress endeavored to\n\xe2\x80\x9cmake plain that copyright in a derivative work is independent of, and does not\nenlarge the scope of rights in, any pre-existing material incorporated in it. There was\nthus no need to spell this conclusion out in the definition of \xe2\x80\x98joint work.\xe2\x80\x99\xe2\x80\x9d House\nReport at 120. The legislative history clearly indicates that one cannot be deemed to\nbe a joint author without actually collaborating in the work\xe2\x80\x99s preparation. Critical\ntherefore \xe2\x80\x9cis the intention, at the time the writing is done, that the parts be absorbed\nor combined into an integrated unit.\xe2\x80\x9d Id. That intention must be with respect to the\nwork in which a copyright is claimed, not with respect to the prior works from which\nit is derived. See MCA, Inc. v. Wilson, 425 F.Supp. 443, 455 (S.D.N.Y.1976) (owner of\nunderlying work obtains no property rights in derivative work), aff\xe2\x80\x99d, 677 F.2d 180\n(2d Cir.1981).\nIn the case at hand, because Dr. Freeman conceded that he had not participated in\ndrafting the new matter included in P-1, it follows as a logical corollary, therefore,\nthat he acquired no interest in or right to use P-1 beyond those rights which he had\nas co-author in the prior joint material incorporated into P-1. Even though one coauthor has the right to revise a joint work in order to create an individual derivative\nwork, the other co-author acquires no property rights in the newly created work\nprepared without his involvement.\nB. Intent to Contribute to Derivative Work\n\n353\n\n\x0cThe second point upon which inquiry is focused is Dr. Weissmann\xe2\x80\x99s intent. The\ndistrict court made no express finding on this critical issue. It simply stated in\nconclusory fashion that because the parties had intended P-1\xe2\x80\x99s predecessors to be\nused jointly as a \xe2\x80\x9cstock piece\xe2\x80\x9d to accompany their review lectures, they had\nsomehow impliedly agreed that all future works on the subject of radioactive analogs\nof IDA, including P-1, would also be a joint work.\nIn order for a work to be deemed a joint work, the parties must evince \xe2\x80\x9cthe intention\nthat their contributions be merged,\xe2\x80\x9d \xc2\xa7 101 (emphasis added), \xe2\x80\x9cat the time the writing\nis done,\xe2\x80\x9d House Report at 120, not at some later date. The law on this point is set forth\nin Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266 (2d Cir.1944) (L.\nHand, J.). There it was observed that a finding of joint authorship requires that each\nauthor intend his or her contribution, at the time that it is created, to become part of\na unitary work to which another will make or already has made a contribution. Or, as\nJudge Hand stated it, \xe2\x80\x9cwhen both plan an undivided whole ..., their separate interests\nwill be as inextricably involved, as are the threads out of which they have woven the\nseamless fabric of the work.\xe2\x80\x9d Id. at 267; see also Shapiro, Bernstein & Co. v. Jerry Vogel\nMusic Co., (\xe2\x80\x9cMelancholy Baby\xe2\x80\x9d), 161 F.2d 406, 409 (2d Cir.1946).\nMarks was a case in which one individual had written the lyrics for a song and\nanother had written the music. Neither party knew the other, but both were aware\nthat their individual efforts would not stand alone. In holding that the resulting song\nwas a joint work, the critical fact was that both parties were equally aware that their\nindividual authorship efforts would have to be combined in order to create the final\nintegrated product \xe2\x80\x94 a commercially viable song. See Marks, 140 F.2d at 267. From\nthis, the rule has evolved that an author who intends to create a joint work must\nclearly demonstrate his or her intent in that regard. Although such an intent may, as\nin Marks, be inferred from the circumstances surrounding the creation of the work,\nin the absence of such a showing, the work is presumed to be the product of an\nindividual author and is the sole property of its creator.\nIn the present case, Drs. Weissmann and Freeman collaborated in the preparation\nand publication of the works from which P-1 was derived. Yet, there is no evidence\nthat they intended their joint product to be forever indivisible like the finite whole of\nthe completed single song in Marks. The facts point to a contrary conclusion.\nScientific research is a quest for new discoveries and the preexisting joint works by\ndefinition were continually evolving. Dr. Weissmann believed she had a new and\nbetter approach and decided to author her research alone. Section 103(b) of the\nCopyright Act gives her that right when it extends independent protection to\nderivative works. The joint authorship of the underlying work does not confer any\nproperty right in the new work, save those rights which the co-author (here Dr.\nFreeman) of the previous works retains in the material used as part of the\ncompilation of the derivative work. The district court opinion reveals a fundamental\nmisunderstanding of these principles. This misconception is reflected in its\ndiscussion of Dr. Weissmann\xe2\x80\x99s intent to merge her efforts with Dr. Freeman based\nonly on P-1\xe2\x80\x99s predecessors, and not on P-1 itself.\nC. Appellant\xe2\x80\x99s Intent to Create a Derivative Work\n\n354\n\n\x0cThe remainder of discussion of joint authorship concerns the substantial and\nuncontroverted evidence that Dr. Weissmann intended P-1 to be her own individual\nwork. As a preliminary matter, it is important to note that of the 88 articles, abstracts,\nand book chapters listed on her curriculum vitae, 71 credit Dr. Freeman as a coauthor. Appellant\xe2\x80\x99s having deviated from that pattern in submitting P-1 for\npublication as a chapter in the Radiological Society of North America\xe2\x80\x99s book under\nthe name \xe2\x80\x9cHeidi S. Weissmann\xe2\x80\x9d is persuasive proof of the fact that she intended this\nparticular piece to represent her own individual authorship. Appellant\xe2\x80\x99s use of her\nown by-line on P-1 constitutes prima facie proof that this work was not intended to\nbe joint. Appellee failed to produce any evidence to rebut appellant\xe2\x80\x99s showing. In\nfact, Dr. Freeman lectured at the same meeting at which P-1 was first presented, and\nmade no objection to the omission of his name from it.\nAgain, had the trial court separately considered P-1, it would have concluded that\nappellant\xe2\x80\x99s article was the only work with respect to which it was repeatedly\nconceded that appellee had played no role. Yet, the trial judge found that \xe2\x80\x9cplaintiff\ndid almost all of the writing\xe2\x80\x9d for the works listed on her resume of which Freeman\nwas a \xe2\x80\x9cco-author\xe2\x80\x9d and that she routinely \xe2\x80\x9csubmitted drafts to Dr. Freeman before\npublication.\xe2\x80\x9d It also found that \xe2\x80\x9cshe would always make sure to leave a copy of a\nmanuscript on his desk if he was not in town or busy with other commitments; she\ndid not always get comments back, but often she did.\xe2\x80\x9d Hence, it is significant on the\nissue of appellant\xe2\x80\x99s intent that P-1 was one of those few works that was not\nsubmitted for Dr. Freeman\xe2\x80\x99s review and on which she did not receive his comments.\nThese facts \xe2\x80\x94 found by the district court \xe2\x80\x94 strongly evidence appellant\xe2\x80\x99s intent that\nP-1 be solely her own work.\nThe district court found that Freeman\xe2\x80\x99s participation in the preparation of P-1 was\n\xe2\x80\x9cstrikingly illustrated\xe2\x80\x9d by Weissmann\xe2\x80\x99s inclusion in P-1 of a section entitled \xe2\x80\x9cFalsePositive Studies for Acute Cholecystitis\xe2\x80\x9d which Dr. Freeman had independently\ncomposed for a 1984 Harvard review course. The incorporation of this material into\nP-1 is irrelevant to the question of whether or not the parties intended P-1 to be a\njoint work. Appellant correctly points out that the inclusion of the \xe2\x80\x9cFalse Positive\xe2\x80\x9d\nsection is not proof of any intention on Dr. Freeman\xe2\x80\x99s part to make a contribution\nto P-1 because, prior to 1985, he could not have formed an intent to contribute his\nefforts to her then nonexistent work.\nIn sum, the evidence presented at trial fully supports appellant\xe2\x80\x99s contention that the\nwork alleged to have been infringed was solely the product of her authorship efforts.\nAlthough her work derived from preexisting jointly authored material, appellee\nplayed no role in P-1\xe2\x80\x99s creation. As a non-contributing party to P-1, Dr. Freeman\xe2\x80\x99s\nintent regarding his contributions to the underlying preexisting work is not relevant\nto claimed joint authorship of P-1. The district court\xe2\x80\x99s conclusion that P-1 was a\njoint work because the entire series of the parties\xe2\x80\x99 articles on IDA, including P-1, was\none evolutionary joint work disregards the copyright protection accorded derivative\nworks, independent of the preexisting works under \xc2\xa7 103(b). As a consequence of its\nplain error of law in this regard, the district court\xe2\x80\x99s finding of fact that Freeman\xe2\x80\x99s coauthorship of the preexisting works also made him a joint author of P-1 is clearly\nerroneous.\nII. Derivative Work\n355\n\n\x0cWe now turn attention to whether P-1 qualifies for protection as a derivative work as\nthat term is defined by the Copyright Act. To establish a claim of copyright\ninfringement, plaintiff must prove ownership of a valid copyright and copying by the\ndefendant. With Dr. Freeman\xe2\x80\x99s copying admitted, the only question is whether Dr.\nWeissmann owned a valid copyright in a so-called derivative work. Although her\ncertificate of registration constitutes \xe2\x80\x9cprima facie evidence of the validity of the\ncopyright and of the facts stated in the certificate,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 410(c), it is not\nconclusive on the issue of copyrightability; it merely creates a presumption of validity.\nSee, e.g., Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980); Past Pluto\nProductions Corp. v. Dana, 627 F.Supp. 1435, 1440 (S.D.N.Y.1986) (certificate shifts\nburden to defendant to disprove copyright\xe2\x80\x99s validity).\nSection 101 of the Copyright Act defines a \xe2\x80\x9cderivative work\xe2\x80\x9d as one that is based on\n\xe2\x80\x9cpreexisting works.\xe2\x80\x9d In addition, \xc2\xa7 103(b) provides as follows\nThe copyright in a compilation or derivative work extends only to the material\ncontributed by the author of such work, as distinguished from the preexisting\nmaterial employed in the work, and does not imply any exclusive right in the\npreexisting material. The copyright in such a work is independent of, and does not\naffect or enlarge the scope, duration, ownership, or subsistence of, any copyright\nprotection in the preexisting material.\n\nSection 101 of the statute further defines a derivative work as \xe2\x80\x9c[a] work consisting of\neditorial revisions, annotations, elaborations, or other modifications which, as a\nwhole, represent an original work of authorship....\xe2\x80\x9d Thus, it is clear that \xe2\x80\x9cthe manner\nof expression, the author\xe2\x80\x99s analysis or interpretation of events, the way he structures\nhis material and marshals facts, his choice of words, and the emphasis he gives to\nparticular developments\xe2\x80\x9d are protected under the copyright laws. Wainwright Securities,\nInc. v. Wall Street Transcript Corp., 558 F.2d 91, 95-96 (2d Cir.1977).\nThe principle of derivative work protection is subject to two important limitations,\nboth of which were purportedly recognized by the district court. To support a\ncopyright, a derivative work must be more than trivial, and the protection afforded a\nderivative work must reflect the degree to which the derivative work relies on\npreexisting material, without diminishing the scope of the latter\xe2\x80\x99s copyright\nprotection. Durham Indus., 630 F.2d at 909. This rule is premised on the notion that\xe2\x80\x9d\n\xe2\x80\x98the one pervading element prerequisite to copyright protection regardless of the\nform of work\xe2\x80\x99 is the requirement of originality \xe2\x80\x94 that the work be the original\nproduct of the claimant.\xe2\x80\x9d L. Batlin & Son v. Snyder, 536 F.2d 486, 489-90 (2d Cir.) (en\nbanc). Originality is and always has been rightly prized. Dostoevsky, for example,\ninsisted that the measure of a person\xe2\x80\x99s worth in pre-Revolutionary Russia did not\ndepend so much on money or position, as it did on one\xe2\x80\x99s originality. F. Dostoevsky,\nThe Idiot, Part I (Garrett Trans.1958). Mill wrote that \xe2\x80\x9cnothing was ever yet done\nwhich someone was not the first to do, and ... all good things which exist are the\nfruits of originality....\xe2\x80\x9d J.S. Mill, On Liberty 271 (Harvard Classics, Eliot ed. 1909).\nIn the law of copyright only an unmistakable dash of originality need be\ndemonstrated, high standards of uniqueness in creativity are dispensed with. In\ndeciding whether the originality of the matter added in P-1 is sufficient to qualify for\nprotection as a derivative work, the standard enunciated in Alfred Bell & Co. v. Catalda\nFine Arts, Inc., 191 F.2d 99 (2d Cir.1951) (Frank, J.), remains the law in this Circuit:\n356\n\n\x0c\xe2\x80\x9cAll that is needed to satisfy both the Constitution and the statute is that the \xe2\x80\x98author\xe2\x80\x99\ncontributed something more than a \xe2\x80\x98merely trivial\xe2\x80\x99 variation, something recognizably\n\xe2\x80\x98his own\xe2\x80\x99\xe2\x80\x9c Id. at 102-03. The originality requirement for a revised version is a\n\xe2\x80\x9cminimal\xe2\x80\x9d or \xe2\x80\x9cmodest\xe2\x80\x9d one. See, e.g., Eden Toys, Inc. v. Florelee Undergarment Co., 697\nF.2d 27, 35 (2d Cir.1982); Durham Indus., 630 F.2d at 910.\nThe district court here concluded that P-1 and its predecessors had evolved over an\nextended period of time and that Weissmann\xe2\x80\x99s additions were minuscule,\ndemonstrating little originality. Although recognizing that the selection and\narrangement of data may merit copyright protection, the trial judge believed that \xe2\x80\x9cthe\nupdate was done as part of the evolution of the stock piece\xe2\x80\x9d and that appellant\xe2\x80\x99s\nmodifications of the preexisting joint works did not warrant copyright protection.\nIt was formerly our rule that where, as here, the originality of a work could be\ndetermined entirely by reference to documentary evidence, we were in as good a\nposition as the district court to evaluate originality. In 1985 Rule 52(a) of Fed.R.Civ.P.\nwas amended so that findings of fact based upon documentary \xe2\x80\x94 along with oral \xe2\x80\x94\nevidence are not to be set aside unless clearly erroneous.\nIn our view the district court implausibly overlooked the fact that appellant\xe2\x80\x99s 1985\nselection of subject matter and content drawn from prior works and their\nrearrangement in P-1 is sufficiently the product of original authorship to warrant\ncopyright protection. It failed to give detailed consideration to the new matter that\nWeissmann added to the parties\xe2\x80\x99 prior works in her authorship of P-1. Its main\ndiscussion of P-1\xe2\x80\x99s content is a passing reference to the addition of \xe2\x80\x9conly\xe2\x80\x9d four new\nsources from the relevant scientific literature. Although the credibility of the parties\nas witnesses was fully discussed, the relevance of such an inquiry is problematic\nwhen the evidence upon which the derivative work determination must be based is\nsolely documentary. Credibility might have been relevant, for example, had the\nquestion of who actually authored the new material been contested. But it is scarcely\npertinent to determining whether the newly-added matter satisfies the statutory\nrequirements for protectability. Research has not revealed a single case in which\ncredibility has been deemed significant \xe2\x80\x94 let alone dispositive \xe2\x80\x94 on the question of\nwhether there is a sufficient level of originality in a given work to render it\ncopyrightable. While the district court\xe2\x80\x99s findings based on the credibility of witnesses\nis entitled to deference, the trial judge cannot insulate his findings on originality from\nappellate review by calling them credibility determinations. Anderson v. City of Bessemer,\n470 U.S. 564, 575 (1985).\nOur examination of the relevant documents reveals that Weissmann\xe2\x80\x99s additions and\nmodifications in P-1 extend well beyond the mere addition of \xe2\x80\x9cfour sources.\xe2\x80\x9d A\nthorough review of P-1 and of the works from which it is derived demonstrates that\nDr. Weissmann added the following new elements to the existing prior joint work:\n(1) a selection and arrangement of photo illustrations and associated captions; (2)\nreferences to recent reports in the pertinent literature; (3) selection, condensation,\nand description of additional source material; (4) several new textual additions; (5)\nsubstantial rearrangement of the manner and order of presentation of material\ncontained in the parties\xe2\x80\x99 prior joint works; and (6) the addition of a section on\n\xe2\x80\x9ccongenital disorders,\xe2\x80\x9d a revised treatment of \xe2\x80\x9cchronic cholecystitis,\xe2\x80\x9d and the\nincorporation of Dr. Freeman\xe2\x80\x99s \xe2\x80\x9cfalse positive\xe2\x80\x9d studies.\n357\n\n\x0cThe district court found that many of the foregoing additions and revisions repeated\nverbatim portions of prior works and, from that finding, concluded that P-1 was\nneither new nor copyrightable. This finding wholly ignores the statutory scheme that\nexpressly protects the selection of subject matter and content from underlying works,\nas well as the rearrangement of preexisting material taken from those works. See 17\nU.S.C. \xc2\xa7 101 (defining derivative work as an \xe2\x80\x9cabridgment, condensation or any other\nform in which a work may be recast, transformed, or adapted\xe2\x80\x9d). Further, a\ncomparison of the parties\xe2\x80\x99 prior works \xe2\x80\x94 including P-1\xe2\x80\x99s most recent predecessor\n\xe2\x80\x94 at once demonstrates numerous differences, and highlights the fact that P-1 gave\nIDA imaging new and original treatment. Moreover, Dr. Freeman\xe2\x80\x99s copying and\ndistributing P-1 as his own work is further evidence of the nontriviality of Dr.\nWeissmann\xe2\x80\x99s work, since copying without regard to a plaintiff\xe2\x80\x99s rights is probative on\nthe issue of the originality of a work. See Bleistein v. Donaldson Lithographing Co., 188\nU.S. 239, 252 (1903) (Holmes, J.) (that works have worth is sufficiently shown by\ndesire to copy them \xe2\x80\x9cwithout regard to the plaintiff\xe2\x80\x99s rights\xe2\x80\x9d).\nWe conclude therefore that the district court\xe2\x80\x99s holding that Weissmann could not\nacquire a copyright in a derivative work based upon a jointly authored work was an\nerror of law that disregarded the provisions of \xc2\xa7 103(b) and the protection it extends\nto derivative works. Moreover, Dr. Freeman failed to rebut the prima facie showing\nof copyrightability appellant obtained by her certificate of copyright registration. As a\nconsequence, we hold that Dr. Weissmann\xe2\x80\x99s additions and modifications to the\npreexisting joint work satisfy the modest requirements set forth in \xc2\xa7 103(b) and in\nthe relevant case law sufficiently to make P-1 entitled to copyright protection as a\nderivative work. The district court\xe2\x80\x99s findings \xe2\x80\x94 upon which it reached a contrary\nlegal conclusion \xe2\x80\x94 were clearly erroneous because they have left us, after a thorough\nreview of all the evidence, with a firm conviction that the district court was mistaken.\nFor the reasons stated, we hold that P-1 was an individually-authored, copyrightable,\nderivative work created by appellant. Accordingly, we reverse the judgment of the\ndistrict court and remand the case to it with directions that judgment be entered in\nfavor of appellant Weissmann.\nCircuit Judge Pierce, concurring\nI agree that we must reverse and remand because Dr. Freeman failed to rebut\nappellant\xe2\x80\x99s claim (evidenced by her registration of P-1 as a derivative work) that she\ndid not intend the new material to be \xe2\x80\x9cmerged\xe2\x80\x9d with the prior joint work.\nAppellant\xe2\x80\x99s certificate of registration served as \xe2\x80\x9cprima facie evidence of the validity\nof the copyright and of the facts stated in the certificate.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 410(c) (1982).\nFor Dr. Freeman to claim that his use was not an infringement, but rather that the\nwork was \xe2\x80\x9cjoint,\xe2\x80\x9d was a defense much like any other under the Copyright Act.\nTherefore, it was incumbent upon Dr. Freeman to rebut appellant\xe2\x80\x99s prima facie\nevidence that the work (P-1) was derivative, not joint. Appellee failed to meet his\nburden, however, for he failed to present sufficient evidence to demonstrate\nappellant\xe2\x80\x99s intent to create a joint work.\nThe district court appears to have applied the opposite presumption. Rather than\nfocusing on the appellant\xe2\x80\x99s intent at the time of creating the derivative work, the\ncourt dwelt primarily on the parties\xe2\x80\x99 long-standing and close professional relationship.\n\n358\n\n\x0cFrom that, it seems to have presumed that P-1 \xe2\x80\x94 a by-product of that professional\ncollaboration \xe2\x80\x94 was a \xe2\x80\x9cjoint\xe2\x80\x9d work. That presumption, however, in effect placed the\nburden on the putative author to show that the work was derivative, rather than on\nthe putative infringer to show that the work was joint. The district court\xe2\x80\x99s approach\nwas therefore at odds with the statutory scheme of burdens of proof, and must be\nreversed as a matter of law.\nI differ, though, with Judge Cardamone\xe2\x80\x99s reasoning in Part I. The fact that Dr.\nFreeman was not the author of any of the new material that went into P-1 did not, of\nitself, preclude that work from being \xe2\x80\x9cjoint.\xe2\x80\x9d Of course, as Judge Cardamone notes,\none cannot be found to be a joint author of a work without actually having\ncontributed to that work. However, that does not mean that an author, to be a \xe2\x80\x9cjoint\xe2\x80\x9d\nauthor, must have contributed to each incremental addition to the work. Thus, in\nthis case, had Dr. Weissmann\xe2\x80\x99s intent been otherwise \xe2\x80\x94 had she intended the work\nto be joint \xe2\x80\x94 Dr. Freeman could have been deemed a joint author simply by virtue\nof his contributions to the earlier work, into which Dr. Weissmann\xe2\x80\x99s material would\nhave been \xe2\x80\x9cmerged.\xe2\x80\x9d See, e.g., Edward B. Marks Music Corp. v. Jerry Vogel Music Co.,\n140 F.2d 266, 267 (2d Cir.1944).\nFurther, I do not agree that the earlier incorporation of Dr. Freeman\xe2\x80\x99s \xe2\x80\x9cFalse\nPositives\xe2\x80\x9d study into the evolving syllabus was irrelevant. Though not dispositive, the\nparties\xe2\x80\x99 past willingness to have their works absorbed into the syllabus was relevant\nto the question of appellant\xe2\x80\x99s intent when she reshaped the syllabus into P-1.\nOn balance, however, I agree with the court that the evidence relied upon by\nappellee was not sufficient to show that appellant intended to create a joint work.\nTherefore, I join the conclusion of the court, and would reverse and remand, with\njudgment to be entered for appellant.\nCircuit Judge Lumbard, dissenting:\nI dissent, and vote to affirm the judgment of the district court in all respects, for the\nreasons stated in Judge Pollack\xe2\x80\x99s thorough and reasoned opinion. 684 F.Supp. 1248\n(1988).\n\nOwnership of employee works and commissioned works\nThe United States has long recognized employer ownership of works created by employees\nwithin the scope of their employment. Exactly where the boundary between the status of\nemployee and independent contractor should be drawn is a fact specific question. Likewise,\nthe equally important question of which activities are within the scope of employment.\n17 U.S. Code \xc2\xa7 201 - Ownership of copyright\n(b) Works Made for Hire.\xe2\x80\x94 In the case of a work made for hire, the employer or\nother person for whom the work was prepared is considered the author for\npurposes of this title, and, unless the parties have expressly agreed otherwise in a\nwritten instrument signed by them, owns all of the rights comprised in the copyright.\n17 U.S. Code \xc2\xa7 101\nA \xe2\x80\x9cwork made for hire\xe2\x80\x9d is\xe2\x80\x94(1) a work prepared by an employee within the scope\nof his or her employment;\n\n359\n\n\x0cUnder the 1976 Act, \xe2\x80\x98work made for hire\xe2\x80\x99 is defined as either \xe2\x80\x9ca work prepared by an\nemployee within the scope of his or her employment\xe2\x80\x9d or as a work specially ordered or\ncommissioned work as discussed in more detail below.\nWho is an employee?\nCommunity for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)\nIn the late 1980s, a homeless charity, Community for Creative Non-Violence, paid a sculptor,\nJames Earl Reid, to create a statue depicting the plight of homeless people. Members of the\ncharity visited Reid\xe2\x80\x99s studio as he made the statute and gave suggestions and directions as to\nits appearance. Reid was paid for his work upon delivery of the statue but the parties never\ndiscussed ownership of the copyright in the sculpture. In the resulting copyright litigation\nthe District Court held that CCNV owned the copyright under the \xe2\x80\x9cwork made for hire\xe2\x80\x9d\ndoctrine, however the Court of Appeals for the District of Columbia reversed on the\ngrounds that Reid was not an employee, but an independent contractor.\nThe Supreme Court in Community for Creative Non-Violence v. Reid, held that as the term\n\xe2\x80\x9cemployee\xe2\x80\x9d was not defined in the Copyright Act, Congress was presumed to have intended\nthat it would be \xe2\x80\x9cunderstood in light of agency law, we have relied on the general common\nlaw of agency\xe2\x80\x9d (at 740). The court rejected approaches based on an analysis of the hiring\nparties \xe2\x80\x9cright to control\xe2\x80\x9d or \xe2\x80\x9cactual control\xe2\x80\x9d (at 742).\nApplying this standard, the Court elaborated on several factors relevant to a party\xe2\x80\x99s\nemployee status, but warned that \xe2\x80\x9cNo one of these factors is determinative.\xe2\x80\x9d At 725-753\nJustice Marshall said:\nIn determining whether a hired party is an employee under the general common law\nof agency, we consider the hiring party\xe2\x80\x99s right to control the manner and means by\nwhich the product is accomplished. Among the other factors relevant to this inquiry\nare the skill required; the source of the instrumentalities and tools; the location of\nthe work; the duration of the relationship between the parties; whether the hiring\nparty has the right to assign additional projects to the hired party; the extent of the\nhired party\xe2\x80\x99s discretion over when and how long to work; the method of payment;\nthe hired party\xe2\x80\x99s role in hiring and paying assistants; whether the work is part of the\nregular business of the hiring party; whether the hiring party is in business; the\nprovision of employee benefits; and the tax treatment of the hired party. See\nRestatement \xc2\xa7 220(2) (setting forth a nonexhaustive list of factors relevant to\ndetermining whether a hired party is an employee). No one of these factors is\ndeterminative.\nExamining the circumstances of this case in light of these factors, we agree with the\nCourt of Appeals that Reid was not an employee of CCNV but an independent\ncontractor. True, CCNV members directed enough of Reid\xe2\x80\x99s work to ensure that he\nproduced a sculpture that met their specifications. But the extent of control the\nhiring party exercises over the details of the product is not dispositive. Indeed, all\nthe other circumstances weigh heavily against finding an employment relationship.\nReid is a sculptor, a skilled occupation. Reid supplied his own tools. He worked in\nhis own studio in Baltimore, making daily supervision of his activities from\nWashington practicably impossible. Reid was retained for less than two months, a\nrelatively short period of time. During and after this time, CCNV had no right to\nassign additional projects to Reid. Apart from the deadline for completing the\n\n360\n\n\x0csculpture, Reid had absolute freedom to decide when and how long to work. CCNV\npaid Reid $15,000, a sum dependent on completion of a specific job, a method by\nwhich independent contractors are often compensated. Reid had total discretion in\nhiring and paying assistants. Creating sculptures was hardly regular business for\nCCNV. Indeed, CCNV is not a business at all. Finally, CCNV did not pay payroll or\nSocial Security taxes, provide any employee benefits, or contribute to\nunemployment insurance or workers\xe2\x80\x99 compensation funds.\n\nThe Supreme Court held Reid was an independent contractor, not an employee, so the work\nwas not \xe2\x80\x98made for hire\xe2\x80\x99 under \xc2\xa7101. As a result the copyright belonged to Reid as the author,\nat least in part. The court left open the possibility that CCNV was a coauthor of the\nsculpture. The court held that common law agency principles should be applied to decide\nwhether a work is made by an employee or an independent contractor.\nWhat is within the scope of employment?\nSection 228 of the Restatement Second, Agency, states that an employee\xe2\x80\x99s conduct is within\nthe scope of employment \xe2\x80\x9conly if: (a) it is the kind he is employed to perform; (b) it occurs\nsubstantially within the authorized time and space limits; [and] (c) it is actuated, at least in\npart, by a purpose to serve the master.\xe2\x80\x9d Restatement Second, Agency \xc2\xa7 228.\n\nNon-employee works made for hire\nUnder the 1909 Copyright Act, the ownership of commissioned works was a question of\ncontract law, but there was a general presumption that the copyright was intended to belong\nto a party who commissioned and paid for the work; conversely, an artist who created the\nwork at his or her own expense was presumed to be the owner. This is no longer the case\nunder the Copyright Act of 1976.\nWork by an independent contractor can in some cases qualify as a \xe2\x80\x9cwork made for hire\xe2\x80\x9d so\nlong as it was created at the instance and expense of the commissioning party. However, by\nstatute, only certain specific categories of specially ordered or commissioned works created\nby an independent contractor can qualify as \xe2\x80\x9cworks made for hire.\xe2\x80\x9d\nUnder the 1976 Act, \xe2\x80\x9cwork made for hire\xe2\x80\x9d is defined as either \xe2\x80\x9ca work prepared by an\nemployee within the scope of his or her employment\xe2\x80\x9d or as a work specially ordered or\ncommissioned if that work falls into one of the nine listed categories, and the parties\nexpressly agree in a written instrument signed by them that the work shall be considered a\nwork made for hire.\xe2\x80\x9d\n17 U.S. Code \xc2\xa7 101\nA \xe2\x80\x9cwork made for hire\xe2\x80\x9d is\xe2\x80\x94\n(1) a work prepared by an employee within the scope of his or her employment; or\n(2) a work specially ordered or commissioned for use as a contribution to a\ncollective work, as a part of a motion picture or other audiovisual work, as a\ntranslation, as a supplementary work, as a compilation, as an instructional text, as a\ntest, as answer material for a test, or as an atlas, if the parties expressly agree in a\nwritten instrument signed by them that the work shall be considered a work made\nfor hire. For the purpose of the foregoing sentence, a \xe2\x80\x9csupplementary work\xe2\x80\x9d is a\nwork prepared for publication as a secondary adjunct to a work by another author\n\n361\n\n\x0cfor the purpose of introducing, concluding, illustrating, explaining, revising,\ncommenting upon, or assisting in the use of the other work, such as forewords,\nafterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical\narrangements, answer material for tests, bibliographies, appendixes, and indexes, and\nan \xe2\x80\x9cinstructional text\xe2\x80\x9d is a literary, pictorial, or graphic work prepared for\npublication and with the purpose of use in systematic instructional activities.\n\nThe nine categories are: 87\n1.\n2.\n3.\n4.\n5.\n6.\n7.\n8.\n9.\n\na contribution to a collective work,\nas a part of a motion picture or other audiovisual work,\nas a translation,\nas a supplementary work,\nas a compilation,\nas an instructional text,\nas a test,\nas answer material for a test, or\nas an atlas\n\nIt is important to understand that if a work falls outside these categories, or is not the subject\nof a written agreement signed by the author and the entity commissioning the work, then\nthere will be no assignment by presumption or by implied or oral contract.\nNotice that since photographs and architectural drawings are not included in the categories\nset forth in the work made for hire definition, they do not qualify as works made for hire.\nConsequently, regardless of contractual terms to the contrary, the work for hire doctrine is\ninapplicable to non-employee photographers or architects.\n\nTransfer of copyright interests\nRequirements for transfer\nCopyrights are personal property. Like other forms of personal property, a copyright\ninterest may be transferred in whole or in part by any means of conveyance or by operation\nof law and may be bequeathed by will or pass as personal property by the applicable laws of\nintestate succession.\nHowever, Section 204(a) of the Copyright Act provides that \xe2\x80\x9ca transfer of copyright\nownership, other than by operation of law, is not valid unless an instrument of conveyance,\nor a note or memorandum of the transfer, is in writing and signed by the owner of the rights\nconveyed or such owner\xe2\x80\x99s duly authorized agent.\xe2\x80\x9d\n\xc2\xa7 101 hints at an interesting story. \xe2\x80\x9cIn determining whether any work is eligible to be considered a work\nmade for hire under paragraph (2), neither the amendment contained in section 1011(d) of the Intellectual\nProperty and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law\n106\xe2\x80\x93113, nor the deletion of the words added by that amendment\xe2\x80\x94(A) shall be considered or otherwise given\nany legal significance, or (B) shall be interpreted to indicate congressional approval or disapproval of, or\nacquiescence in, any judicial determination, by the courts or the Copyright Office. Paragraph (2) shall be\ninterpreted as if both section 2(a)(1) of the Work Made For Hire and Copyright Corrections Act of 2000 and\nsection 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by\nsection 1000(a)(9) of Public Law 106\xe2\x80\x93113, were never enacted, and without regard to any inaction or awareness\nby the Congress at any time of any judicial determinations.\xe2\x80\x9d\n87\n\n362\n\n\x0c17 U.S. Code \xc2\xa7 204 - Execution of transfers of copyright ownership\n(a) A transfer of copyright ownership, other than by operation of law, is not valid\nunless an instrument of conveyance, or a note or memorandum of the transfer, is in\nwriting and signed by the owner of the rights conveyed or such owner\xe2\x80\x99s duly\nauthorized agent.\n\nNote that Section 101 defines \xe2\x80\x9ctransfer of copyright ownership\xe2\x80\x9d to include both\nassignments and exclusive licenses. So, unless the interest being conveyed is a non-exclusive\nlicense, the conveyance must comply with the Copyright Act\xe2\x80\x99s writing requirement.\nAlso note that a grant of copyright, even if it purports to convey \xe2\x80\x9call right, title and interest,\xe2\x80\x9d\nis generally construed not to assign existing any right to sue that has already arisen by virtue\nof some third party\xe2\x80\x99s infringement prior to the assignment. However, such pre-existing\ncauses of action may be assigned by expressly including them in the grant.88\nSection 204(a) of the Copyright Act is not just the Copyright version of the Statute of Frauds.\nIt is in fact more stringent than the common law Statute of Frauds; the writing must be\nintended as a memorandum of contract communicated to the other party, and the equitable\ndefense of estoppel does not apply.\nFailed transfers and implied licenses\nEffects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990)\nEffects Assocs. v. Cohen illustrates a number of important features of the law relating to\nownership and transfer of copyright.\nEffects Associates had created special-effects footage for certain scenes in a movie that\nCohen produced. Although Cohen agreed to pay Effects Associates a fee for the footage,\nthe parties did not discuss the ownership of the copyright to the special-effects footage.\nWhen Cohen subsequently refused to pay the fee in full, the ensuing lawsuit centered on\nwhether Effects Associates had transferred ownership of the footage to Cohen.\nCiting \xc2\xa7 204, the court found that the lack of a written agreement to transfer any copyright\nmeant that Effects Associates had only granted Cohen an implied license to use the footage\nin his movie.\nA license was implied because\nEffects created a work at defendant\xe2\x80\x99s request and handed it over, intending that\ndefendant copy and distribute it. To hold that Effects did not at the same time\nconvey a license to use the footage in \xe2\x80\x9cThe Stuff\xe2\x80\x9d would mean that plaintiff\xe2\x80\x99s\ncontribution to the film was \xe2\x80\x9cof minimal value,\xe2\x80\x9d a conclusion that can\xe2\x80\x99t be squared\nwith the fact that Cohen paid Effects almost $56,000 for this footage.\n\nThe court concluded that Cohen therefore had committed no copyright infringement but\nmight nonetheless face liability for a breach of contract.\nThe short sequence of footage prepared at request of motion picture producer would\nprobably have been assigned in total under the 1909 Act, but there was no transfer in this\ncase because of the strict writing requirement in \xc2\xa7 204. This lack of writing was not an\n88\n\nOskar Systems, LLC v. Club Speed, Inc., 745 F. Supp. 2d 1155 (C.D. Cal. 2010).\n\n363\n\n\x0cobstacle to an implied nonexclusive license to incorporate the footage, and distribute it, as\npart of the film.\n\nFractured ownership \xe2\x80\x93 copyright divisability\nThe 1976 Act abandoned the concept of indivisibility of copyright ownership. The owner of\nany of the exclusive rights under Section 106 is the Copyright owner for all relevant\npurposes. Most importantly, the owner of a single right under 106 can bring an action for\nthe infringement of that right without the cooperation of the owners of the other 106 rights.\n\xc2\xa7 201 (d) Transfer of Ownership.\xe2\x80\x94\n(1) The ownership of a copyright may be transferred in whole or in part by any\nmeans of conveyance or by operation of law, and may be bequeathed by will or pass\nas personal property by the applicable laws of intestate succession.\n(2) Any of the exclusive rights comprised in a copyright, including any subdivision\nof any of the rights specified by section 106, may be transferred as provided by\nclause (1) and owned separately. The owner of any particular exclusive right is\nentitled, to the extent of that right, to all of the protection and remedies accorded to\nthe copyright owner by this title.\n17 U.S. Code \xc2\xa7 101. Definitions\nA \xe2\x80\x9ctransfer of copyright ownership\xe2\x80\x9d is an assignment, mortgage, exclusive license,\nor any other conveyance, alienation, or hypothecation of a copyright or of any of\nthe exclusive rights comprised in a copyright, whether or not it is limited in time or\nplace of effect, but not including a nonexclusive license.\n\nThe divisibility of copyright rights has some important implications. Given that Section 101\nrecognizes an exclusive license as a form of transfer of ownership, should exclusive licenses\nthemselves be transferable and sub licensable by default?\nGardner v. Nike 279 F.3d 774, 780 (9th Cir. 2002)\nCircuit Judge Ferguson\nAppellants Michael Gardner and Bien Licensing Agency, Inc. (collectively referred to\nas \xe2\x80\x9cAppellants\xe2\x80\x9d) appeal the District Court\xe2\x80\x99s grant of summary judgment to Appellee\nNike, Inc. The District Court held that Appellants lacked standing because the\nlicensee, Sony Music Entertainment Corporation, did not have the right to transfer\nits rights to Gardner under the exclusive license with the licensor, Nike, under the\nCopyright Act of 1976. Although we have previously addressed this issue under the\nCopyright Act of 1909, this is a case of first impression under the Copyright Act of\n1976.\nBACKGROUND\nA. Factual History\nIn 1992, Nike and Sony entered into a licensing agreement involving a Nike-created\ncartoon character called MC Teach. In exchange for fifteen percent (15%) of profits\nearned from any use of MC Teach in merchandise other than records, Nike\ntransferred the exclusive, perpetual, worldwide right to Sony to use MC Teach:\n364\n\n\x0con and in the packaging of phonograph records (the \xe2\x80\x98Records\xe2\x80\x99), in publicity,\nadvertising and allied exploitation of the Records, in television programs or motion\npictures embodying the musical compositions embodied on the records, on\neducational materials and on clothing....\n\nThe agreement also stated that Nike \xe2\x80\x9cshall own the copyright in the Material and any\npublished copy of the Material ... shall bear the following notice: 1992 Nike, Inc.\xe2\x80\x9d It\nis undisputed that the agreement contemplated an exclusive license. The agreement\nwas silent as to Sony\xe2\x80\x99s right to assign its rights under the exclusive license.\nIn June 1996, Sony assigned all its rights in the exclusive license to Gardner, on a\nquitclaim basis, in exchange for a share of the proceeds derived from MC Teach. As\na result of Appellants\xe2\x80\x99 use of MC Teach, Nike threatened legal action against Sony,\nAppellants, and Appellants\xe2\x80\x99 licensees. In response to these threats, Appellants filed\nsuit in state court seeking declaratory relief.\nIn the present appeal, Appellants argue that the District Court erred in holding that\nthe Copyright Act of 1976 (\xe2\x80\x9c1976 Act\xe2\x80\x9d) does not permit an exclusive licensee to\ntransfer its rights without the original licensor\xe2\x80\x99s consent, absent contractual\nprovisions to the contrary. Because the transferability of an exclusive license under\nthe 1976 Act is a question of first impression, the state of the law prior to 1976 is\npertinent to our inquiry.\nA. Copyright Act of 1909\nUnder the Copyright Act of 1909 (\xe2\x80\x9c1909 Act\xe2\x80\x9d), copyright licenses (whether exclusive\nor not) were \xe2\x80\x9cnot transferable as a matter of law.\xe2\x80\x9d Harris v. Emus Records Corp., 734\nF.2d 1329, 1333 (9th Cir. 1984). Unlike an assignee, a licensee had no right to resell\nor sublicense the rights acquired unless he had been expressly authorized so to do.\nThe distinction between licenses and assignments was based on both the doctrine of\nindivisibility and the policy concerns underlying the 1909 Act.\nUnder the doctrine of indivisibility, a copyright owner possessed an indivisible\n\xe2\x80\x9cbundle of rights,\xe2\x80\x9d which were incapable of assignment in parts. Thus, an\nassignment included the totality of rights commanded by copyright. Anything less\nthan an assignment was considered a license. The purpose of the doctrine was to\nprotect alleged infringers from the harassment of successive law suits. This result was\nachieved because only the copyright proprietor (which would include an assignee but\nnot a licensee) had standing to bring an infringement action. As discussed by the\nDistrict Court, the doctrine of indivisibility created many problems for copyright\nlicensees, including the licensee\xe2\x80\x99s lack of standing to bring an infringement action\nand the exclusive licensee\xe2\x80\x99s inability to register his license.\nIn addition, the distinction between assignments and licenses as to transferability\nunder the 1909 Act was also based on policy considerations. In particular, the\nlicensee\xe2\x80\x99s inability to resell or sublicense the rights acquired without the express\nconsent of the original licensor struck a balance between two competing interests \xe2\x80\x94\n\xe2\x80\x9c[the] strong reluctance to allow a monopolization of works or compositions\xe2\x80\x9d and\n\xe2\x80\x9cthe necessity of preserving the rights of authors and composers in order to\nstimulate creativity.\xe2\x80\x9d Harris, 734 F.2d at 1334.\n\n365\n\n\x0cIn Harris, we addressed the question of whether a copyright license was transferable\nunder the 1909 Act. We held that a copyright license was not transferable, relying on\nthe legislative history, underlying policy concerns, and analogous rules in patent law.\nId. at 1333-34 (\xe2\x80\x9cWhere precedent in copyright cases is lacking, it is appropriate to\nlook for guidance to patent law \xe2\x80\x98because of the historic kinship between patent law\nand copyright law.\xe2\x80\x99\xe2\x80\x9c). We emphasized that, \xe2\x80\x9cby licensing rather than assigning his\ninterest in the copyright, the owner reserves certain rights, including that of\ncollecting royalties. His ability to monitor use would be jeopardized by allowing\nsublicensing without notice.\xe2\x80\x9d Id. at 1334.\nB. Copyright Act of 1976\nThe 1976 Act eradicated much of the doctrine of indivisibility as it applied to\nexclusive licenses. First, \xc2\xa7 101 defines the \xe2\x80\x9ctransfer of copyright ownership\xe2\x80\x9d as \xe2\x80\x9can\nassignment, mortgage, exclusive license, or any other conveyance, alienation, or\nhypothecation of a copyright or of any of the exclusive rights comprised in a\ncopyright, whether or not it is limited in time or place of effect, but not including a\nnonexclusive license.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101 (emphasis added). This definition calls into\nquestion the distinctions that were previously drawn between an assignment and an\nexclusive license under the indivisibility doctrine. Second, \xc2\xa7 201(d)(2) provides that\n\xe2\x80\x9cany of the exclusive rights comprised in a copyright, including any subdivision of\nany of the rights specified by section 106, may be transferred ... and owned\nseparately.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 201(d)(2). Section 201(d)(2) constitutes \xe2\x80\x9cthe first explicit\nstatutory recognition of the principle of divisibility of copyright.\xe2\x80\x9d 17 U.S.C.A \xc2\xa7 201\nnote (West 1996) (Notes of Comm. on Judiciary, H. Rep. No. 94-1476).\nThe 1976 Act addressed many of the aforementioned problems faced by exclusive\nlicensees under the doctrine of indivisibility. For example, an exclusive licensee now\nhas the right to sue for infringement of the assigned right in his own name. Despite\nthe explicit changes in the 1976 Act, this case presents the issue of whether the 1976\nAct eliminates the limitation on an exclusive licensee\xe2\x80\x99s right to re-sell or sublicense\nunder our interpretation of the 1909 Act.\nC. The Effect of the Copyright Act of 1976 on an Exclusive Licensee\xe2\x80\x99s Right to\nTransfer\nAppellants contend that the language in the 1976 Act places an exclusive licensee on\npar with an owner or assignee with the full rights of an owner or assignee, including\nthe right to transfer without the explicit consent of the copyright owner.\nInitially, Appellants point to 17 U.S.C. \xc2\xa7 101, which states that a \xe2\x80\x9ctransfer of\ncopyright ownership is an assignment, mortgage, exclusive license, or any other\nconveyance ... of any of the exclusive rights comprised in a copyright.\xe2\x80\x9d Thus,\nAppellants argue that Sony, as exclusive licensee, was the owner of MC Teach with\nall of the rights afforded to a copyright owner.\nAppellants then assert that, under 17 U.S.C. \xc2\xa7 201, Sony could freely transfer these\nrights because there were no contractual restrictions requiring Nike\xe2\x80\x99s consent. In\nsupport of this argument, Appellants cite \xc2\xa7 201(d)(1), which states that \xe2\x80\x9cownership\nof a copyright may be transferred in whole or in part by any means of conveyance or\n\n366\n\n\x0cby operation of law....\xe2\x80\x9d Appellants next cite to \xc2\xa7 201(d)(2) for support that an owner\nof an exclusive right must have the right to transfer it.\nAs discussed by the District Court, the crux of this case is the appropriate\ninterpretation of 17 U.S.C. \xc2\xa7 201. The District Court rejected Appellants\xe2\x80\x99 argument,\nfinding that \xc2\xa7 201(d)(1) did not apply to the present case and that \xc2\xa7 201(d)(2) only\nconferred the \xe2\x80\x9cprotections and remedies\xe2\x80\x9d explicitly included in the 1976 Act, but not\nthe rights. We agree with the conclusions reached by the District Court for the\nreasons discussed below.\n1. 17 U.S.C. \xc2\xa7 201(d)(1)\nSection 201(d)(1) provides:\n(1) The ownership of a copyright may be transferred in whole or in part by any\nmeans of conveyance or by operation of law, and may be bequeathed by will or pass\nas personal property by the applicable laws of intestate succession.\n\n17 U.S.C. \xc2\xa7 201(d)(1).\nThe District Court correctly determined that \xc2\xa7 201(d)(1) addresses the\napportionability of the copyright owner\xe2\x80\x99s interest in the totality of the copyright.\nSection 201(d)(1) enables the owner to transfer any fraction of his or her ownership\ninterest to another party, thereby making that party a whole or joint owner. Read\napart from \xc2\xa7 201(d)(2), \xc2\xa7 201(d)(1) could be interpreted as extending this right of\ntransfer to exclusive licensees such as Sony, especially since \xc2\xa7 101 defines \xe2\x80\x9ctransfer of\ncopyright ownership\xe2\x80\x9d to include exclusive licenses. However, the limiting language in\n\xc2\xa7 201(d)(2), as discussed next, indicates that this section does not, in fact, cover\ntransfers by exclusive licensees or owners of a particular exclusive right.\n2. 17 U.S.C. \xc2\xa7 201(d)(2)\nThe plain language of \xc2\xa7 201(d)(2) limits the rights of an exclusive licensee to those\n\xe2\x80\x9cprotections and remedies\xe2\x80\x9d afforded in the 1976 Act. Section 201(d)(2) provides:\n(2) Any of the exclusive rights comprised in a copyright, including any subdivision\nof any of the rights specified by section 106, may be transferred as provided by\nclause (1) and owned separately. The owner of any particular exclusive right is\nentitled, to the extent of that right, to all of the protection and remedies accorded to\nthe copyright owner by this title.\n\n17 U.S.C. \xc2\xa7 201(d)(2).\nAppellants contend that, if a licensee of exclusive rights under the copyright is\ncharacterized by the 1976 Act as an \xe2\x80\x9cowner\xe2\x80\x9d of those rights under \xc2\xa7 201(d)(2), then\nit must follow that such \xe2\x80\x9cownership\xe2\x80\x9d carries with it an unrestricted right to freely\ntransfer the license. However, Appellants\xe2\x80\x99 argument ignores the plain language of \xc2\xa7\n201(d)(2), which states that the owner of such exclusive rights is entitled only to \xe2\x80\x9cthe\nprotection and remedies\xe2\x80\x9d accorded the copyright owner under the 1976 Act. This\nexplicit language limits the rights afforded to an owner of exclusive rights. Based on\nbasic principles of statutory construction, the specific language of \xc2\xa7 201(d)(2) is given\nprecedence over the more general language of \xc2\xa7 101 and \xc2\xa7 201(d)(1).\nFurther, as stated by the District Court, Congress was aware that prior to the 1976\nAct, licensees could not sublicense their right in an exclusive license [without the\n367\n\n\x0cexpress consent of the licensor]. With that knowledge in hand, however, Congress\nchose to limit exclusive licensees \xe2\x80\x98benefits\xe2\x80\x99 under the 1976 Act to \xe2\x80\x9cprotection and\nremedies.\xe2\x80\x9d\nIn sum, both parties contend that the plain language of the 1976 Act supports their\nview. There are weaknesses in both of their arguments because neither the 1909 Act\nnor the 1976 Act explicitly address an exclusive licensee\xe2\x80\x99s right to transfer, absent the\nconsent of the licensor. Although neither party\xe2\x80\x99s plain language arguments is\ndispositive, the fact that Congress chose not to explicitly address this issue in the\n1976 Act and the limiting \xe2\x80\x9cprotection and remedies\xe2\x80\x9d language of \xc2\xa7 201(d)(2)\nindicates that the state of the law remains unchanged. Thus, we hold that the 1976\nAct does not allow a copyright licensee to transfer its rights under an exclusive\nlicense, without the consent of the original licensor.\n3. Policy Considerations\nMoreover, the policy considerations, which influenced this Circuit\xe2\x80\x99s decision under\nthe 1909 Act, counsel the same conclusion in the present case, especially since\nneither the 1909 or 1976 Act explicitly addresses this issue. In Harris, we relied on\nthe legislative history of the 1909 Act, patent law, and policy considerations. 734\nF.2d at 1333-34; see also In re CFLC, Inc., 89 F.3d 673, 679 (9th Cir.1996) (relying\non the federal patent policy concern that the patent holder have the ability to control\nthe identity of licensees and holding that nonexclusive patent licenses are not\nassignable).\nAs discussed in Harris, there are strong policy reasons to place the burden on the\nlicensee to get the licensor\xe2\x80\x99s explicit consent either during or after contract\nnegotiations. Placing the burden on the licensee assures that the licensor will be able\nto monitor the use of the copyright. Harris, 734 F.2d at 1334 (\xe2\x80\x9c[The licensor\xe2\x80\x99s] ability\nto monitor use would be jeopardized by allowing sublicensing without notice.\xe2\x80\x9d). In\nthis case, Nike, the copyright owner, agreed to allow Sony the use of MC Teach in a\nbroad range of products. Sony assigned this right to Gardner without receiving the\nconsent of Nike. Consequently, Nike had no role in determining whether Gardner\nwould be an appropriate sublicensee.\nIt is easy to imagine the troublesome and potentially litigious situations that could\narise from allowing the original licensor to be excluded from the negotiations with a\nsublicensee. For example, what if the sublicensee was on the verge of bankruptcy or\nwhat if the original licensor did not agree that the sublicensee\xe2\x80\x99s materials use of the\ncopyright fell within the original exclusive license?\nRequiring the licensee to get explicit consent from the licensor strikes the balance\nbetween the competing interests that underlie the 1976 Act and copyright law in\ngeneral. On the one hand, the 1976 Act reflects Congress\xe2\x80\x99 growing awareness of the\nneed for free alienability and divisibility. Yet, both Congress and this Circuit have\nalways been aware of the necessity to preserve the rights and control of the owners\nand creators. In order to reach the balance between these interests, we hold that,\nunder the 1976 Act, an exclusive licensee has the burden of obtaining the licensor\xe2\x80\x99s\nconsent before it may assign its rights, absent explicit contractual language to the\ncontrary.\n\n368\n\n\x0cCONCLUSION\nBecause the 1976 Act did not change the law as to the assignability of exclusive\nlicenses, we hold that federal law governs the present case and that exclusive licenses\nare only assignable with the consent of the licensor. Thus, we affirm the District\nCourt\xe2\x80\x99s grant of summary judgment and its determination that Appellants lacked\nstanding to bring this declaratory relief action. The other issue in this appeal is\ndisposed of in a separate memorandum disposition.\nNotes and questions\n(1) In Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2002), the Ninth Circuit held that an\nexclusive license may only be assigned or sublicensed \xe2\x80\x9cwith the consent of the licensor.\xe2\x80\x9d\nGardner only establishes a default rule, and however that default was set, a licensor would\nhave the ability to expressly permit or forbid subsequent transfer and sublicensing .\n(2) Not everyone agrees with the Ninth Circuit in Gardner. For example, the court in In re\nGolden Books Family Entertainment, Inc., 269 B.R. 311 (Bankr. D. Del. 2001) noted at 318:\nIt is difficult to understand why the Gardner court held that the phrase \xe2\x80\x98protections\nand remedies\xe2\x80\x99 confers on exclusive licensees the particular rights of copyright\nowners that are set forth in Section 501(b), but does not confer to exclusive\nlicensees the rights of copyright owners, such as the right to freely assign, that are\nset forth in \xc2\xa7 106.\xe2\x80\x9d\n\n(3) In Davis v. Blige, 505 F.3d 90, 99 n.10 (2d Cir. 2007), the Second Circuit said that \xe2\x80\x9cthe\ndifferences between an \xe2\x80\x98exclusive\xe2\x80\x99 license and an assignment or transfer of copyright\nownership interest have diminished to the point that the terms are\nnearly synonymous.\xe2\x80\x9d Does this track with the Ninth Circuit\xe2\x80\x99s opinion in Gardner v. Nike?\n\nUnited States rules on the termination of transfers\nThe Copyright Act of 1976 extending the duration of copyright and introduced a\ntermination right for authors and their statutory successors, allowing them to opt out of their\ncontractual agreements after a period of 35 years. The 1976 Act actually contains two\ntermination provisions, one applying to transfers made before January 1, 1978 that convey\nan interest in the renewal term and the other applying to transfers made after January 1978.\nPost-1978 Grants\nUnder Section 203, the author or her statutory heirs can terminate a transfer made after\nJanuary 1, 1978, at any point within a five-year window beginning, in most cases, 35 years\nafter the initial transfer.89 In order to terminate, the terminating party must serve notice no\nless than 2 years and no more than 10 years from the termination date.\n\nHowever, if the grant covers the right of publication, the five-year period begins either at the end of 35 years\nfrom the date of publication of the work under the grant or at the end of 40 years from the date of execution\nof the grant, whichever term ends earlier.\xc2\xa7 203(a)(3).\n89\n\n369\n\n\x0cThese termination rights cannot be waived: \xc2\xa7 203(a)(5) provides that termination of the grant\nmay be effected notwithstanding any agreement to the contrary, including an agreement to\nmake a will or to make any future grant.\nFor example, if the grant was made on April 1, 2000 then it could be terminated anywhere\nbetween April 2, 2035 and April 1, 2040. Accordingly, the very first day that notice could be\nserved would be April 2, 2025 and the last possible day notice could be served would be\nMarch 31, 2038.\nPre-1978 Grants\nThe termination of transfers made before the effective date of the Copyright Act of 1976, i.e.\nJanuary 1, 1978, are controlled by Section 304(c) and 304(d) of the Copyright Act. These\nprovisions operate a little differently to Section 203, and to understand why requires a quick\nreview of the way the term of copyright protection has changed over the years. Under the\nCopyright Act of 1909 copyright began when a work was registered and lasted for an initial\nterm of 28 years; copyright could then be renewed for an additional 28 year term.\nUnder the 1909 Act, the author was entitled to the renewal term even if she had transferred\nall of her rights initially. Section 24 of the Copyright Act of 1909 provided as follows:\nSection 24 of the Copyright Act of 1909\n\xe2\x80\x9c[T]he author of [a copyrighted] work, if still living, or the widow, widower, or\nchildren of the author, if the author be not living, or if such author, widow, widower,\nor children be not living, then the author\xe2\x80\x99s executors, or in the absence of a will, his\nnext of kin shall be entitled to a renewal and extension of the copyright in such\nwork for a further term of twenty-eight years when application for such renewal and\nextension shall have been made to the copyright office and duly registered therein\nwithin one year prior to the expiration of the original term of copyright.\xe2\x80\x9d\n\nThe 1976 Act fundamentally changed the way the term of copyright protection was\ncalculated. Under the 1976 Act, copyright vested from the moment a work is created (i.e.\nfixed in a material form) and lasted for a single term of the life of the author plus 50 years. In\n1998 this term was extended, even for works that already existed, by another 20 years so that\nworks created under the 1976 get a copyright term of the life of the author plus 70 years. To\nbridge the gap between the 1909 Act regime and the new life plus 50 regime, transitional\nprovisions were enacted as part of the 1976 Act. Works created under the 1909 Act but\nwhose terms had not expired by 1978 were entitled to a longer second term \xe2\x80\x93 an additional\n19 years under the 1976 Act and then an additional 20 years under the Copyright Term\nExtension Act of 1988.\nSo the termination of transfer provisions in Section 203 and Section 304 have quite different\nobjectives. Section 203 gives the author or her statutory heirs a nontransferable right to\nterminate 35 years after a grant, where the grant was executed by the author during the\nunitary term. Section 304 gives the author or her statutory heirs a nontransferable right to\nterminate a grant concerning the extensions to the renewal term, where the grant was\nexecuted by the author or statutory heir to the renewal term.\nSection 304 allows the author or her statutory heirs to terminate the last 39 years of a grant\nmade by the author prior to 1978. Termination can occur within a five-year window\nbeginning at the end of the 1956 year from the date of the copyright \xe2\x80\x93 usually the date of\n\n370\n\n\x0cpublication \xe2\x80\x93 and the author or her heirs must serve notice no less than 2 years and not\nmore than 10 years before the termination date.\nFor example, consider a book published on March 1, 1950 for which the author sold the\nmotion picture rights on May 1, 1970. Assuming copyright was when[with? instead?] you for\na second term in 1978, the grant could be terminated in the five-year window between\nMarch 2006 and March 2011. The corresponding earliest and latest notice states would be\nMarch 2, 1996 and March 1, 2009.\nSection 304(d) contains a special provision permitting the recapture of the 20 years added by\nthe Sonny Bono copyright term extension act. And there is an example up on the slide.[?]\nTerminated derivatives\nOne significant issue under the termination of transfers regime is what happens to\nauthorized derivative works when the right to make a derivative work is terminated? For\nterminated post-1978 grants, Section 203(b)(1) provides as follows:\n17 U.S. Code \xc2\xa7 203(b)(1)\nA derivative work prepared under authority of the grant before its termination may\ncontinue to be utilized under the terms of the grant after its termination, but this\nprivilege does not extend to the preparation after the termination of other derivative\nworks based upon the copyrighted work covered by the terminated grant.\n\nFor terminated pre-1978 grants Section 304(c)(6)(A) says exactly the same thing.\nThe case law interpreting this provision is sparse, but the language in the statute would seem\nto mean that a licensee could continue to exploit derivatives created under license before\ntermination, but the licensee could not make new versions of those derivatives. The\nSupreme Court tangentially addressed the issue in Stewart v. Abend 495 U.S. 207 (1990).\nStewart v. Abend 495 U.S. 207 (1990)\nJustice O\xe2\x80\x99Connor delivered the opinion of the Court.\nThe author of a pre-existing work may assign to another the right to use it in a\nderivative work. In this case the author of a pre-existing work agreed to assign the\nrights in his renewal copyright term to the owner of a derivative work, but died\nbefore the commencement of the renewal period. The question presented is whether\nthe owner of the derivative work infringed the rights of the successor owner of the\npre-existing work by continued distribution and publication of the derivative work\nduring the renewal term of the pre-existing work.\nI\nCornell Woolrich authored the story \xe2\x80\x9cIt Had to Be Murder,\xe2\x80\x9d which was first\npublished in February 1942 in Dime Detective Magazine. The magazine\xe2\x80\x99s publisher,\nPopular Publications, Inc., obtained the rights to magazine publication of the story\nand Woolrich retained all other rights. Popular Publications obtained a blanket\ncopyright for the issue of Dime Detective Magazine in which \xe2\x80\x9cIt Had to Be Murder\xe2\x80\x9d\nwas published.\n\n371\n\n\x0cThe Copyright Act of 1909 (1909 Act) provided authors a 28-year initial term of\ncopyright protection plus a 28-year renewal term. See 17 U.S.C. \xc2\xa7 24 (1976 ed.). In\n1945, Woolrich agreed to assign the rights to make motion picture versions of six of\nhis stories, including \xe2\x80\x9cIt Had to Be Murder,\xe2\x80\x9d to B. G. De Sylva Productions for\n$9,250. He also agreed to renew the copyrights in the stories at the appropriate time\nand to assign the same motion picture rights to De Sylva Productions for the 28-year\nrenewal term. In 1953, actor Jimmy Stewart and director Alfred Hitchcock formed a\nproduction company, Patron, Inc., which obtained the motion picture rights in \xe2\x80\x9cIt\nHad to Be Murder\xe2\x80\x9d from De Sylva\xe2\x80\x99s successors in interest for $10,000.\nIn 1954, Patron, Inc., along with Paramount Pictures, produced and distributed\n\xe2\x80\x9cRear Window,\xe2\x80\x9d the motion picture version of Woolrich\xe2\x80\x99s story \xe2\x80\x9cIt Had to Be\nMurder.\xe2\x80\x9d Woolrich died in 1968 before he could obtain the rights in the renewal\nterm for petitioners as promised and without a surviving spouse or child. He left his\nproperty to a trust administered by his executor, Chase Manhattan Bank, for the\nbenefit of Columbia University. On December 29, 1969, Chase Manhattan Bank\nrenewed the copyright in the \xe2\x80\x9cIt Had to Be Murder\xe2\x80\x9d story pursuant to 17 U.S.C. \xc2\xa7 24\n(1976 ed.). Chase Manhattan assigned the renewal rights to respondent Abend for\n$650 plus 10% of all proceeds from exploitation of the story.\n\xe2\x80\x9cRear Window\xe2\x80\x9d was broadcast on the ABC television network in 1971. Respondent\nthen notified petitioners Hitchcock (now represented by co-trustees of his will),\nStewart, and MCA Inc., the owners of the \xe2\x80\x9cRear Window\xe2\x80\x9d motion picture and\nrenewal rights in the motion picture, that he owned the renewal rights in the\ncopyright and that their distribution of the motion picture without his permission\ninfringed his copyright in the story. Hitchcock, Stewart, and MCA nonetheless\nentered into a second license with ABC to rebroadcast the motion picture. In 1974,\nrespondent filed suit against these same petitioners, and others, in the United States\nDistrict Court for the Southern District of New York, alleging copyright\ninfringement. Respondent dismissed his complaint in return for $25,000.\nThree years later, the United States Court of Appeals for the Second Circuit decided\nRohauer v. Killiam Shows, Inc., 551 F. 2d 484 (1977), in which it held that the owner of\nthe copyright in a derivative work may continue to use the existing derivative work\naccording to the original grant from the author of the pre-existing work even if the\ngrant of rights in the pre-existing work lapsed. Several years later, apparently in\nreliance on Rohauer, petitioners re-released the motion picture in a variety of media,\nincluding new 35 and 16 millimeter prints for theatrical exhibition in the United\nStates, videocassettes, and videodiscs. They also publicly exhibited the motion\npicture in theaters, over cable television, and through videodisc and videocassette\nrentals and sales.\nRespondent then brought the instant suit in the United States District Court for the\nCentral District of California against Hitchcock, Stewart, MCA, and Universal Film\nExchanges, a subsidiary of MCA and the distributor of the motion picture.\nRespondent\xe2\x80\x99s complaint alleges that the re-release of the motion picture infringes his\ncopyright in the story because petitioners\xe2\x80\x99 right to use the story during the renewal\nterm lapsed when Woolrich died before he could register for the renewal term and\ntransfer his renewal rights to them. Respondent also contends that petitioners have\ninterfered with his rights in the renewal term of the story in other ways. He alleges\n372\n\n\x0cthat he sought to contract with Home Box Office (HBO) to produce a play and\ntelevision version of the story, but that petitioners wrote to him and HBO stating\nthat neither he nor HBO could use either the title, \xe2\x80\x9cRear Window\xe2\x80\x9d or \xe2\x80\x9cIt Had to Be\nMurder.\xe2\x80\x9d Respondent also alleges that petitioners further interfered with the renewal\ncopyright in the story by attempting to sell the right to make a television sequel and\nthat the re-release of the original motion picture itself interfered with his ability to\nproduce other derivative works.\nII\nA\nPetitioners would have us read into the Copyright Act a limitation on the statutorily\ncreated rights of the owner of an underlying work. They argue in essence that the\nrights of the owner of the copyright in the derivative use of the pre-existing work are\nextinguished once it is incorporated into the derivative work, assuming the author of\nthe pre-existing work has agreed to assign his renewal rights. Because we find no\nsupport for such a curtailment of rights in either the 1909 Act or the 1976 Act, or in\nthe legislative history of either, we affirm the judgment of the Court of Appeals.\nPetitioners and amicus Register of Copyrights assert, as the Court of Appeals\nassumed, that \xc2\xa7 23 of the 1909 Act, 17 U.S.C. \xc2\xa7 24 (1976 ed.), and the case law\ninterpreting that provision, directly control the disposition of this case. Respondent\ncounters that the provisions of the 1976 Act control, but that the 1976 Act reenacted \xc2\xa7 24 in \xc2\xa7 304 and, therefore, the language and judicial interpretation of \xc2\xa7 24\nare relevant to our consideration of this case. Under either theory, we must look to\nthe language of and case law interpreting \xc2\xa7 24.\nThe right of renewal found in \xc2\xa7 24 provides authors a second opportunity to obtain\nremuneration for their works. Section 24 provides:\n\xe2\x80\x9c[T]he author of [a copyrighted] work, if still living, or the widow, widower, or\nchildren of the author, if the author be not living, or if such author, widow, widower,\nor children be not living, then the author\xe2\x80\x99s executors, or in the absence of a will, his\nnext of kin shall be entitled to a renewal and extension of the copyright in such\nwork for a further term of twenty-eight years when application for such renewal and\nextension shall have been made to the copyright office and duly registered therein\nwithin one year prior to the expiration of the original term of copyright.\xe2\x80\x9d 17 U. S. C.\n\xc2\xa7 24 (1976 ed.)\n\nSince the earliest copyright statute in this country, the copyright term of ownership\nhas been split between on original term and a renewal term. Originally, the renewal\nwas intended merely to serve as an extension of the original term; at the end of the\noriginal term, the renewal could be effected and claimed by the author, if living, or by\nthe author\xe2\x80\x99s executors, administrators, or assigns. See Copyright Act of May 31, 1790,\nch. XV, \xc2\xa7 1, 1 Stat. 124. In 1831, Congress altered the provision so that the author\ncould assign his contingent interest in the renewal term, but could not, through his\nassignment, divest the rights of his widow or children in the renewal term. See\nCopyright Act of February 3, 1831, ch. XVI, 4 Stat. 436. The 1831 renewal\nprovisions created \xe2\x80\x9can entirely new policy, completely dissevering the title, breaking\nup the continuance . . . and vesting an absolutely new title eo nomine in the persons\ndesignated.\xe2\x80\x9d White-Smith Music Publishing Co. v. Goff, 187 F. 247, 250 (CA1 1911). In\n373\n\n\x0cthis way, Congress attempted to give the author a second chance to control and\nbenefit from his work. Congress also intended to secure to the author\xe2\x80\x99s family the\nopportunity to exploit the work if the author died before he could register for the\nrenewal term. The evident purpose of the renewal provision is to provide for the\nfamily of the author after his death. Since the author cannot assign his family\xe2\x80\x99s\nrenewal rights, it takes the form of a compulsory bequest of the copyright to the\ndesignated persons.\nIn its debates leading up to the Copyright Act of 1909, Congress elaborated upon the\npolicy underlying a system comprised of an original term and a completely separate\nrenewal term. The renewal term permits the author, originally in a poor bargaining\nposition, to renegotiate the terms of the grant once the value of the work has been\ntested. \xe2\x80\x9cUnlike real property and other forms of personal property, [a copyright] is\nby its very nature incapable of accurate monetary evaluation prior to its exploitation.\xe2\x80\x9d\nNimmer on Copyright \xc2\xa7 9.02 (1989) (hereinafter Nimmer).90 \xe2\x80\x9cIf the work proves to\nbe a great success and lives beyond the term of twenty-eight years, . . . it should be\nthe exclusive right of the author to take the renewal term, and the law should be\nframed . . . so that [the author] could not be deprived of that right.\xe2\x80\x9d House Report at\n14. With these purposes in mind, Congress enacted the renewal provision of the\nCopyright Act of 1909, 17 U.S.C. \xc2\xa7 24 (1976 ed.). With respect to works in their\noriginal or renewal term as of January 1, 1978, Congress retained the two-term\nsystem of copyright protection in the 1976 Act. See 17 U.S.C. \xc2\xa7\xc2\xa7 304(a) and (b) (1988\ned.) (incorporating language of 17 U.S.C. \xc2\xa7 24 (1976 ed.)).\nApplying these principles in Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373\n(1960), this Court held that when an author dies before the renewal period arrives,\nhis executor is entitled to the renewal rights, even though the author previously\nassigned his renewal rights to another party. \xe2\x80\x9cAn assignment by an author of his\nrenewal rights made before the original copyright expires is valid against the world, if\nthe author is alive at the commencement of the renewal period. Fred Fisher Co. v. M.\nWitmark & Sons, 318 U.S. 643, so holds.\xe2\x80\x9d Id., at 375. If the author dies before that\ntime, the \xe2\x80\x9cnext of kin obtain the renewal copyright free of any claim founded upon\nan assignment made by the author in his lifetime. These results follow not because\nthe author\xe2\x80\x99s assignment is invalid but because he had only an expectancy to assign;\nand his death, prior to the renewal period, terminates his interest in the renewal\nwhich by \xc2\xa7 24 vests in the named classes.\xe2\x80\x9d Ibid.\nThe legislative history of the 1909 Act echoes this view, \xe2\x80\xa6 the renewal provisions\nwere intended to give the author a second chance to obtain fair remuneration for his\ncreative efforts and to provide the author\xe2\x80\x99s family a \xe2\x80\x9cnew estate\xe2\x80\x9d if the author died\nbefore the renewal period arrived.\nAn author holds a bundle of exclusive rights in the copyrighted work, among them\nthe right to copy and the right to incorporate the work into derivative works. By\nassigning the renewal copyright in the work without limitation, as in Miller Music, the\nEditorial comment: Although it doubtless true that estimating the value of copyrighted works is usually more\nof a guess than estimating the value of real property. The notion that there is some inherent categorical\ndifference no sense. All estimations of value are based on expected market returns. Whether something is\n\xe2\x80\x9c[]capable of accurate monetary evaluation\xe2\x80\x9d depends on the specifics of the market for the thing in question.\n90\n\n374\n\n\x0cauthor assigns all of these rights. After Miller Music, if the author dies before the\ncommencement of the renewal period, the assignee holds nothing. If the assignee of\nall of the renewal rights holds nothing upon the death of the assignor before arrival\nof the renewal period, then, a fortiori, the assignee of a portion of the renewal rights,\ne.g., the right to produce a derivative work, must also hold nothing. Therefore, if the\nauthor dies before the renewal period, then the assignee may continue to use the\noriginal work only if the author\xe2\x80\x99s successor transfers the renewal rights to the\nassignee. This is the rule adopted by the Court of Appeals below and advocated by\nthe Register of Copyrights. Application of this rule to this case should end the\ninquiry. Woolrich died before the commencement of the renewal period in the story,\nand, therefore, petitioners hold only an unfulfilled expectancy. Petitioners have been\n\xe2\x80\x9cdeprived of nothing. Like all purchasers of contingent interests, [they took] subject\nto the possibility that the contingency may not occur.\xe2\x80\x9d Miller Music at 378.\nB\nThe reason that our inquiry does not end here, and that we granted certiorari, is that\nthe Court of Appeals for the Second Circuit reached a contrary result in Rohauer v.\nKilliam Shows, Inc., 551 F. 2d 484 (1977). Petitioners\xe2\x80\x99 theory is drawn largely from\nRohauer. The Court of Appeals in Rohauer attempted to craft a \xe2\x80\x9cproper reconciliation\xe2\x80\x9d\nbetween the owner of the pre-existing work, who held the right to the work pursuant\nto Miller Music, and the owner of the derivative work, who had a great deal to lose if\nthe work could not be published or distributed. 551 F. 2d, at 490. Addressing a case\nfactually similar to this case, the court concluded that even if the death of the author\ncaused the renewal rights in the pre-existing work to revert to the statutory successor,\nthe owner of the derivative work could continue to exploit that work. The court\nreasoned that the 1976 Act and the relevant precedents did not preclude such a result\nand that it was necessitated by a balancing of the equities:\n\xe2\x80\x9cThe equities lie preponderantly in favor of the proprietor of the derivative\ncopyright. In contrast to the situation where an assignee or licensee has done\nnothing more than print, publicize and distribute a copyrighted story or novel, a\nperson who with the consent of the author has created an opera or a motion picture\nfilm will often have made contributions literary, musical and economic, as great as\nor greater than the original author . . . The purchaser of derivative rights has no truly\neffective way to protect himself against the eventuality of the author\xe2\x80\x99s death before\nthe renewal period since there is no way of telling who will be the surviving widow,\nchildren or next of kin or the executor until that date arrives.\xe2\x80\x9d Id., at 493.\n\nThe Court of Appeals for the Second Circuit thereby shifted the focus from the right\nto use the pre-existing work in a derivative work to a right inhering in the created\nderivative work itself. By rendering the renewal right to use the original work\nirrelevant, the court created an exception to our ruling in Miller Music and, as\npetitioners concede, created an \xe2\x80\x9cintrusion\xe2\x80\x9d on the statutorily created rights of the\nowner of the pre-existing work in the renewal term.\nThough petitioners do not, indeed could not, argue that its language expressly\nsupports the theory they draw from Rohauer, they implicitly rely on \xc2\xa7 6 of the 1909\nAct, 17 U.S.C. \xc2\xa7 7 (1976 ed.), which states that \xe2\x80\x9cdramatizations . . . of copyrighted\nworks when produced with the consent of the proprietor of the copyright in such\nworks . . . shall be regarded as new works subject to copyright under the provisions\n375\n\n\x0cof this title.\xe2\x80\x9d Petitioners maintain that the creation of the \xe2\x80\x9cnew,\xe2\x80\x9d i. e., derivative,\nwork extinguishes any right the owner of rights in the pre-existing work might have\nhad to sue for infringement that occurs during the renewal term.\nWe think that this conclusion is neither warranted by any express provision of the\nCopyright Act, nor by the rationale as to the scope of protection achieved in a\nderivative work. It is moreover contrary to the axiomatic copyright principle that a\nperson may exploit only such copyrighted literary material as he either owns or is\nlicensed to use. The aspects of a derivative work added by the derivative author are\nthat author\xe2\x80\x99s property, but the element drawn from the pre-existing work remains on\ngrant from the owner of the pre-existing work. See Russell v. Price, 612 F. 2d 1123,\n1128 (CA9 1979) (reaffirming \xe2\x80\x9cwell-established doctrine that a derivative copyright\nprotects only the new material contained in the derivative work, not the matter\nderived from the underlying work\xe2\x80\x9d). So long as the pre-existing work remains out of\nthe public domain, its use is infringing if one who employs the work does not have a\nvalid license or assignment for use of the pre-existing work. It is irrelevant whether\nthe pre-existing work is inseparably intertwined with the derivative work. See Gilliam\nv. American Broadcasting Cos., 538 F. 2d 14, 20 (CA2 1976) (\xe2\x80\x9cCopyright in the\nunderlying script survives intact despite the incorporation of that work into a\nderivative work\xe2\x80\x9d). Indeed, the plain language of \xc2\xa7 7 supports the view that the full\nforce of the copyright in the pre-existing work is preserved despite incorporation\ninto the derivative work. See 17 U.S.C. \xc2\xa7 7 (1976 ed.) (publication of the derivative\nwork \xe2\x80\x9cshall not affect the force or validity of any subsisting copyright upon the\nmatter employed\xe2\x80\x9d); see also 17 U.S.C. \xc2\xa7 3 (1976 ed.) (copyright protection of a work\nextends to \xe2\x80\x9call matter therein in which copyright is already subsisting, but without\nextending the duration or scope of such copyright\xe2\x80\x9d). This well-settled rule also was\nmade explicit in the 1976 Act:\n\xe2\x80\x9cThe copyright in a compilation or derivative work extends only to the material\ncontributed by the author of such work, as distinguished from the preexisting\nmaterial employed in the work, and does not imply any exclusive right in the\npreexisting material. The copyright in such work is independent of, and does not\naffect or enlarge the scope, duration, ownership, or subsistence of, any copyright\nprotection in the pre-existing material.\xe2\x80\x9d 17 U. S. C. \xc2\xa7 103(b).\n\nSee also B. Ringer, Renewal of Copyright (1960), reprinted as Copyright Law Revision\nStudy No. 31, prepared for the Senate Committee on the Judiciary, 86th Cong., 2d.\nSess., 169-170 (1961) (\xe2\x80\x9cOn the basis of judicial authority, legislative history, and the\nopinions of the commentators, . . . someone cannot avoid his obligations to the\nowner of a renewal copyright merely because he created and copyrighted a \xe2\x80\x98new\nversion\xe2\x80\x99 under a license or assignment which terminated at the end of the first term\xe2\x80\x9d).\nProperly conceding there is no explicit support for their theory in the 1909 Act, its\nlegislative history, or the case law, petitioners contend, as did the court in Rohauer,\nthat the termination provisions of the 1976 Act, while not controlling, support their\ntheory of the case. For works existing in their original or renewal terms as of January\n1, 1978, the 1976 Act added 19 years to the 1909 Act\xe2\x80\x99s provision of 28 years of initial\ncopyright protection and 28 years of renewal protection. See 17 U. S. C. \xc2\xa7\xc2\xa7 304(a)\nand (b). For those works, the author has the power to terminate the grant of rights at\nthe end of the renewal term and, therefore, to gain the benefit of that additional 19\n\n376\n\n\x0cyears of protection. See \xc2\xa7 304(c). In effect, the 1976 Act provides a third opportunity\nfor the author to benefit from a work in its original or renewal term as of January 1,\n1978. Congress, however, created one exception to the author\xe2\x80\x99s right to terminate:\nThe author may not, at the end of the renewal term, terminate the right to use a\nderivative work for which the owner of the derivative work has held valid rights in\nthe original and renewal terms. See \xc2\xa7 304(c)(6)(A). The author, however, may\nterminate the right to create new derivative works. Ibid. For example, if petitioners\nheld a valid copyright in the story throughout the original and renewal terms, and the\nrenewal term in \xe2\x80\x9cRear Window\xe2\x80\x9d were about to expire, petitioners could continue to\ndistribute the motion picture even if respondent terminated the grant of rights, but\ncould not create a new motion picture version of the story. Both the court in Rohauer\nand petitioners infer from this exception to the right to terminate an intent by\nCongress to prevent authors of pre-existing works from blocking distribution of\nderivative works. In other words, because Congress decided not to permit authors to\nexercise a third opportunity to benefit from a work incorporated into a derivative\nwork, the Act expresses a general policy of undermining the author\xe2\x80\x99s second\nopportunity. We disagree.\nThe process of compromise between competing special interests leading to the\nenactment of the 1976 Act undermines any such attempt to draw an overarching\npolicy out of \xc2\xa7 304(c)(6)(A), which only prevents termination with respect to works\nin their original or renewal copyright terms as of January 1, 1978, and only at the end\nof the renewal period.\nIn fact, if the 1976 Act\xe2\x80\x99s termination provisions provide any guidance at all in this\ncase, they tilt against petitioners\xe2\x80\x99 theory. The plain language of the termination\nprovision itself indicates that Congress assumed that the owner of the pre-existing\nwork possessed the right to sue for infringement even after incorporation of the preexisting work in the derivative work.\n\xe2\x80\x9cA derivative work prepared under authority of the grant before its termination may\ncontinue to be utilized under the terms of the grant after its termination, but this\nprivilege does not extend to the preparation after the termination of other derivative\nworks based upon the copyrighted work covered by the terminated grant.\xe2\x80\x9d \xc2\xa7\n304(c)(6)(A) (emphasis added).\n\nCongress would not have stated explicitly in \xc2\xa7 304(c)(6)(A) that, at the end of the\nrenewal term, the owner of the rights in the pre-existing work may not terminate use\nrights in existing derivative works unless Congress had assumed that the owner\ncontinued to hold the right to sue for infringement even after incorporation of the\npre-existing work into the derivative work. Cf. Mills Music, Inc. v. Snyder, 469 U. S. 153,\n164 (1985) (\xc2\xa7 304(c)(6)(A) \xe2\x80\x9ccarves out an exception from the reversion of rights that\ntakes place when an author exercises his right to termination\xe2\x80\x9d).\nAccordingly, we conclude that neither the 1909 Act nor the 1976 Act provides\nsupport for the theory set forth in Rohauer. And even if the theory found some\nsupport in the statute or the legislative history, the approach set forth in Rohauer is\nproblematic. Petitioners characterize the result in Rohauer as a bright-line \xe2\x80\x9crule.\xe2\x80\x9d The\nCourt of Appeals in Rohauer, however, expressly implemented policy considerations\nas a means of reconciling what it viewed as the competing interests in that case. See\n551 F. 2d, at 493-494. While the result in Rohauer might make some sense in some\n377\n\n\x0ccontexts, it makes no sense in others. In the case of a condensed book, for example,\nthe contribution by the derivative author may be little, while the contribution by the\noriginal author is great. Yet, under the Rohauer \xe2\x80\x9crule,\xe2\x80\x9d publication of the condensed\nbook would not infringe the pre-existing work even though the derivative author has\nno license or valid grant of rights in the pre-existing work. See Brief for Committee\nfor Literary Property Studies as Amicus Curiae 29-31; see also Brief for Songwriters\nGuild of America as Amicus Curiae 11-12 (policy reasons set forth in Rohauer make\nlittle sense when applied to musical compositions). Thus, even if the Rohauer \xe2\x80\x9crule\xe2\x80\x9d\nmade sense in terms of policy in that case, it makes little sense when it is applied\nacross the derivative works spectrum. Indeed, in the view of the commentators,\nRohauer did not announce a rule, but rather an interest-balancing approach.\nFinally, petitioners urge us to consider the policies underlying the Copyright Act.\nThey argue that the rule announced by the Court of Appeals will undermine one of\nthe policies of the Act \xe2\x80\x94 the dissemination of creative works \xe2\x80\x94 by leading to many\nfewer works reaching the public. Amicus Columbia Pictures asserts that \xe2\x80\x9c[s]ome\nowners of underlying work renewal copyrights may refuse to negotiate, preferring\ninstead to retire their copyrighted works, and all derivative works based thereon,\nfrom public use. Others may make demands \xe2\x80\x94 like respondent\xe2\x80\x99s demand for 50%\nof petitioners\xe2\x80\x99 future gross proceeds in excess of advertising expenses . . . \xe2\x80\x94 which\nare so exorbitant that a negotiated economic accommodation will be impossible.\xe2\x80\x9d\nBrief for Columbia Pictures et al. as Amici Curiae 21. These arguments are better\naddressed by Congress than the courts.\nIn any event, the complaint that respondent\xe2\x80\x99s monetary request in this case is so high\nas to preclude agreement fails to acknowledge that an initially high asking price does\nnot preclude bargaining. Presumably, respondent is asking for a share in the\nproceeds because he wants to profit from the distribution of the work, not because\nhe seeks suppression of it.\nWith the Copyright Act of 1790, Congress provided an initial term of protection plus\na renewal term that did not survive the author. In the Copyright Act of 1831,\nCongress devised a completely separate renewal term that survived the death of the\nauthor so as to create a \xe2\x80\x9cnew estate\xe2\x80\x9d and to benefit the author\xe2\x80\x99s family, and, with the\npassage of the 1909 Act, his executors. The 1976 Copyright Act provides a single,\nfixed term, but provides an inalienable termination right. See 17 U.S.C. \xc2\xa7\xc2\xa7 203, 302.\nThis evolution of the duration of copyright protection tellingly illustrates the\ndifficulties Congress faces in attempting to \xe2\x80\x9csecure for limited Times to Authors . . .\nthe exclusive Right to their respective Writings.\xe2\x80\x9d U.S. Const., Art. I, \xc2\xa7 8, cl. 8. Absent\nan explicit statement of congressional intent that the rights in the renewal term of an\nowner of a pre-existing work are extinguished upon incorporation of his work into\nanother work, it is not our role to alter the delicate balance Congress has labored to\nachieve.\n[Justice O\xe2\x80\x99Connor rejected the dissent\xe2\x80\x99s arguments and Petitioner\xe2\x80\x99s argument that\neven if their use of \xe2\x80\x9cIt Had to Be Murder\xe2\x80\x9d was unauthorized, it was a fair use and,\ntherefore, not infringing.]\nFor the foregoing reasons, the judgment of the Court of Appeals is affirmed, and the\ncase is remanded for further proceedings consistent with this opinion.\n\n378\n\n\x0cIt is so ordered.\nNotes and questions\n(1) In Stewart v. Abend 495 U.S. 207 (1990), the Supreme Court held that where the author of\na work subject to the Copyright Act of 1909 (a) licensed a third party to make derivatives of\nthe work and (b) died before the expiration of the initial term of copyright protection, the\nright to create derivative works was effectively frozen by the renewal of the copyright term\nby the authors heirs. In so holding, the Court emphasized that the right of renewal in \xc2\xa7 24 of\nthe 1909 Act was intended to provide authors and their heirs a second opportunity to obtain\nremuneration for their works.\n(2) It is worth noting that if Woolrich had lived another couple of years, his assignment of\nthe renewal rights would have been effective. \xe2\x80\x9cIt Had To Be Murder\xe2\x80\x9d was published in 1942.\nIn 1945 Woolrich assigned the movie rights, including renewal rights. In 1968 Woolrich died,\nleaving no heirs. In 1969 and 1970 the executor of Woolrich\xe2\x80\x99s estate renewed the copyright.\n(3) Why is the author\xe2\x80\x99s assignment of the renewal rights binding on the author if she lives,\nbut not upon her heirs? In Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373 (1960) the\nCourt held that the author\xe2\x80\x99s assignment of renewal rights before the time for renewal arrives\ncannot defeat the right of the author\xe2\x80\x99s statutory successor to the renewal rights if the author\ndies before the right to renewal accrues. The assignee in such a contract has bargained for a\nmere expectancy, not a vested right. The Court in Miller Music said (at 378):\nUntil [the time for registration of renewal rights] arrives, assignees of renewal rights\ntake the risk that the rights acquired may never vest in their assignors. A purchaser\nof such an interest is deprived of nothing. Like all purchasers of contingent interests,\nhe takes subject to the possibility that the contingency may not occur.\n\nThe key here is that the author\xe2\x80\x99s assignment is not invalid, as such; rather the author is\nassigning an interest that is contingent on her survival. As the Court in Miller Music explained\n(at 375)\nThese results follow not because the author\xe2\x80\x99s assignment is invalid but because he\nhad only an expectancy to assign; and his death, prior to the renewal period,\nterminates his interest in the renewal which by \xc2\xa7 24 vests in the named classes.\n\nThe Supreme Court majority in Stewart v. Abend reasoned that, if, as Miller Music held, \xe2\x80\x9cthe\nassignee of all of the renewal rights holds nothing upon the death of the assignor before\narrival of the renewal period, then, a fortiori, the assignee of a portion of the renewal\nrights, e.g., the right to produce a derivative work, must also hold nothing.\xe2\x80\x9d\n(4) Does the reasoning in Miller Music and Stewart v. Abend apply to terminations of transfers\nunder the 1976 Act, or is it limited to the two-term duration structure of the 1909 Act and\nprevious Copyright Acts?\n\n379\n\n\x0c11. MORAL RIGHTS\n\nWhat are moral rights?\nThe central idea behind the concept of \xe2\x80\x9cmoral rights\xe2\x80\x9d\xe2\x80\x94a term that is derived from the\nFrench phrase droit moral\xe2\x80\x94is that the author of a copyrighted work has certain personal and\ninherent rights in relation to the work. These rights exist, so the theory goes, because the\nwork is tied to the personality of the author. Moral rights are usually distinguished from\nmerely economic rights.\nThe content of moral rights varies from jurisdiction to jurisdiction, but the two most\ncommonly recognized moral rights are the right of attribution and the right of integrity.91 An\nauthor with a right of attribution has the right to be credited as the author of their work; an\nauthor with a right of integrity has the right to prevent distortions or mutilation of her work,\nbut usually only if, and to the extent that, this would be prejudicial to the author\xe2\x80\x99s reputation.\nMany civil law countries, such as France and Germany, treat moral rights as inalienable from\nthe author (although transferable by will upon death). A number of civil law countries\nrecognize perpetual moral rights.\n\nThe international legal framework for moral rights protection\nThe right of attribution and the right of integrity were recognized in the Berne Convention\nas part of the 1928 Rome revision of that agreement.\nArticle 6bis of the Berne Convention requires all member states to provide authors of\nliterary and artistic works \xe2\x80\x9cthe right to claim authorship of the work and to object to any\ndistortion, mutilation or other modification of, or other derogatory action in relation to, the\nsaid work, which would be prejudicial to his honor or reputation.\xe2\x80\x9d However, the TRIPs\nAgreement excludes Article 6bis.\nBerne Convention (Paris Text 1971) Article 6bis\n(1) Independently of the author\xe2\x80\x99s economic rights, and even after the transfer of the\nsaid rights, the author shall have the right to claim authorship of the work and to\nobject to any distortion, mutilation or other modification of, or other derogatory\naction in relation to, the said work, which would be prejudicial to his honor or\nreputation.\n(2) The rights granted to the author in accordance with the preceding paragraph\nshall, after his death, be maintained, at least until the expiry of the economic rights,\nand shall be exercisable by the persons or institutions authorized by the legislation\nof the country where protection is claimed. However, those countries whose\nlegislation, at the moment of their ratification of or accession to this Act, does not\nprovide for the protection after the death of the author of all the rights set out in\nthe preceding paragraph may provide that some of these rights may, after his death,\ncease to be maintained.\n\nMoral rights are typically grouped into five distinct categories: the rights of attribution, integrity, disclosure,\nwithdrawal, and resale royalties.\n91\n\n380\n\n\x0c(3) The means of redress for safeguarding the rights granted by this Article shall be\ngoverned by the legislation of the country where protection is claimed.\nTRIPs Article 9(1).\nMembers shall comply with Articles 1 through 21 of the Berne Convention (1971)\nand the Appendix thereto. However, Members shall not have rights or obligations\nunder this Agreement in respect of the rights conferred under Article 6bis of that\nConvention or of the rights derived therefrom.\n\nThus, although moral rights play an important role in many copyright systems, compliance\nwith the Berne Convention\xe2\x80\x99s full embrace of moral rights is, if not optional, at least outside\nthe WTO dispute resolution framework. The exclusion of Article 6bis from TRIPs was not\nan oversight; it was a direct result of lobbying by the United States which had an ambivalent\n(at best) commitment to moral rights.\nThe WIPO Performances and Phonograms Treaty (\xe2\x80\x9cWPPT\xe2\x80\x9d) of 1996 also addressed the\nissue of moral rights. Section 5 of that treaty provides that performers are entitled to a right\nof attribution and integrity with respect to their performances. These rights are independent\nand distinct from the performer\xe2\x80\x99s economic rights.\nWIPO Performances and Phonograms Treaty, Article 5\nMoral Rights of Performers\n(1) Independently of a performer\xe2\x80\x99s economic rights, and even after the transfer of\nthose rights, the performer shall, as regards his live aural performances or\nperformances fixed in phonograms, have the right to claim to be identified as the\nperformer of his performances, except where omission is dictated by the manner of\nthe use of the performance, and to object to any distortion, mutilation or other\nmodification of his performances that would be prejudicial to his reputation.\n\nArticle 5 of the Beijing Treaty on Audiovisual Performances of 2012 also grants performers\nrights of attribution and integrity in their live and fixed audiovisual performances. The\nUnited States is a signatory to the treaty but has not yet ratified it. Indeed, as of June 2019\ncount not enough countries had ratified the treaty for it to enter into force.\n\nMoral rights in the United States outside the Copyright Act\nThe patchwork approach\nThe United States acceded to the Berne Convention effective March 1, 1989 without\nchanging any of its substantive law with respect to moral rights. The United States position\nwas that American law already recognized moral rights through a combination of section\n43(a) of the Lanham Act (which prevents passing off), the recognition of paternity and\nintegrity interests through the scope of the reproduction right and the right to make\nderivative works based on the copyrighted work, and state laws causes of action in relation\nto privacy, the right of publicity, fraud and misrepresentation, unfair competition, and\ndefamation. Likewise, the United States takes the position that its obligations to performers\nunder the WIPO Performances and Phonograms Treaty are satisfied by the same patchwork\nof protections discussed in relation to the Berne Convention.\nThe insistence of the United States that moral rights should be left out of the TRIPs\nAgreement suggests some equivocation as to whether existing United States law really did\n381\n\n\x0csatisfy the Berne Convention (and the WPPT, for that matter). Moreover, the Supreme\nCourt\xe2\x80\x99s 2003 decision in Dastar v. Twentieth Century Fox raised significant doubts about\nwhether Section 43 of the Lanham Act actually satisfies the United States\xe2\x80\x99 moral rights\nobligations.\nThe Dastar Decision and its aftermath\nDastar v. Twentieth Century Fox 539 U.S. 23 (2003)\nJustice Scalia delivered the opinion of the Court.92\nIn this case, we are asked to decide whether \xc2\xa7 43(a) of the Lanham Act, 15 U.S.C. \xc2\xa7\n1125(a), prevents the unaccredited copying of a work.\nI\nIn 1948, three and a half years after the German surrender at Reims, General Dwight\nD. Eisenhower completed Crusade in Europe, his written account of the allied\ncampaign in Europe during World War II. Doubleday published the book, registered\nit with the Copyright Office in 1948, and granted exclusive television rights to an\naffiliate of respondent Twentieth Century Fox Film Corporation (Fox). Fox, in turn,\narranged for Time, Inc., to produce a television series, also called Crusade in Europe,\nbased on the book, and Time assigned its copyright in the series to Fox. The\ntelevision series, consisting of 26 episodes, was first broadcast in 1949. It combined a\nsoundtrack based on a narration of the book with film footage from the United\nStates Army, Navy, and Coast Guard, the British Ministry of Information and War\nOffice, the National Film Board of Canada, and unidentified \xe2\x80\x9cNewsreel Pool\nCameramen.\xe2\x80\x9d In 1975, Doubleday renewed the copyright on the book as the\n\xe2\x80\x9c\xe2\x80\x98proprietor of copyright in a work made for hire.\xe2\x80\x99\xe2\x80\x9d Fox, however, did not renew the\ncopyright on the Crusade television series, which expired in 1977, leaving the\ntelevision series in the public domain.\nIn 1988, Fox reacquired the television rights in General Eisenhower\xe2\x80\x99s book,\nincluding the exclusive right to distribute the Crusade television series on video and\nto sublicense others to do so. Respondents SFM Entertainment and New Line\nHome Video, Inc., in turn, acquired from Fox the exclusive rights to distribute\nCrusade on video. SFM obtained the negatives of the original television series,\nrestored them, and repackaged the series on videotape; New Line distributed the\nvideotapes.\nEnter petitioner Dastar. In 1995, Dastar decided to expand its product line from\nmusic compact discs to videos. Anticipating renewed interest in World War II on the\n50th anniversary of the war\xe2\x80\x99s end, Dastar released a video set entitled World War II\nCampaigns in Europe. To make Campaigns, Dastar purchased eight beta cam tapes\nof the original version of the Crusade television series, which is in the public domain,\ncopied them, and then edited the series. Dastar\xe2\x80\x99s Campaigns series is slightly more\nthan half as long as the original Crusade television series. Dastar substituted a new\nopening sequence, credit page, and final closing for those of the Crusade television\nJustice Scalia delivered the opinion of the Court, in which all other Members joined, except Justice Breyer,\nwho took no part in the consideration or decision of the case.\n92\n\n382\n\n\x0cseries; inserted new chapter-title sequences and narrated chapter introductions;\nmoved the \xe2\x80\x9crecap\xe2\x80\x9d in the Crusade television series to the beginning and retitled it as\na \xe2\x80\x9cpreview\xe2\x80\x9d; and removed references to and images of the book. Dastar created new\npackaging for its Campaigns series and (as already noted) a new title.\nDastar manufactured and sold the Campaigns video set as its own product. The\nadvertising states: \xe2\x80\x9cProduced and Distributed by: Entertainment Distributing\n\xe2\x80\x9c (which is owned by Dastar), and makes no reference to the Crusade television\nseries. Similarly, the screen credits state \xe2\x80\x9cDASTAR CORP presents\xe2\x80\x9d and \xe2\x80\x9can\nENTERTAINMENT DISTRIBUTING Production,\xe2\x80\x9d and list as executive producer,\nproducer, and associate producer employees of Dastar. The Campaigns videos\nthemselves also make no reference to the Crusade television series, New Line\xe2\x80\x99s\nCrusade videotapes, or the book. Dastar sells its Campaigns videos to Sam\xe2\x80\x99s Club,\nCostco, Best Buy, and other retailers and mail-order companies for $25 per set,\nsubstantially less than New Line\xe2\x80\x99s video set. In 1998, respondents Fox, SFM, and\nNew Line brought this action alleging that Dastar\xe2\x80\x99s sale of its Campaigns video set\ninfringes Doubleday\xe2\x80\x99s copyright in General Eisenhower\xe2\x80\x99s book and, thus, their\nexclusive television rights in the book. Respondents later amended their complaint to\nadd claims that Dastar\xe2\x80\x99s sale of Campaigns \xe2\x80\x9cwithout proper credit\xe2\x80\x9d to the Crusade\ntelevision series constitutes \xe2\x80\x9creverse passing off\xe2\x80\x9d1 in violation of \xc2\xa7 43(a) of the\nLanham Act, 60 Stat. 441, 15 U. S. C. \xc2\xa7 1125(a), and in violation of state unfaircompetition law.\nFootnote 1: Passing off (or palming off, as it is sometimes called) occurs when a producer misrepresents his own\ngoods or services as someone else\xe2\x80\x99s. \xe2\x80\x9cReverse passing off,\xe2\x80\x9d as its name implies, is the opposite: The producer\nmisrepresents someone else\xe2\x80\x99s goods or services as his own.\n\nOn cross-motions for summary judgment, the District Court found for respondents\non all three counts treating its resolution of the Lanham Act claim as controlling on\nthe state-law unfair-competition claim because \xe2\x80\x9cthe ultimate test under both is\nwhether the public is likely to be deceived or confused.\xe2\x80\x9d The court awarded Dastar\xe2\x80\x99s\nprofits to respondents and doubled them pursuant to \xc2\xa7 35 of the Lanham Act, 15\nU.S.C. \xc2\xa7 1117(a), to deter future infringing conduct by petitioner.\nThe Court of Appeals for the Ninth Circuit affirmed the judgment for respondents\non the Lanham Act claim, but reversed as to the copyright claim and remanded. (It\nsaid nothing with regard to the state-law claim.) With respect to the Lanham Act\nclaim, the Court of Appeals reasoned that \xe2\x80\x9cDastar copied substantially the entire\nCrusade in Europe series created by Twentieth Century Fox, labeled the resulting\nproduct with a different name and marketed it without attribution to Fox, and\ntherefore committed a \xe2\x80\x98bodily appropriation\xe2\x80\x99 of Fox\xe2\x80\x99s series.\xe2\x80\x9d It concluded that\n\xe2\x80\x9cDastar\xe2\x80\x99s \xe2\x80\x98bodily appropriation\xe2\x80\x99 of Fox\xe2\x80\x99s original television series is sufficient to\nestablish the reverse passing off.\xe2\x80\x9d2 The court also affirmed the District Court\xe2\x80\x99s award\nunder the Lanham Act of twice Dastar\xe2\x80\x99s profits. We granted certiorari.\nFootnote 2: As for the copyright claim, the Ninth Circuit held that the tax treatment General Eisenhower sought\nfor his manuscript of the book created a triable issue as to whether he intended the book to be a work for hire,\nand thus as to whether Doubleday properly renewed the copyright in 1976. The copyright issue is still the subject\nof litigation, but is not before us. We express no opinion as to whether petitioner\xe2\x80\x99s product would infringe a valid\ncopyright in General Eisenhower\xe2\x80\x99s book.\n\nII\n\n383\n\n\x0cThe Lanham Act was intended to make \xe2\x80\x9cactionable the deceptive and misleading use\nof marks,\xe2\x80\x9d and \xe2\x80\x9cto protect persons engaged in . . . commerce against unfair\ncompetition.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127. While much of the Lanham Act addresses the\nregistration, use, and infringement of trademarks and related marks, \xc2\xa7 43(a), 15 U.S.C.\n\xc2\xa7 1125(a) is one of the few provisions that goes beyond trademark protection. As\noriginally enacted, \xc2\xa7 43(a) created a federal remedy against a person who used in\ncommerce either \xe2\x80\x9ca false designation of origin, or any false description or\nrepresentation\xe2\x80\x9d in connection with \xe2\x80\x9cany goods or services.\xe2\x80\x9d 60 Stat. 441. As the\nSecond Circuit accurately observed with regard to the original enactment, however\xe2\x80\x94\nand as remains true after the 1988 revision\xe2\x80\x94\xc2\xa7 43(a) \xe2\x80\x9cdoes not have boundless\napplication as a remedy for unfair trade practices,\xe2\x80\x9d Alfred Dunhill, Ltd. v. Interstate\nCigar Co., 499 F.2d 232, 237 (1974). Because of its inherently limited wording, \xc2\xa7 43(a)\ncan never be a federal codification of the overall law of unfair competition, but can\napply only to certain unfair trade practices prohibited by its text.\nAlthough a case can be made that a proper reading of \xc2\xa7 43(a), as originally enacted,\nwould treat the word \xe2\x80\x9corigin\xe2\x80\x9d as referring only \xe2\x80\x9cto the geographic location in which\nthe goods originated,\xe2\x80\x9d the Courts of Appeals considering the issue, beginning with\nthe Sixth Circuit, unanimously concluded that it \xe2\x80\x9cdoes not merely refer to\ngeographical origin, but also to origin of source or manufacture,\xe2\x80\x9d Federal-Mogul-Bower\nBearings, Inc. v. Azoff, 313 F. 2d 405, 408 (1963), thereby creating a federal cause of\naction for traditional trademark infringement of unregistered marks. Moreover, every\nCircuit to consider the issue found \xc2\xa7 43(a) broad enough to encompass reverse\npassing off. The Trademark Law Revision Act of 1988 made clear that \xc2\xa7 43(a) covers\norigin of production as well as geographic origin. Its language is amply inclusive,\nmoreover, of reverse passing off\xe2\x80\x94if indeed it does not implicitly adopt the\nunanimous court-of-appeals jurisprudence on that subject.\nThus, as it comes to us, the gravamen of respondents\xe2\x80\x99 claim is that, in marketing and\nselling Campaigns as its own product without acknowledging its nearly wholesale\nreliance on the Crusade television series, Dastar has made a \xe2\x80\x9cfalse designation of\norigin, false or misleading description of fact, or false or misleading representation of\nfact, which . . . is likely to cause confusion . . . as to the origin . . . of his or her goods.\xe2\x80\x9d\n\xc2\xa7 43(a). That claim would undoubtedly be sustained if Dastar had bought some of\nNew Line\xe2\x80\x99s Crusade videotapes and merely repackaged them as its own. Dastar\xe2\x80\x99s\nalleged wrongdoing, however, is vastly different: It took a creative work in the public\ndomain \xe2\x80\x94the Crusade television series\xe2\x80\x94copied it, made modifications (arguably\nminor), and produced its very own series of videotapes. If \xe2\x80\x9corigin\xe2\x80\x9d refers only to the\nmanufacturer or producer of the physical \xe2\x80\x9cgoods\xe2\x80\x9d that are made available to the\npublic (in this case the videotapes), Dastar was the origin. If, however, \xe2\x80\x9corigin\xe2\x80\x9d\nincludes the creator of the underlying work that Dastar copied, then someone else\n(perhaps Fox) was the origin of Dastar\xe2\x80\x99s product. At bottom, we must decide what \xc2\xa7\n43(a)(1)(A) of the Lanham Act means by the \xe2\x80\x9corigin\xe2\x80\x9d of \xe2\x80\x9cgoods.\xe2\x80\x9d\nIII\nThe dictionary definition of \xe2\x80\x9corigin\xe2\x80\x9d is \xe2\x80\x9cthe fact or process of coming into being\nfrom a source,\xe2\x80\x9d and \xe2\x80\x9cthat from which anything primarily proceeds; source.\xe2\x80\x9d\nWebster\xe2\x80\x99s New International Dictionary 1720-1721 (2d ed. 1949). And the dictionary\ndefinition of \xe2\x80\x9cgoods\xe2\x80\x9d (as relevant here) is \xe2\x80\x9cwares; merchandise.\xe2\x80\x9d Id., at 1079. We\n384\n\n\x0cthink the most natural understanding of the \xe2\x80\x9corigin\xe2\x80\x9d of \xe2\x80\x9cgoods\xe2\x80\x9d\xe2\x80\x94the source of\nwares\xe2\x80\x94is the producer of the tangible product sold in the marketplace, in this case\nthe physical Campaigns videotape sold by Dastar. The concept might be stretched\n(as it was under the original version of \xc2\xa7 43(a)) to include not only the actual\nproducer, but also the trademark owner who commissioned or assumed\nresponsibility for (\xe2\x80\x9cstood behind\xe2\x80\x9d) production of the physical product. But as used\nin the Lanham Act, the phrase \xe2\x80\x9corigin of goods\xe2\x80\x9d is in our view incapable of\nconnoting the person or entity that originated the ideas or communications that\n\xe2\x80\x9cgoods\xe2\x80\x9d embody or contain. Such an extension would not only stretch the text, but\nit would be out of accord with the history and purpose of the Lanham Act and\ninconsistent with precedent.\nSection 43(a) of the Lanham Act prohibits actions like trademark infringement that\ndeceive consumers and impair a producer\xe2\x80\x99s goodwill. It forbids, for example, the\nCoca-Cola Company\xe2\x80\x99s passing off its product as Pepsi-Cola or reverse passing off\nPepsi-Cola as its product. But the brand-loyal consumer who prefers the drink that\nthe Coca-Cola Company or PepsiCo sells, while he believes that that company\nproduced (or at least stands behind the production of) that product, surely does not\nnecessarily believe that that company was the \xe2\x80\x9corigin\xe2\x80\x9d of the drink in the sense that\nit was the very first to devise the formula. The consumer who buys a branded\nproduct does not automatically assume that the brand-name company is the same\nentity that came up with the idea for the product, or designed the product\xe2\x80\x94and\ntypically does not care whether it is. The words of the Lanham Act should not be\nstretched to cover matters that are typically of no consequence to purchasers.\nIt could be argued, perhaps, that the reality of purchaser concern is different for\nwhat might be called a communicative product\xe2\x80\x94one that is valued not primarily for\nits physical qualities, such as a hammer, but for the intellectual content that it\nconveys, such as a book or, as here, a video. The purchaser of a novel is interested\nnot merely, if at all, in the identity of the producer of the physical tome (the\npublisher), but also, and indeed primarily, in the identity of the creator of the story it\nconveys (the author). And the author, of course, has at least as much interest in\navoiding passing off (or reverse passing off) of his creation as does the publisher.\nFor such a communicative product (the argument goes) \xe2\x80\x9corigin of goods\xe2\x80\x9d in \xc2\xa7 43(a)\nmust be deemed to include not merely the producer of the physical item (the\npublishing house Farrar, Straus and Giroux, or the video producer Dastar) but also\nthe creator of the content that the physical item conveys (the author Tom Wolfe,\nor\xe2\x80\x94assertedly\xe2\x80\x94respondents).\nThe problem with this argument according special treatment to communicative\nproducts is that it causes the Lanham Act to conflict with the law of copyright,\nwhich addresses that subject specifically. The right to copy, and to copy without\nattribution, once a copyright has expired, like \xe2\x80\x9cthe right to make [an article whose\npatent has expired]\xe2\x80\x94including the right to make it in precisely the shape it carried\nwhen patented\xe2\x80\x94passes to the public.\xe2\x80\x9d Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225,\n230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 121-122 (1938).\n\xe2\x80\x9cIn general, unless an intellectual property right such as a patent or copyright\nprotects an item, it will be subject to copying.\xe2\x80\x9d TrafFix Devices, Inc. v. Marketing\nDisplays, Inc., 532 U.S. 23, 29 (2001). The rights of a patentee or copyright holder are\n\n385\n\n\x0cpart of a \xe2\x80\x9ccarefully crafted bargain,\xe2\x80\x9d Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489\nU.S. 141, 150-151 (1989), under which, once the patent or copyright monopoly has\nexpired, the public may use the invention or work at will and without attribution.\nThus, in construing the Lanham Act, we have been \xe2\x80\x9ccareful to caution against\nmisuse or over-extension\xe2\x80\x9d of trademark and related protections into areas\ntraditionally occupied by patent or copyright. TrafFix, 532 U.S., at 29. \xe2\x80\x9cThe Lanham\nAct,\xe2\x80\x9d we have said, \xe2\x80\x9cdoes not exist to reward manufacturers for their innovation in\ncreating a particular device; that is the purpose of the patent law and its period of\nexclusivity.\xe2\x80\x9d Id., at 34. Federal trademark law \xe2\x80\x9chas no necessary relation to invention\nor discovery,\xe2\x80\x9d Trade-Mark Cases, 100 U. S. 82, 94 (1879), but rather, by preventing\ncompetitors from copying \xe2\x80\x9ca source-identifying mark,\xe2\x80\x9d \xe2\x80\x9creduces the customer\xe2\x80\x99s\ncosts of shopping and making purchasing decisions,\xe2\x80\x9d and \xe2\x80\x9chelps assure a producer\nthat it (and not an imitating competitor) will reap the financial, reputation-related\nrewards associated with a desirable product,\xe2\x80\x9d Qualitex Co. v. Jacobson Products Co., 514\nU.S. 159, 163-164 (1995). Assuming for the sake of argument that Dastar\xe2\x80\x99s\nrepresentation of itself as the \xe2\x80\x9cProducer\xe2\x80\x9d of its videos amounted to a representation\nthat it originated the creative work conveyed by the videos, allowing a cause of\naction under \xc2\xa7 43(a) for that representation would create a species of mutant\ncopyright law that limits the public\xe2\x80\x99s \xe2\x80\x9cfederal right to copy and to use\xe2\x80\x9d expired\ncopyrights, Bonito Boats, supra, at 165.\nWhen Congress has wished to create such an addition to the law of copyright, it has\ndone so with much more specificity than the Lanham Act\xe2\x80\x99s ambiguous use of\n\xe2\x80\x9corigin.\xe2\x80\x9d The Visual Artists Rights Act of 1990, provides that the author of an\nartistic work \xe2\x80\x9cshall have the right. . . to claim authorship of that work.\xe2\x80\x9d 17 U.S.C. \xc2\xa7\n106A(a)(1)(A). That express right of attribution is carefully limited and focused: It\nattaches only to specified \xe2\x80\x9cworks of visual art,\xe2\x80\x9d is personal to the artist, and endures\nonly for \xe2\x80\x9cthe life of the author.\xe2\x80\x9d Recognizing in \xc2\xa7 43(a) a cause of action for\nmisrepresentation of authorship of noncopyrighted works (visual or otherwise)\nwould render these limitations superfluous. A statutory interpretation that renders\nanother statute superfluous is of course to be avoided.\nReading \xe2\x80\x9corigin\xe2\x80\x9d in \xc2\xa7 43(a) to require attribution of uncopyrighted materials would\npose serious practical problems. Without a copyrighted work as the basepoint, the\nword \xe2\x80\x9corigin\xe2\x80\x9d has no discernable limits. A video of the MGM film Carmen Jones,\nafter its copyright has expired, would presumably require attribution not just to\nMGM, but to Oscar Hammerstein II (who wrote the musical on which the film was\nbased), to Georges Bizet (who wrote the opera on which the musical was based), and\nto Prosper M\xc3\xa9rim\xc3\xa9e (who wrote the novel on which the opera was based). In many\ncases, figuring out who is in the line of \xe2\x80\x9corigin\xe2\x80\x9d would be no simple task. Indeed, in\nthe present case it is far from clear that respondents have that status. Neither SFM\nnor New Line had anything to do with the production of the Crusade television\nseries\xe2\x80\x94they merely were licensed to distribute the video version. While Fox might\nhave a claim to being in the line of origin, its involvement with the creation of the\ntelevision series was limited at best. Time, Inc., was the principal, if not the exclusive,\ncreator, albeit under arrangement with Fox. And of course it was neither Fox nor\nTime, Inc., that shot the film used in the Crusade television series. Rather, that\nfootage came from the United States Army, Navy, and Coast Guard, the British\nMinistry of Information and War Office, the National Film Board of Canada, and\n386\n\n\x0cunidentified \xe2\x80\x9cNewsreel Pool Cameramen.\xe2\x80\x9d If anyone has a claim to being the\noriginal creator of the material used in both the Crusade television series and the\nCampaigns videotapes, it would be those groups, rather than Fox. We do not think\nthe Lanham Act requires this search for the source of the Nile and all its tributaries.\nAnother practical difficulty of adopting a special definition of \xe2\x80\x9corigin\xe2\x80\x9d for\ncommunicative products is that it places the manufacturers of those products in a\ndifficult position. On the one hand, they would face Lanham Act liability for failing\nto credit the creator of a work on which their lawful copies are based; and on the\nother hand they could face Lanham Act liability for crediting the creator if that\nshould be regarded as implying the creator\xe2\x80\x99s \xe2\x80\x9csponsorship or approval\xe2\x80\x9d of the copy,\n15 U.S.C. \xc2\xa7 1125(a)(1)(A). In this case, for example, if Dastar had simply copied the\ntelevision series as Crusade in Europe and sold it as Crusade in Europe, without\nchanging the title or packaging (including the original credits to Fox), it is hard to\nhave confidence in respondents\xe2\x80\x99 assurance [at oral argument] that they would not be\nhere on a Lanham Act cause of action.\nFinally, reading \xc2\xa7 43(a) of the Lanham Act as creating a cause of action for, in effect,\nplagiarism\xe2\x80\x94the use of otherwise unprotected works and inventions without\nattribution \xe2\x80\x94would be hard to reconcile with our previous decisions. For example,\nin Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), we considered\nwhether product-design trade dress can ever be inherently distinctive. WalMart\nproduced \xe2\x80\x9cknockoffs\xe2\x80\x9d of children\xe2\x80\x99s clothes designed and manufactured by Samara\nBrothers, containing only minor modifications of the original designs. We concluded\nthat the designs could not be protected under \xc2\xa7 43(a) without a showing that they\nhad acquired \xe2\x80\x9csecondary meaning,\xe2\x80\x9d so that they \xe2\x80\x9cidentify the source of the product\nrather than the product itself.\xe2\x80\x9d This carefully considered limitation would be entirely\npointless if the \xe2\x80\x9coriginal\xe2\x80\x9d producer could turn around and pursue a reverse-passingoff claim under exactly the same provision of the Lanham Act. Samara would merely\nhave had to argue that it was the \xe2\x80\x9corigin\xe2\x80\x9d of the designs that Wal-Mart was selling as\nits own line. It was not, because \xe2\x80\x9corigin of goods\xe2\x80\x9d in the Lanham Act referred to the\nproducer of the clothes, and not the producer of the (potentially) copyrightable or\npatentable designs that the clothes embodied.\nSimilarly under respondents\xe2\x80\x99 theory, the \xe2\x80\x9corigin of goods\xe2\x80\x9d provision of \xc2\xa7 43(a)\nwould have supported the suit that we rejected in Bonito Boats, 489 U.S. 141, where\nthe defendants had used molds to duplicate the plaintiff\xe2\x80\x99s unpatented boat hulls\n(apparently without crediting the plaintiff). And it would have supported the suit we\nrejected in TrafFix: The plaintiff, whose patents on flexible road signs had expired,\nand who could not prevail on a trade-dress claim under \xc2\xa7 43(a) because the features\nof the signs were functional, would have had a reverse-passing-off claim for\nunattributed copying of his design.\nIn sum, reading the phrase \xe2\x80\x9corigin of goods\xe2\x80\x9d in the Lanham Act in accordance with\nthe Act\xe2\x80\x99s common-law foundations (which were not designed to protect originality\nor creativity), and in light of the copyright and patent laws (which were), we conclude\nthat the phrase refers to the producer of the tangible goods that are offered for sale,\nand not to the author of any idea, concept, or communication embodied in those\ngoods. Cf. 17 U.S.C. \xc2\xa7 202 (distinguishing between a copyrighted work and \xe2\x80\x9cany\nmaterial object in which the work is embodied\xe2\x80\x9d). To hold otherwise would be akin to\n387\n\n\x0cfinding that \xc2\xa7 43(a) created a species of perpetual patent and copyright, which\nCongress may not do. See Eldred v. Ashcroft, 537 U.S. 186, 208 (2003).\nThe creative talent of the sort that lay behind the Campaigns videos is not left\nwithout protection. The original film footage used in the Crusade television series\ncould have been copyrighted, see 17 U.S.C. \xc2\xa7 102(a)(6), as was copyrighted (as a\ncompilation) the Crusade television series, even though it included material from the\npublic domain. Had Fox renewed the copyright in the Crusade television series, it\nwould have had an easy claim of copyright infringement. And respondents\xe2\x80\x99\ncontention that Campaigns infringes Doubleday\xe2\x80\x99s copyright in General Eisenhower\xe2\x80\x99s\nbook is still a live question on remand. If, moreover, the producer of a video that\nsubstantially copied the Crusade series were, in advertising or promotion, to give\npurchasers the impression that the video was quite different from that series, then\none or more of the respondents might have a cause of action\xe2\x80\x94not for reverse\npassing off under the \xe2\x80\x9cconfusion . . . as to the origin\xe2\x80\x9d provision of \xc2\xa7 43(a)(1)(A), but\nfor misrepresentation under the \xe2\x80\x9cmisrepresents the nature, characteristics [or]\nqualities\xe2\x80\x9d provision of \xc2\xa7 43(a)(1)(B). For merely saying it is the producer of the video,\nhowever, no Lanham Act liability attaches to Dastar.\nThe judgment of the Court of Appeals for the Ninth Circuit is reversed, and the case\nis remanded for further proceedings consistent with this opinion.\nNotes and questions:\n(1) In Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003), a television producer brought a\nLanham Act claim against a competitor based on the competitor\xe2\x80\x99s release of a video set\nmade from tapes produced by the television producer. Summarizing his reasoning (at 37),\nJustice Scalia wrote, for a unanimous Court, that:\nreading the phrase \xe2\x80\x9corigin of goods\xe2\x80\x9d in the Lanham Act in accordance with the\nAct\xe2\x80\x99s common-law foundations (which were not designed to protect originality or\ncreativity), and in light of the copyright and patent laws (which were), \xe2\x80\xa6 the phrase\nrefers to the producer of the tangible goods that are offered for sale, and not to the\nauthor of any idea, concept, or communication embodied in those goods.\n\nBecause the defendant in Dastar was the originator of the video set it sold, as it created the\nvideo set in dispute, the court found for the defendant and held that there was no Lanham\nAct claim, even though the plaintiff had created the underlying television series. The Court\nheld that reissuing a public domain television series without attribution to the original author\ndoes not violate Section 43(a)\xe2\x80\x99s prohibition on false designation of origin.\n(2) Many courts and commentators have read Dastar as precluding almost any use of the\nLanham Act to vindicate an author\xe2\x80\x99s interest in attribution or integrity. See e.g. Narrative Ark\nEntertainment v. Archie Comic Publications, Inc., 2017 WL 3917040, at *12 (S.D.N.Y. Sept. 5,\n2017) (\xe2\x80\x9cDastar\xe2\x80\x99s holding barring Lanham Act claims premised on the false designation of the\norigin of ideas, concepts, or communications embodied in tangible goods, does not turn on\nwhether the work is still under copyright protection or in the public domain.\xe2\x80\x9d); Contractual\nObligation Products, LLC v. AMC Networks, Inc., 546 F. Supp. 2d 120, 130 (S.D.N.Y. 2008)\n(noting \xe2\x80\x9cdistrict court cases following Dastar have expressly rejected the argument that\nDastar does not apply where, as here, the work in issue is copyrighted\xe2\x80\x9d and collecting cases);\nZyla v. Wadsworth, 360 F.3d 243, 251\xe2\x80\x9352 (1st Cir. 2004) (concluding that Dastar was\n388\n\n\x0ccontrolling barred the plaintiff\xe2\x80\x99s Lanham Act claim.) However, others have taken a narrower\nreading.\nDefined Space, Inc. v. Lakeshore East, LLC 797 F.Supp.2d 896 (N.D. Ill. 2011)\nDistrict Judge Joan B. Gottschall\nDefined Space, Inc. (hereinafter, \xe2\x80\x9cDSI\xe2\x80\x9d) is the firm through which professional\nphotographer David B. Seide conducts his business. In 2005, DSI entered into a\nseries of agreements with the defendants (Lakeshore East, LLC, Magellan\nDevelopment Group, LLC, and NNP Residential, LLC) to produce color\nphotographs of the defendants\xe2\x80\x99 properties. The defendants planned to use these\nphotographs as part of their marketing campaign to rent and sell their properties.\nThe parties entered into a licensing agreement, in which the defendants agreed not to\ndisplay DSI\xe2\x80\x99s works without attribution. Although the defendants occasionally\ncredited DSI\xe2\x80\x99s work to DSI, sometimes they omitted this notice in their uses of\nDSI\xe2\x80\x99s work. DSI called this lack of attribution to the defendants\xe2\x80\x99 attention from time\nto time, but on occasion these omissions of attribution were not corrected.\n[DSI sued under various legal theories including a cause of action under the Lanham\nAct. Defendants filed a motion to dismiss.]\nThe defendants argue that the Lanham Act claim is preempted by the Court\xe2\x80\x99s\nholding in Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003). The defendants also cite\nto Natkin v. Winfrey, 111 F.Supp.2d 1003 (N.D.Ill.2000), and Cyber Websmith v.\nAmerican Dental Ass\xe2\x80\x99n, No. 09-CV-6198, 2010 WL 3075726 (N.D.Ill. Aug. 4, 2010). In\nresponse, DSI cites to Cable v. Agence France Presse, 728 F.Supp.2d 977 (N.D.Ill. 2010).\nIn Dastar, Twentieth Century Fox had acquired the exclusive television rights to\nGeneral Dwight D. Eisenhower\xe2\x80\x99s written account of the allied campaign in Europe,\n\xe2\x80\x9cCrusade in Europe.\xe2\x80\x9d Fox arranged for a production of a television series based\nupon the book, but did not renew the copyright on the television series when it\nexpired in 1977, leaving the series in the public domain. Dastar then took the original\nCrusade television series, copied the original beta cam tapes, edited them, and\nproduced a \xe2\x80\x9cCampaigns\xe2\x80\x9d series that had a new opening sequence, credit page, and\nfinal closing different from the original \xe2\x80\x9cCrusade\xe2\x80\x9d series. Dastar then manufactured\nand sold the Campaigns video set as its own product without giving credit to Fox.\nFox brought multiple claims against Dastar, including a \xe2\x80\x9creverse passing off claim\xe2\x80\x9d\nalleging that by not providing proper credit to the Crusade television series, Dastar\nviolated \xc2\xa7 43(a) of the Lanham Act by passing off Fox\xe2\x80\x99s product as Dastar\xe2\x80\x99s own\nwork.\nThe Supreme Court held that the Copyright Act precluded Fox\xe2\x80\x99s claims under the\nLanham Act. The Court began by noting that:\nThe Lanham Act was intended to make \xe2\x80\x9cactionable the deceptive and misleading\nuse of marks,\xe2\x80\x9d and \xe2\x80\x9cto protect persons engaged in ... commerce against unfair\ncompetition.\xe2\x80\x9d While much of the Lanham Act addresses the registration, use and\ninfringement of trademarks and related marks, \xc2\xa7 43(a), 15 U.S.C. \xc2\xa7 1125(a) is one of\nthe few provisions that goes beyond trademark protection. As originally enacted \xc2\xa7\n43(a) created a federal remedy against a person who used in commerce either \xe2\x80\x9ca\n\n389\n\n\x0cfalse designation of origin, or any false description or representation\xe2\x80\x9d in connection\nwith \xe2\x80\x9cany goods or services.\xe2\x80\x9d\n\nId. at 28-29. The Court reasoned that if \xe2\x80\x9corigin\xe2\x80\x9d were read to mean the person or\nentity that authored the material, such a reading would effectively create a system of\nperpetual copyright as it would force those wishing to use uncopyrighted works in\nthe public domain to credit the original authors or face liability under the Lanham\nAct. See id. at 36-37. Accordingly, this could cause serious practical problems for\nindividuals who sought to use materials in the public domain in as much as\ndiscerning the original author of many such materials would require a \xe2\x80\x9csearch for the\nsource of the Nile and all its tributaries.\xe2\x80\x9d Id. at 35-36. The Court held that as used in\nthe Lanham Act, \xe2\x80\x9corigin of goods\xe2\x80\x9d refers only to the producer of the tangible\nproduct sold in the marketplace \xe2\x80\x94 not the person or entity that originated the ideas.\nId. at 31. Because Dastar was the producer of the tangible product sold on the\nmarketplace, having edited the documentary, there was no \xe2\x80\x9cfalse designation of\norigin\xe2\x80\x9d and the Court dismissed Fox\xe2\x80\x99s Lanham Act claim. The Court noted, however,\nthat Fox\xe2\x80\x99s claim alleging false designation of origin would have been sustained if\nDastar had bought the Crusade videotapes and merely repackaged them as its own.\nId.\nIn Cyber Websmith, Cyber Websmith alleged that the defendants were operating\nwebsites for dental practices comprised of photographs copied directly from Cyber\nWebsmith\xe2\x80\x99s copyrighted website templates. These copies by the defendants were\nused in direct competition with Cyber Websmith\xe2\x80\x99s business of providing website\ndesign and marketing services to dental practices. The court held that the Copyright\nAct preempted Cyber Websmith\xe2\x80\x99s Lanham Act claim.\nAfter finding that the works in question were within the subject matter of the\ncopyright statute, the court asked whether the claims asserted by the plaintiff were\nmerely duplicative of its copyright claims. The court noted that to avoid preemption,\nan extra element must be incorporated in the claim that changes the nature of the\naction so that it is qualitatively different from a copyright infringement claim.\nAlthough the plaintiffs argued that they had alleged extra elements beyond those\nrequired for copyright infringement, the court held that \xe2\x80\x9cthe assertion of consumer\nconfusion and deception, without more,\xe2\x80\x9d did not allow the plaintiff to sidestep\npreemption. Furthermore, the court held that the plaintiff\xe2\x80\x99s allegations derived from\nnothing more than the \xe2\x80\x9cinherent misrepresentation that accompanies the\nunauthorized copying and distribution of another\xe2\x80\x99s copyrighted work.\xe2\x80\x9d For these\nreasons, the court dismissed the Lanham Act claim from the plaintiff\xe2\x80\x99s complaint.\nIn Cable, Cable was an experienced real estate photographer who sold his\nphotographs to a real estate firm, Garrison. Garrison agreed to limit the use of\nCable\xe2\x80\x99s works to marketing and to include a credit line prominently and clearly\nidentifying Cable as the creator of the photos. Cable alleged that Agence France\nPresse (\xe2\x80\x9cAFP\xe2\x80\x9d) caused his images to be copied from Garrison\xe2\x80\x99s website and used\nwithout his permission in an online photograph database. Additionally, Cable alleged\nthat AFP had deliberately removed Cable\xe2\x80\x99s photo credit and copyright notice. Cable\nalleged a violation of \xc2\xa7 43(a) of the Lanham Act based partially upon the theory that\nby removing the copyright notice and information, AFP had used a false designation\n\n390\n\n\x0cof origin and created the danger that the works at issue would be associated with\nAFP instead of Cable.\nThe court rejected AFP\xe2\x80\x99s argument that Dastar precluded a claim under the Lanham\nAct. It noted that \xe2\x80\x9cthe Dastar court limited its ruling in one important way \xe2\x80\x94 it\nstated that a claim under \xc2\xa7 43(a) \xe2\x80\x98would undoubtedly be sustained if Dastar had\nbought some of New Line\xe2\x80\x99s Crusade videotapes and merely repackaged them as its\nown.\xe2\x80\x99\xe2\x80\x9d Id. at 981 (quoting Dastar, 539 U.S. at 31). The court stated, \xe2\x80\x9cThis is what the\nplaintiff has alleged \xe2\x80\x94 that AFP took the plaintiff\xe2\x80\x99s photos and repackaged them as\ntheir own without revision.\xe2\x80\x9d Id. Because Cable\xe2\x80\x99s Lanham Act claim fit the\ndescription of the caveat in Dastar, the court declined to dismiss the claim.2\nFootnote 2: But see Agence France Presse v. Morel, 769 F.Supp.2d 295, 308 (S.D.N.Y.2011) (holding that the import\nof Dastar is that an author\xe2\x80\x99s sole recourse in copyright for unauthorized use cannot be avoided by shoe-horning\nthe claim into the Lanham Act).\n\nHere, the defendants assert that in the wake of Dastar, the Lanham Act claim alleged\nby DSI is preempted by the Copyright Act and should be dismissed. DSI responds\nby distinguishing Dastar as being primarily motivated by the public work nature of\nthe film in question. Additionally, DSI points out that Dastar explicitly left open a\nclaim under \xc2\xa7 43(a)(1)(B) under the Lanham Act. Dastar, 539 U.S. at 38; see 15 U.S.C.\n\xc2\xa7 1125 (allowing a party to bring a claim alleging false designation of origin in\ncommercial advertising or promotion). This, DSI suggests, makes Dastar wholly\ndistinguishable from the case at hand and therefore it should not preclude DSI\xe2\x80\x99s\nLanham Act claim.\nAs illustrated above, courts in this district addressing this issue post-Dastar are split.\nDastar rested heavily on the fact that the materials at issue were in the public domain\nand had been edited by Dastar prior to redistribution. In contrast, DSI alleges that\nthe defendants appropriated and used its copyrighted works without DSI\xe2\x80\x99s\npermission and without alteration. Thus, the Supreme Court\xe2\x80\x99s admonition that the\nLanham Act claim \xe2\x80\x9cwould undoubtedly be sustained if Dastar had bought some of\nNew Line\xe2\x80\x99s Crusade videotapes and merely repackaged them as its own\xe2\x80\x9d is directly\non point. Dastar, 539 U.S. at 31.\nHere, as in Cable, DSI alleges that the defendants took DSI\xe2\x80\x99s photographs and passed\nthem off as their own photographs without revision or proper accreditation. This\ncase does not involve works in the public domain, or the fear of a perpetual\ncopyright regime such as the Supreme Court faced in Dastar. Id. at 37. Nor does it\ninvolve an instance where the defendants are alleged to have made modifications to\nthe plaintiff\xe2\x80\x99s works before displaying the works. This court agrees with the analysis\nin Cable and finds that the facts here cleanly fit within the exception enunciated by\nDastar. See Cable, 728 F.Supp.2d at 981. Accordingly, this court denies the motion to\ndismiss the Lanham Act claim.\nNotes and questions:\n(1) In Defined Space, Inc. v. Lakeshore East, LLC 797 F.Supp.2d 896 (N.D. Ill. 2011), the\nNorthern District of Illinois held that a real estate developer\xe2\x80\x99s use of plaintiff photographer\xe2\x80\x99s\nworks without attribution had the potential to violate the Lanham Act.\n\n391\n\n\x0c(2) The district court in Defined Space argues that there is a difference between unattributed\ncopying of works that are themselves the goods (i.e., the photos in Defined Space) and works\nembodied in separate, tangible goods (i.e., the video cassettes in Dastar). The court argues\nthat Dastar was a case about the \xe2\x80\x9crepackaging\xe2\x80\x9d of works into tangible goods and should be\nlimited to that context. Is that a fair reading of Dastar?\n(3) The court in Defined Space put some weight on the distinction between works under\ncopyright and those in the public domain. Is there anything in Dastar to justify that? Should\npassing off and reverse passing off claims still be viable under Section 43(a) for works that\nare still under copyright protection?\n(4) Other courts have also narrowed the scope of Dastar by arguing that it precludes only\nclaims for non-attribution or \xe2\x80\x9creverse passing off,\xe2\x80\x9d but leaves available claims for\nmisattribution or \xe2\x80\x9cpassing off.\xe2\x80\x9d Finally, others rely on the fact that Dastar expressly left open\nclaims under section 43(a)(1)(B), which prohibits \xe2\x80\x9cmisrepresenting the nature, characteristics,\n[or] qualities\xe2\x80\x9d of goods or services in advertising. Are any of these readings of Dastar good\npolicy in your view?\n(5) In its 2019 report on moral rights, the Copyright Office concluded (at 58) that it found\nsome of the decisions offering a narrower interpretation of the Supreme Court\xe2\x80\x99s holding in\nDastar persuasive, but noted that \xe2\x80\x9ccase law on this issue will likely continue to develop.\xe2\x80\x9d The\nreport offers a tentative suggestion (at 58\xe2\x80\x9359) that\nCongress may consider adopting an amendment to section 43(a) that would expand\nthe unfair competition protections to include false representations regarding\nauthorship of communicative works. \xe2\x80\xa6 any such an amendment should be\nnarrowly crafted to focus on the purpose of the Lanham Act, and thus protect only\nagainst consumer confusion or mistake as to authorship or attribution, and not to\nprovide expanded copyright protection, or afford the author any additional control\nover permissible uses of the underlying work. Such a limitation would mitigate\nagainst the Dastar court\xe2\x80\x99s policy concerns about overlapping IP doctrines generally,\nand limitations on public domain uses specifically.\n\nShould Congress amend the Lanham Act to bring false representations regarding authorship\nof communicative works within the ambit of Section 43(a)?\n\nMoral rights in the United States under VARA\nThe United States recognizes moral rights for a limited class of \xe2\x80\x9cworks of visual art\xe2\x80\x9d under\nthe Visual Artists Rights Act of 1990 (VARA). The rights provided under VARA are a pale\nshadow of the French concept of \xe2\x80\x9cdroit moral,\xe2\x80\x9d in terms of their application, scope, and\nduration. VARA is codified at Section 106A of the Copyright Act.\nSection 106A(a) gives the author of a work of visual art certain rights of attribution and\nintegrity that stay with the author independent of any disposition of the exclusive rights\nprovided in Section 106.\nVARA rights are personal to the author or authors of the work.\nUnder VARA, moral rights are personal to the author and can only be exercised by the\nauthor. If there is more than one author, those joint authors are initially co-owners of the\nwork and are also co-owners of the moral rights provided for in Section 106A.\n392\n\n\x0cThe author\xe2\x80\x99s rights under VARA are nontransferable, but they can be waived by a written\ninstrument signed by the author. The rights in VARA are not affected by the author\xe2\x80\x99s\ntransfer of copyright, or by the sale of the physical embodiment of the work. Any rule to the\ncontrary would negate the entire rationale of maintaining separate economic and noneconomic rights.\nVARA rights are also personal in the sense that they are mostly limited to the life of the\nauthor, although for works created before VARA came into effect and whose copyright term\nis calculated under the 1909 Act, those rights expire with the copyright. See Section 106A(d)\nand the discussion of duration below.\nVARA rights can only be waived with specificity. Note that under section 106A(e)(1) this\nagreement must specify the work and the particular uses of the work to which the waiver\napplies. If the work is joint work, any one author can waive VARA rights for all co-authors,\nwith one exception. If a work was co-authored by A and B, A can\xe2\x80\x99t waive B\xe2\x80\x99s VARA rights\nand claim sole credit for their joint work. It follows therefore that an artist\xe2\x80\x99s display of\ncopyrighted photographs with a claim of sole authorship did not amount to a waiver of the\nalleged co-author\xe2\x80\x99s right of attribution under VARA. See Grauer v. Deutsch, 2002 WL\n31288937 (S.D.N.Y. Oct. 11, 2002).\nIn its 2019 report on moral rights, the Copyright Office argued (at 83) that allowing one\nauthor to waive the rights of another joint author \xe2\x80\x9ccontradicts the purpose of VARA to\nprotect personal rights and is inconsistent with the statutory prohibition against the transfer of\nthose rights.\xe2\x80\x9d On the contrary, if one joint author were not allowed to waive moral rights on\nbehalf of all the authors of a work, that joint author\xe2\x80\x99s economic rights would be held hostage\nto the other joint authors where VARA rights were implicated. Not allowing one joint\nauthor to waive for all would be inconsistent with the American rule that any joint author\nmay grant a license to the work without the approval of the other joint authors.\n17 U.S. Code \xc2\xa7 106A(b) Scope and Exercise of Rights.\xe2\x80\x94\nOnly the author of a work of visual art has the rights conferred by subsection (a) in\nthat work, whether or not the author is the copyright owner. The authors of a joint\nwork of visual art are co-owners of the rights conferred by subsection (a) in that\nwork.\n17 U.S. Code \xc2\xa7 106A (e) Transfer and Waiver.\xe2\x80\x94\n(1) The rights conferred by subsection (a) may not be transferred, but those rights\nmay be waived if the author expressly agrees to such waiver in a written instrument\nsigned by the author. Such instrument shall specifically identify the work, and uses\nof that work, to which the waiver applies, and the waiver shall apply only to the\nwork and uses so identified. In the case of a joint work prepared by two or more\nauthors, a waiver of rights under this paragraph made by one such author waives\nsuch rights for all such authors.\n(2) Ownership of the rights conferred by subsection (a) with respect to a work of\nvisual art is distinct from ownership of any copy of that work, or of a copyright or\nany exclusive right under a copyright in that work. Transfer of ownership of any\ncopy of a work of visual art, or of a copyright or any exclusive right under a\ncopyright, shall not constitute a waiver of the rights conferred by subsection (a).\nExcept as may otherwise be agreed by the author in a written instrument signed by\nthe author, a waiver of the rights conferred by subsection (a) with respect to a work\n\n393\n\n\x0cof visual art shall not constitute a transfer of ownership of any copy of that work, or\nof ownership of a copyright or of any exclusive right under a copyright in that work.\n\nVARA is limited to \xe2\x80\x9cworks of visual art\xe2\x80\x9d\nThe rights in Section 106A(a) apply only to \xe2\x80\x9cthe author of a work of visual art.\xe2\x80\x9d A \xe2\x80\x98work of\nvisual art\xe2\x80\x99 is limited to paintings, drawings, prints, and sculptures that are either single copies\nor limited editions of 200 or fewer. Also, works made for hire and many separate classes of\nwork are expressly excluded from the definition of a work of visual art.\n17 US Code \xc2\xa7 101 (Definitions)\nA \xe2\x80\x9cwork of visual art\xe2\x80\x9d is\xe2\x80\x94\n(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited\nedition of 200 copies or fewer that are signed and consecutively numbered by the\nauthor, or, in the case of a sculpture, in multiple cast, carved, or fabricated\nsculptures of 200 or fewer that are consecutively numbered by the author and bear\nthe signature or other identifying mark of the author; or\n(2) a still photographic image produced for exhibition purposes only, existing in a\nsingle copy that is signed by the author, or in a limited edition of 200 copies or\nfewer that are signed and consecutively numbered by the author.\nA work of visual art does not include\xe2\x80\x94\n(A)(i) any poster, map, globe, chart, technical drawing, diagram, model, applied art,\nmotion picture or other audiovisual work, book, magazine, newspaper, periodical,\ndata base, electronic information service, electronic publication, or similar\npublication;(ii) any merchandising item or advertising, promotional, descriptive,\ncovering, or packaging material or container; (iii) any portion or part of any item\ndescribed in clause (i) or (ii);\n(B) any work made for hire; or\n(C) any work not subject to copyright protection under this title.\n\nVARA is not a general moral rights statute: it has no application to literary works, musical\nworks, sound recordings, or any other non-visual class of copyright subject matter. Even\nwithin the category of visual works, section 106A has no application to works made for hire,\ncommercial art, or applied art. Some courts have also held that preparatory works and sitespecific works are excluded from VARA. These exclusions are discussed in more detail\nbelow. Furthermore, VARA does not protect non-copyrightable art. See e.g. Kelley v. Chicago\nPark Dist., 635 F.3d 290, 306 (7th Cir. 2011).\nWorks made for hire:\nRelatively few otherwise eligible works are excluded on the basis that they are works for hire\nbecause the kinds of single- or limited-edition visual art covered by VARA are not usually\nmade as works for hire, but there are exceptions. See Carter v. Helmsley-Spear, Inc. (\xe2\x80\x9cCarter II\xe2\x80\x9d),\n71 F.3d 77, 87\xe2\x80\x9388 (2d Cir. 1995).\nCommercial art:\n\n394\n\n\x0cThe Section 101 definition of a \xe2\x80\x9cwork of visual art\xe2\x80\x9d also excludes what can be loosely\ntermed commercial art, specifically, \xe2\x80\x9cany merchandising item or advertising, promotional,\ndescriptive, covering, or packaging material or container.\xe2\x80\x9d For example, in Pollara v. Seymour,\n344 F.3d 265, 269\xe2\x80\x9371 (2d Cir. 2003), the majority of the Second Circuit held found that the\n\xe2\x80\x9cobjective and evident purpose\xe2\x80\x9d of a banner created as part of a lobbying effort to promote\na specific message rendered the banner as promotional and advertising material and not an\neligible work of visual art, despite the artistic ability and creativity inherent in the work. The\nhand painted banner had been installed at public plaza without a permit and employees of\nNew York\xe2\x80\x99s Office of General Services had removed the banner. During removal, it was\ntorn vertically into three pieces.\nFigure 9 Banner in Pollara v. Seymour\n\nThe Copyright Office makes the following observations about the exclusion of commercial\nart from VARA in its 2019 report on moral rights (at 67):\nThe Office does not believe that Congress excluded commercial and promotional\nworks from the definition of \xe2\x80\x9cwork of visual art\xe2\x80\x9d because it believed such images to\nbe somehow artistically less worthy than so-called \xe2\x80\x9cfine art.\xe2\x80\x9d Instead, it appears\nmore likely that, \xe2\x80\xa6 Congress wanted to avoid interfering with works of art that\nwere controlled or influenced by an entity other than the artist\xe2\x80\x94and hence\npresumably are less attached to the artist\xe2\x80\x99s reputation\xe2\x80\x94as well as avoid interfering\nwith contractual freedoms. The Office accepts this apparent reasoning, but does\nbelieve that the commercial/\xe2\x80\x9dfine art\xe2\x80\x9d distinction can be drawn more narrowly than\nthe current statute has it.\n\nIn its report, the Office recommended that Congress consider an amendment to the\ndefinition of a \xe2\x80\x9cwork of visual art\xe2\x80\x9d along the lines of the definition of an eligible work\nsimilar to that used by the California Art Preservation Act. It suggested (at 68) adding the\nphrase \xe2\x80\x9cprepared under contract for commercial use by its purchaser\xe2\x80\x9d to the definition in\nSection 101 such that the proposed Section 101 would read:\na work of visual art does not include \xe2\x80\x93 (A) . . . (ii) any merchandising item or\nadvertising, promotional, descriptive, covering, or packaging material or container,\nany of which are prepared under contract for commercial use by its purchaser.\n\nApplied art:\nVARA\xe2\x80\x99s standard for a \xe2\x80\x9cwork of visual art\xe2\x80\x9d also specifically excludes \xe2\x80\x9capplied art,\xe2\x80\x9d which\nthe statute does not define. What then is a work of applied art? The case of Cheffins v. Stewart,\n825 F.3d 588 (9th Cir. 2016) concerned a mobile replica of 16th-century Spanish galleon,\n\n395\n\n\x0cbuilt from used school bus that featured at the Burning Man festival. In Cheffins, the majority\nof the Ninth Circuit elaborated the concept of \xe2\x80\x9capplied art\xe2\x80\x9d as follows (at 594):\nWe therefore hold that an object constitutes a piece of \xe2\x80\x9capplied art\xe2\x80\x9d \xe2\x80\x94 as opposed\nto a \xe2\x80\x9cwork of visual art\xe2\x80\x9d \xe2\x80\x94 where the object initially served a utilitarian function\nand the object continues to serve such a function after the artist made\nembellishments or alterations to it. This test embraces the circumstances both where\na functional object incorporates a decorative design in its initial formulation, and\nwhere a functional object is decorated after manufacture but continues to serve a\npractical purpose. Conversely, \xe2\x80\x9capplied art\xe2\x80\x9d would not include a piece of art whose\nfunction is purely aesthetic or a utilitarian object which is so transformed through\nthe addition of artistic elements that its utilitarian functions cease.\n\nApplying this definition the majority said (at 595):\nThe La Contessa began as a simple school bus \xe2\x80\x94 an object which unquestionably\nserved the utilitarian function of transportation. To transform the bus into the La\nContessa, Cheffins and Jones adorned it with the visual trappings of a 16th-century\nSpanish galleon. While the La Contessa\xe2\x80\x99s elaborate decorative elements may have had\nmany artistic qualities, the La Contessa retained a largely practical function even after\nit had been completed. At Burning Man, the La Contessa was used for transportation,\nproviding rides to festival-goers, hosting musical performances and weddings, and\nserving as a stage for poetry and acrobatics shows. Indeed, the La Contessa often was\ndriven about the Festival grounds and was banned from the Festival in 2004 because\n\xe2\x80\x9cits unsafe driving practices far exceeded community tolerance and out-weighed the\nvisual contribution\xe2\x80\x9d it made.\nUnder the definition we adopt today, the La Contessa plainly was \xe2\x80\x9capplied art.\xe2\x80\x9d It\nbegan as a rudimentary utilitarian object, and despite being visually transformed\nthrough elaborate artistry, it continued to serve a significant utilitarian function\nupon its completion. As \xe2\x80\x9capplied art,\xe2\x80\x9d the La Contessa was not a work of visual art\nunder the VARA and therefore not eligible for its protection. Therefore, the trial\ncourt properly granted summary judgment to Stewart on Cheffins and Jones\xe2\x80\x99s\nVARA claim.\n\n396\n\n\x0cFigure 10 La Contessa (Cheffins v. Stewart)\n\nIn her concurring opinion in Cheffins v. Stewart, Judge McKeown expressed concern that the\nmajority\xe2\x80\x99s focus on whether an object has or retains a utilitarian function ran \xe2\x80\x9cthe risk of\nunduly narrowing the protections of artists under the Visual Artist Right\xe2\x80\x99s Act of 1990 and\nnot focusing on the work as a whole.\xe2\x80\x9d Judge McKeown argued that the right question to ask\nin determining whether a work is \xe2\x80\x9capplied art,\xe2\x80\x9d was \xe2\x80\x9cwhether the primary purpose of the\nwork as a whole is to serve a practical, useful function, and whether the aesthetic elements\nare subservient to that utilitarian purpose.\xe2\x80\x9d However, she found that even under this more\nflexible test the bus/Spanish galleon, La Contessa, was applied art outside the scope of\nSection 106A of the Copyright Act.\nPreparatory works:\nCourts have sometimes held that preparatory works do not qualify as works of visual art\nbecause the fall under the exclusion of \xe2\x80\x9cmodel[s]\xe2\x80\x9d in the Section 101 definition. In\nNASCAR v. Scharle, 184 Fed. App\xe2\x80\x99x. 270 (3d Cir. 2006), the Third Circuit held that drawings\nfor the two- dimensional design of a trophy fell were not works of visual art, but merely\nmodels created to \xe2\x80\x9carrive at the optimal design for the trophy,\xe2\x80\x9d the final product. In contrast,\nin Flack v. Friends of Queen Catherine, Inc., 139 F. Supp. 2d 526 (S.D.N.Y. 2001) the district\ncourt held that a clay head used to cast a bronze statue was not excluded from the protection\nof VARA. The court relied on the art community\xe2\x80\x99s acceptance and exhibition of clay\nsculptures as works of art in their own right to distinguish the work from the kinds of\nmodels excluded from the definition of works of visual art.\nSite-specific works:\nVARA does not specifically mention \xe2\x80\x9csite-specific works;\xe2\x80\x9d however, the First Circuit in\nPhillips v. Pembroke Real Estate, 459 F.3d 128 (1st Cir. 2006) found that VARA did not apply to\n\n397\n\n\x0ca multi-element sculpture designed for a specific park. The First Circuit\xe2\x80\x99s reading of the\nstatute is difficult to square with the building exception in Section 113(d) of the Copyright\nAct which acknowledges potential protection for site-specific art. See Kelley v. Chicago Park\nDist. 635 F.3d 290, 306\xe2\x80\x9307 (7th Cir. 2011). See also Cohen v. G&M Realty LP, 320 F.Supp.3d\n421 (E.D. N.Y. 2018) extracted below.\nFigure 11 Phillips v. Pembroke Real Estate\n\nThe rights of attribution and integrity and their limits\nVARA provides rights of attribution and integrity, but rights of disclosure, withdrawal, or\nany right to resale royalties.\n17 U.S. Code \xc2\xa7 106A(a)\n(a) Rights of Attribution and Integrity.\xe2\x80\x94 Subject to section 107 and independent of\nthe exclusive rights provided in section 106, the author of a work of visual art\xe2\x80\x94\n(1) shall have the right\xe2\x80\x94(A) to claim authorship of that work, and (B) to prevent\nthe use of his or her name as the author of any work of visual art which he or she\ndid not create;\n(2) shall have the right to prevent the use of his or her name as the author of the\nwork of visual art in the event of a distortion, mutilation, or other modification of\nthe work which would be prejudicial to his or her honor or reputation; and\n(3) subject to the limitations set forth in section 113 (d), shall have the right\xe2\x80\x94(A) to\nprevent any intentional distortion, mutilation, or other modification of that work\nwhich would be prejudicial to his or her honor or reputation, and any intentional\ndistortion, mutilation, or modification of that work is a violation of that right, and\n(B) to prevent any destruction of a work of recognized stature, and any intentional\nor grossly negligent destruction of that work is a violation of that right.\n\nSection 106A(a)(1) and (2) protect some limited reputational interests of the author of a\nwork of visual art. Under Section 106A(a)(1), the author of a work of visual art has the right\nto claim authorship of that work and to prevent being held out as the author of any work of\nvisual art she did not create. Under Section 106A(a)(2), the author also has the right to\nprevent the use of her name as the author of the work of visual art if that work has been\ndistorted, mutilated, or modified in some other way that \xe2\x80\x9cwould be prejudicial to his or her\nhonor or reputation.\xe2\x80\x9d\n\n398\n\n\x0cSection 106A(a)(3) goes beyond issues of attribution and actually vests the author of a work\nof visual art with two important rights in relation to the work itself. Subsection (A) gives the\nauthor the right to prevent any intentional distortion, mutilation, or other prejudicial modification\nof that work. This excludes any change to the work resulting from the passage of time or the\ninherent nature of the materials used, see Section 106A(c)(1). It also excludes any\nmodification resulting from conservation or public presentation (including lighting and\nplacement), unless the modification is caused by gross negligence, see Section 106A(c)(1)(2).\nSection 106A(a)(3), subsection (B) gives the author the right to \xe2\x80\x9cprevent any destruction of a\nwork of recognized stature, and any intentional or grossly negligent destruction of that work\nis a violation of that right.\xe2\x80\x9d The right to prevent intentional distortion, mutilation, or\nprejudicial modification and the right to prevent the destruction of the work of recognized\nstature are both subject to limitations in Section 113(d) if the work has been incorporated in\nor made part of a building. These provisions are discussed in the 5Points case, below.\nThe right of attribution does not apply in relation to reproductions in a significant set of\nsituations.\n17 U.S. Code \xc2\xa7 106A(c)(3)\nThe rights described in paragraphs (1) and (2) of subsection (a) shall not apply to\nany reproduction, depiction, portrayal, or other use of a work in, upon, or in any\nconnection with any item described in subparagraph (A) or (B) of the definition of\n\xe2\x80\x9cwork of visual art\xe2\x80\x9d in section 101, and any such reproduction, depiction, portrayal,\nor other use of a work is not a destruction, distortion, mutilation, or other\nmodification described in paragraph (3) of subsection (a).\n\nSection 106A(c)(3) provides that the rights relating to attribution do not apply to \xe2\x80\x9cany\nreproduction, depiction, portrayal, or other use of a work\xe2\x80\x9d in various contexts, including\nmaps, technical drawings, motion pictures, books, magazines, electronic publications, or\nadvertising, to name just a few. Likewise, the reproduction of a work of visual art, or its\ndepiction or portrayal is not considered \xe2\x80\x9ca destruction, distortion, mutilation, or\nmodification\xe2\x80\x9d for the purposes of \xc2\xa7 106A(a)(3). As the Copyright Office report on moral\nrights explains (at 75):\nUnder this exception, a reproduction of an artist\xe2\x80\x99s visual work on a poster or in a\nmagazine need not be accompanied by the artist\xe2\x80\x99s name. Many of the attribution\nclaims brought under VARA focus on a reproduction, not the original, work of\nvisual art. Courts have consistently dismissed these claims under this exception.93\n\nThe duration rights under VARA\nThere are three different possibilities for the duration of rights under VARA, only one of\nwhich really makes sense. If moral rights protect the artist\xe2\x80\x99s reputation and special personal\nconnection with the work, it should follow that those rights exist while the artist is alive and\nThe report cites, Wilson v. New Palace Casino, L.L.C., No. 1:11cv447, 2013 WL 870350, at *3\xe2\x80\x934 (S.D. Miss.\nMar. 7, 2013) (dismissing the artist\xe2\x80\x99s attribution claim in relation to reproductions of a feature of his original\npainting); Martin v. Walt Disney Internet Grp., No. 09CV1601, 2010 WL 2634695, at *5 (S.D. Cal. June 30, 2010)\n(dismissing the plaintiff\xe2\x80\x99s attribution claim regarding reproductions of her photograph); Silberman v. Innovation\nLuggage, Inc., No. 01 Civ. 7109, 2003 WL 1787123, at *4\xe2\x80\x935 (S.D.N.Y. Apr. 3, 2003) (holding that the artist could\nnot assert an attribution claim under VARA in relation to unsigned reproductions of the artist\xe2\x80\x99s original\nphotograph).\n93\n\n399\n\n\x0cdie with the artist. This is the rule for works made after the effective date of VARA (June 1,\n1991).\nHowever, for works created but not transferred before the effective date of VARA, the\nartist\xe2\x80\x99s rights endure for the duration of her other copyright rights, i.e., a term of life plus 70\nyears. Conversely, artists who transferred title to their works before June 1, 1991 have no\nrights under VARA. As the Copyright Office notes in its 2019 report on moral rights (at 81):\nThis particular provision has created certain inconsistencies regarding duration of\nrights. If an artist created a painting in 1985 (for which he did not transfer title\nbefore 1991) and dies in 2005, then the copyright term and the artist\xe2\x80\x99s rights of\nintegrity and attribution for that painting will last until 2075. However, if the artist\ncreated a painting in 1995 and died in 2005, then the copyright term will last until\n2075 but the rights of integrity and attribution would have lasted for a shorter time,\nuntil 2005.\n\nA case study of VARA in action\nCohen v. G&M Realty LP, 320 F.Supp.3d 421 (EDNY 2018) (February 12, 2018)\nFive 5 Points Pointz in LIC Queens Graffiti\nCredit: Jakub Redziniak (2010) CC BY-NC-ND 2.0 license\n\nSenior District Judge Block\nThis marks the latest chapter in the ongoing saga of what has commonly become\nknown as the 5Pointz litigation. Plaintiffs, 21 aerosol artists, initiated this lawsuit\nover four years ago by seeking a preliminary injunction under the Visual Artists\nRights Act of 1990 (\xe2\x80\x9cVARA\xe2\x80\x9d), 17 U.S.C. \xc2\xa7 106A, against defendants Gerald Wolkoff\n(\xe2\x80\x9cWolkoff\xe2\x80\x9d) and four of his real estate entities to prevent the planned demolition by\n\n400\n\n\x0cWolkoff of his warehouse buildings in Long Island City and consequent destruction\nof plaintiffs\xe2\x80\x99 paintings on the walls of the buildings.\nI\nOn November 12, 2013, after a hearing, the Court issued an order denying\npreliminary injunctive relief and stating that \xe2\x80\x9ca written opinion would soon be issued.\xe2\x80\x9d\nRather than wait for the Court\xe2\x80\x99s opinion, which was issued just eight days later on\nNovember 20th, Wolkoff destroyed almost all of the plaintiffs\xe2\x80\x99 paintings by\nwhitewashing them during that eight-day interim.\nIn its extensive opinion the Court initially noted that Wolkoff\xe2\x80\x99s buildings \xe2\x80\x9chad\nbecome the repository of the largest collection of exterior aerosol art . . . in the\nUnited States\xe2\x80\x9d and that this litigation \xe2\x80\x9cmarks the first occasion that a court has had\nto determine whether the work of an exterior aerosol artist\xe2\x80\x94given its general\nephemeral nature\xe2\x80\x94is worthy of any protection under the law.\xe2\x80\x9d Cohen v. G & M\nRealty L.P., 988 F. Supp. 2d 212, 214 (E.D.N.Y. 2013) (\xe2\x80\x9cCohen I\xe2\x80\x9d).\nIn denying the plaintiffs\xe2\x80\x99 application for preliminary injunctive relief, the Court\nrecognized that the rights created by VARA were at tension with conventional\nnotions of property rights and tried to balance these rights. It did so by not\ninterfering with Wolkoff\xe2\x80\x99s desire to tear down the warehouses to make way for highrise luxury condos, but cautioned that \xe2\x80\x9cdefendants are exposed to potentially\nsignificant monetary damages if it is ultimately determined after trial that the\nplaintiffs\xe2\x80\x99 works were of \xe2\x80\x98recognized stature\xe2\x80\x99\xe2\x80\x9d under VARA.\nThe trial has now happened. It lasted three weeks. At plaintiffs\xe2\x80\x99 insistence, it was\ntried before a jury, but just prior to summations, plaintiffs\xe2\x80\x94with defendants\xe2\x80\x99\nconsent\xe2\x80\x94waived their jury rights. Rather than summarily dismiss the jury after it had\nsat through the entire trial, the Court converted it to an advisory jury. During its\ncharge, the Court carefully explained the parties\xe2\x80\x99 rights and obligations under VARA,\nincluding the plaintiffs\xe2\x80\x99 entitlement to substantial statutory damages if the jury\ndetermined that Wolkoff had violated plaintiffs\xe2\x80\x99 VARA rights and that he had acted\nwillfully. On a 98-page verdict sheet, the jury found liability and made various\ndamage awards in respect to 36 of plaintiffs\xe2\x80\x99 49 works of art that were the subject of\nthe lawsuit. In every case they found that Wolkoff had acted willfully.\nAlthough the Court does not agree with all of the jurors\xe2\x80\x99 findings, it does agree that\nWolkoff willfully violated plaintiffs\xe2\x80\x99 VARA rights in respect to those 36 paintings.\nThe Court further finds that liability and willfulness should attach to an additional\nnine works.\nGiven the abject nature of Wolkoff\xe2\x80\x99s willful conduct, the Court awards the\nmaximum statutory damages under VARA for each of the 45 works of art\nwrongfully and willfully destroyed in the combined sum of $6,750,000.\nII\nA. The Relevant Statutory Framework\nAs the Court explained in Cohen I, \xe2\x80\x9cVARA amended existing copyright law to add\nprotections for two \xe2\x80\x98moral rights\xe2\x80\x99 of artists: the rights of attribution and integrity.\xe2\x80\x9d\n\n401\n\n\x0cCohen I, 988 F. Supp. 2d at 215. VARA has codified the right to integrity to provide\n\xe2\x80\x9cthe author of a work of visual art\xe2\x80\x9d the right\n(A) to prevent any intentional destruction, mutilation, or other modification of that\nwork which would be prejudicial to his or her honor or reputation, and any\nintentional distortion, mutilation, or modification of that work is a violation of that\nright, and\n(B) to prevent any destruction of a work of recognized stature, and any intentional\nor grossly negligent destruction of that work is a violation of that right.\n\n17 U.S.C. \xc2\xa7 106A(a)(3).\nThus, in Cohen I, the Court held that plaintiffs\xe2\x80\x99 aerosol art comes under VARA\xe2\x80\x99s\nprotection as works of \xe2\x80\x9cvisual art\xe2\x80\x9d, and that, under \xc2\xa7 106A(a)(3)(B), VARA gives the\n\xe2\x80\x98author of a work of visual art\xe2\x80\x99 the right to sue to prevent the destruction of the work\nif it is one of \xe2\x80\x9crecognized stature.\xe2\x80\x9d VARA also permits the artist to seek monetary\ndamages under \xc2\xa7 106A(a)(3)(A) if the work was distorted, mutilated, or otherwise\nmodified to the prejudice of the artist\xe2\x80\x99s honor or reputation.\nSection 113(d)(1) of VARA provides that\nIn a case in which \xe2\x80\x94\n(A) a work of visual art has been incorporated in or made part of a building in such\na way that removing the work from the building will cause the destruction,\ndistortion, mutilation, or other modification of the work as described in section\n106A(a)(3), and\n(B) the author consented to the installation of the work in the building either before\nthe effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990,\nor in a written instrument executed on or after such effective date that is signed by\nthe owner of the building and the author and that specifies that installation of the\nwork may subject the work to destruction, distortion, mutilation, or other\nmodification, by reason of its removal, then the rights conferred by paragraphs (2)\nand (3) of section 106A(a) shall not apply.2\nFootnote 2: Paragraph (2) \xe2\x80\x94 not applicable in this case \xe2\x80\x94 protects the right of attribution by affording the artist\n\xe2\x80\x9cthe right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion,\nmutilation, or other modification of the work which would be prejudicial to his or her honor or reputation.\xe2\x80\x9d\n\nSection 113(d)(2) provides, in part, that\nIf the owner of a building wishes to remove a work of visual art which is a part of\nsuch building and which can be removed from the building without the destruction,\nmutilation, or other modification of the work as described in section 106A(a)(3), the\nauthor\xe2\x80\x99s rights under paragraphs (2) and (3) of section 106A(a) shall apply unless\xe2\x80\x94\n(A) the owner has made a diligent, good faith attempt without success to notify the\nauthor of the owner\xe2\x80\x99s intended action affecting the work of visual art, or\n(B) the owner did provide such notice in writing and the person so notified failed,\nwithin 90 days after receiving such notice, either to remove the work or to pay for\nits removal.\n\nThus, \xc2\xa7 113(d) provides for two possibilities when a protected work of art has been\nintegrated into a building subsequent to June 1, 1991, VARA\xe2\x80\x99s effective date. Section\n113(d)(1) deals with works of visual art that cannot be removed without causing\n\n402\n\n\x0cdestruction, mutilation, or other modifications to the work. Section 113(d)(2) deals\nwith works of visual art that can be removed without causing such harm.\nUnder \xc2\xa7 113(d)(1), if a work is not removable without destroying, mutilating,\ndistorting, or otherwise modifying the work, the artist\xe2\x80\x99s VARA right of integrity\nunder \xc2\xa7 106A(3) attach, and the artist may sue to prevent the destruction of the work\nunless the right is waived \xe2\x80\x9cin a written instrument . . . that is signed by the owner of the\nbuilding and the author and that specifies that installation of the work may subject the\nwork to destruction, distortion, mutilation, or other modification, by reason of its\nremoval.\xe2\x80\x9d \xc2\xa7 113(d)(1)(B) (emphasis added).\nUnder \xc2\xa7 113(d)(2), if a work is removable without destroying, mutilating, distorting,\nor otherwise modifying it, VARA gives the artist the opportunity to salvage the work\nupon receipt of a 90 days\xe2\x80\x99 written notice from the building owner of the owner\xe2\x80\x99s\n\xe2\x80\x9cintended action affecting the work of visual art.\xe2\x80\x9d 17 U.S.C. \xc2\xa7\xc2\xa7 113(d)(2)(A)-(B). If\nthe artist fails to remove or pay for the removal of the works within the 90 days \xe2\x80\x94or\nif the owner could not notify the artist after making a \xe2\x80\x9cgood faith effort,\xe2\x80\x9d 17 U.S.C. \xc2\xa7\n113(d)(2)(A)\xe2\x80\x94the artist\xe2\x80\x99s VARA rights are deemed waived for the removable work,\nand the owner may destroy them without consequences.\nDamages that may be awarded for the violation of the artist\xe2\x80\x99s rights of attribution\nand integrity under \xc2\xa7 106A(a)(3) are the same that apply for copyright infringement,\nnamely actual (including profits) and statutory. 17 U.S.C. \xc2\xa7 504(a). As the House\nJudiciary Committee Report explained:\nSection 6(a) of the bill simply amends section 501(a) of title 17 to add those authors\ncovered by new section 106A . . . . It thereby makes all title 17 remedies [except\ncriminal sanctions] available to those authors. . . . [VARA] thereby provides for\nmonetary damages, and for injunctive relief to prevent future harm. The same\nstandards that the courts presently use to determine whether such relief is appropriate for violations\nof section 106 rights will apply to violations of section 106A rights as well.\n\nHouse Report at 21-22 (1990) (emphasis added).\nThere is no limit to the amount of actual damages for each work, but statutory\ndamages for each may be \xe2\x80\x9cnot less than $750 or more than $30,000 as the court\nconsiders just.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 504(c)(1). If, however, the plaintiff \xe2\x80\x9csustains the burden\nof proving, and the court finds, that infringement was committed willfully, the court\nin its discretion may increase the award of statutory damages\xe2\x80\x9d for each work \xe2\x80\x9cto a\nsum of not more than $150,000.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 504(c)(2). The plaintiff is not entitled\nto both actual and statutory damages but must elect one or the other \xe2\x80\x9cbefore final\njudgment is rendered[.]\xe2\x80\x9d 17 U.S.C. \xc2\xa7 504(c)(1).\nB. The Advisory Jury\n\xe2\x80\xa6 The Court would be remiss if it did not pause to acknowledge the extraordinary\nwork of the eight jurors. Rarely were they late during the course of the extensive trial,\nand the Court was impressed with their rapt attention to the difficult task that\nawaited them in having to assess the defendants\xe2\x80\x99 liability in respect to each of the 49\nworks of art. Since the jurors had spent the better part of a month in anticipation of\ndeliberating, the Court was disinclined to summarily dismiss them when, at the\nveritable 11th hour, the plaintiffs suddenly decided to convert the case to a bench\n\n403\n\n\x0ctrial. Moreover, since 5Pointz had achieved worldwide community recognition, the\nCourt was keen to learn whether the jurors, as members of the community, would\nview the works as having achieved recognized stature under VARA. To enhance the\nintegrity of their verdicts, the Court decided it best not to tell the jurors that their\nfindings would only be advisory.\nThe complexity of the litigation did not deter the jurors from making individualized\nfindings in respect to each of the 21 artists and their 49 works on the 98-page verdict\nsheet. They were tasked with having to determine whether each destroyed work was\nof recognized stature and/or was mutilated, distorted, or otherwise modified to the\nprejudice of the artist\xe2\x80\x99s honor or reputation by the whitewashing. They found that 28\nof the 49 destroyed works had achieved recognized stature, and eight more had been\nmutilated, distorted, or otherwise modified to the prejudice of the artists\xe2\x80\x99 honor or\nreputation. Each of the 21 plaintiffs were adversely affected in one way or the other,\nand the jury had to individually assess whether actual and statutory damages were\nwarranted in regard to each work. It awarded a total of $545,750 in actual damages\nand $651,750 in statutory damages.\nC. The Witnesses and Evidentiary Landscape\nEach of the 21 plaintiffs/artists testified; they were respectful, articulate and credible.\nFolios for each were admitted into evidence collectively containing their professional\nachievements and recognition in the form of an impressive array of fellowships,\nresidences, public and private commissions, teaching positions, media coverage, and\nsocial media presence. Not surprisingly, each of the 21 Folios contained beautiful\ncolor prints of the artists\xe2\x80\x99 respective aerosol works of art which are the subject of the\nlawsuit. They are appended to this opinion. It is apparent that they reflect striking\ntechnical and artistic mastery and vision worthy of display in prominent museums if\nnot on the walls of 5Pointz. The Folios also contain photos showing how almost all\nof these works of art were partially or wholly whitewashed by Wolkoff.\n5Pointz was an egalitarian place. The artists came from many backgrounds. Some of\nthe plaintiffs testified via Skype from international residences. Many who live in New\nYork had immigrated from other countries to join the 5Pointz community. One\nartist flew from London to testify; another came of age in rural West Virginia. Some\nartists came from highly prestigious art schools; others were selftaught. Some were\nfixtures in elite, traditional art circles; others were simply dedicated to street and\ncommunity art. The Court was impressed with the breadth of the artists\xe2\x80\x99 works and\nhow many of the works spoke to the social issues of our times.\nThe principal testimony about the advent, evolution and demolition of 5Pointz came\nfrom plaintiff Jonathan Cohen, one of the world\xe2\x80\x99s most accomplished aerosol artists.\nWolkoff had designated Cohen as 5Pointz\xe2\x80\x99s de facto curator, appointing him to run\nthe site and pick the works he thought were of merit: \xe2\x80\x9cI gave him permission, plain,\nJonathan, you are in charge, bring whoever you think is right to come and display\ntheir work on my building.\xe2\x80\x9d Tr. at 2025:4-8.\nIn addition to the artists, three experts testified for the plaintiffs. Renee Vara, a\ncertified art appraiser, former head fine art expert at Chubb Insurance and art\nprofessor at New York University, testified to the quality and recognized stature of\nthe works; Elizabeth Littlejohn, an art appraiser certified through the Appraisers\n404\n\n\x0cAssociation of America, testified to their appraisal value; and Harriet Irgang Alden,\nthe chief paintings conservator at Art Care NYC, testified as to the removability of\neach of the artworks from the 5 Pointz walls.\nPlaintiffs also called two fact witnesses. Angelo Madrigale, Vice President and\nDirector of Contemporary Art at Doyle New York, an auction house, wrote a letter\nupon which Vara relied in formulating her report. He testified to the artistic\nimportance of the works. Lois Stavsky developed a 5Pointz exhibit for Google Arts\nand Culture and testified to the creation of that exhibit and why Google believed that\n5Pointz was a culturally significant site.\nWolkoff was the defendants\xe2\x80\x99 principal witness. He testified to his rise from a poor\nchildhood to become a successful real estate developer and explained his role in the\nadvent and success of 5 Pointz. He was adamant that the artists knew that the day\nwould come when the warehouse buildings bearing their works of art would come\ndown and be replaced by high-rise residential condos.\nAlthough the Court believes that Wolkoff in the main testified truthfully, he was a\ndifficult witness. He frequently ignored or challenged instructions by the Court. He\nwas argumentative and prone to tangents and non-responsive answers. Eliciting\ncoherent testimony was a chore and was only achieved after the Court threatened to\nhold him in contempt.\nIn addition to Wolkoff, two experts testified for the defendants. Erin Thompson, a\nprofessor of art history at the City University of New York and practicing art lawyer,\ntestified as to the issue of recognized stature, and Christopher Gaillard, a fine art\nappraiser with the art appraisal and acquisition firm Gurr Johns, testified as to the\nworks\xe2\x80\x99 appraisal value.\nThe story of 5Pointz that follows comes primarily from the lips of Cohen and\nWolkoff.\nIII\nA. The Advent and Evolution of 5Pointz\nWhat became 5Pointz originated as Phun Phactory in the early 1990s. The\nwarehouses were largely dilapidated and the neighborhood was crime infested. There\nwas no control over the artists who painted on the walls of the buildings or the\nquality of their work, which was largely viewed by the public as nothing more than\ngraffiti. This started to change in 2002 when Wolkoff put Cohen in charge. Cohen\nand several other artists also rented studio space in the warehouse buildings.\nCollectively, they worked to improve conditions. As Cohen explained:\nWe took it upon ourselves to clean the loading dock. . . . The dumpsters were\noverflowing. We took it upon ourselves, we hired his employees, we paid for the\nlighting. We put motion sensors up so that when you came to the loading dock it\nwas inviting. It actually drew you in as opposed to scaring you away.\n\nWolkoff recognized the merit of the art. As he acknowledged: \xe2\x80\x9cI liked it and they did\nmore and more and I thought it was terrific. They were expressing themselves.\xe2\x80\x9d And\nhe approved of the job Cohen did in curating the art: \xe2\x80\x9cI have no feelings even today\n\n405\n\n\x0cagainst Jonathan Cohen. I thought he was terrific handling my building. . . . Anything\nto do with art I left up to Jonathan. He had good taste in the artists that came there.\xe2\x80\x9d\nUntil Wolkoff decided over a decade later that the economic climate was ripe to\nconvert the site into luxury condos, he and Cohen had a copacetic relationship.\nBut nothing was ever reduced to writing and Wolkoff only verbally laid out three\nrules for what could be put on the walls: no pornography, no religious content, and\nnothing political. In his role, Cohen established a system of rules for both the\ncreation and curation of the art, spending seven days a week without pay to bring\n5Pointz to fruition.\nCohen oversaw the site, kept it clean and safe, allotted wall space, and explained the\nsite\xe2\x80\x99s rules and norms to new artists. Over time, crime in the neighborhood dropped\nand the site became a major attraction drawing thousands of daily visitors, including\nbusloads of tourists, school trips, and weddings. Movie, television, and music video\nproducers came; it was used for the 2013 motion picture Now You See Me, starring\nJesse Eisenberg and Mark Ruffalo, and was the site of a notable tour for R&B singer\nUsher.\nAs the plaintiff Castillo explained, \xe2\x80\x9cstreet art became a new form,\xe2\x80\x9d which \xe2\x80\x9cnow has\nbecome an industry.\xe2\x80\x9d And 5Pointz became \xe2\x80\x9cthis outdoor museum where kids can\ntouch the wall, and . . you can\xe2\x80\x99t do that at a museum. You can\xe2\x80\x99t go and touch a Van\nGogh or like a Mona Lisa.\xe2\x80\x9d\nWolkoff had nothing to do with day-to-day operations. Under Cohen\xe2\x80\x99s control, he\nwitnessed his buildings emerge as a mecca for the world\xe2\x80\x99s largest collection of quality\noutdoor aerosol art.\nB. The Walls\n1. Covering\n5Pointz was a site of creative destruction; most artworks had short lifespans and\nwere repeatedly painted over by successive artists. The rules behind covering were\nimportant; as virtually every artist testified, \xe2\x80\x9cgoing over\xe2\x80\x9d someone else\xe2\x80\x99s piece\nwithout permission was a sign of disrespect that could cause conflicts. Going over\nanother piece partially or sloppily was another insult. As Cohen explained:\nYou respect your wall, you clean up when you\xe2\x80\x99re done, you cover what you go over\ncompletely. If you do not cover what you went over, you do not last. That was rule\nnumber one. Respect in our game is everything, and if you don\xe2\x80\x99t have respect then\nyou don\xe2\x80\x99t get respect.\n\nAs a result, Cohen established an elaborate system of rules and norms governing\nhow long pieces would remain and when a piece could be covered by a new artwork.\nAs he testified:\nTHE COURT: Let me ask you a question. Can anybody paint over your paintings\nwithout your permission, aside from vandalism?\nA: No. Everything was done with permission and there was a system that grew over\nthe period of time I was there. You know, we perfect as we go along.\n\n2. Short-Term Rotating Walls vs. Long-Standing Walls\n\n406\n\n\x0c5Pointz was organized into short-term rotating walls and long-standing walls. The\nshort-term walls would change on a daily or weekly basis. As Cohen explained:\n\xe2\x80\x9cThere were allocated spaces that were for straight beginners that had no idea how\nto paint. And those, I would say you could utilize the space, but it more than likely\nwill be gone tomorrow or the next day or whatever.\xe2\x80\x9d \xe2\x80\x9cShort-term rotating walls, it\nwas communicated up front so they\xe2\x80\x99d know you could have several weeks or\nwhatever.\xe2\x80\x9d\nOn the other hand, pieces on long-standing walls were more permanent, although a\nhigh-quality piece could achieve permanence even if not initially placed on a longstanding wall; but an artist\xe2\x80\x99s reputation was not sufficient to secure longstanding\nstatus. As Cohen further explained:\nThe prime real estate that faces the train were the most sought after spots to paint\nand those went to more advanced writers. You\xe2\x80\x99ve got to understand, as well,\nbecause you are an advanced writer doesn\xe2\x80\x99t mean that you are going to perform on\nan advanced level. You may just want to blow off steam one afternoon, but that\ndoesn\xe2\x80\x99t mean your piece should last a long time. And you could be a beginner and\ndo the performance of your lifetime and produce a piece that is so amazing that it\xe2\x80\x99s\ndecided it will stay.\n\nWhile Cohen had the final say as to the duration of the pieces, he always spoke with\nthe artists about their planned lifespan and eventual replacement. As he testified:\n\xe2\x80\x9cFor long term productions, where people invested time and money, I would\ncommunicate with them. I would reach out to them. In some instances, I would tell\nthem to come back and actually egg them on to do something real better. As the bar\ngot raised, everybody performed better.\xe2\x80\x9d\nIn other words, 5Pointz operated not just as a creative space, but a competitive place.\nArtists would compete to outdo one another and earn prominent placement on a\nlong-standing wall. In addition to the walls facing the passing 7 train, which were\nseen by millions of commuters, the artists prized the walls near the loading docks,\nwhich had the most foot traffic, and the walls inside the buildings, which were\ngenerally long-standing. While as many as 10,000 works were destroyed while Cohen\nwas in charge, it was not anarchy. Most of the best works by the best artists achieved\npermanent or semi-permanent placements on the long-standing walls.\nC. The Planned Demolition\nStarting in 2011, rumors that Wolkoff had plans to shut down 5Pointz and turn it\ninto luxury condos began to concern the artists. In May 2013, the rumors became\nreality: Cohen learned that Wolkoff had started to seek the requisite municipal\napprovals for his condos.\nHoping to save 5Pointz, Cohen filed an application with the City Landmark\nPreservation Commission to preserve the site as one of cultural significance. It was\ndenied because the artistic work was of too recent origin. See Letter from NYC\nLandmarks Preservation Commission, August 20, 2013.\nCohen also sought funding to buy the property, which had been valued at $40\nmillion. However, this fell through in October 2013 when Wolkoff obtained a\nnecessary variance, instantly raising the property value to more than $200 million.\n\n407\n\n\x0cThe higher price was out of reach of Cohen\xe2\x80\x99s potential investors. Plaintiffs then\ninitiated this litigation to enjoin Wolkoff from destroying 5Pointz.\nD. The Whitewashing\nAs soon as the Court denied the plaintiffs\xe2\x80\x99 application for preliminary injunction,\nWolkoff directed the whitewashing of virtually all the artwork on the 5Pointz site\nwith rollers, spray machines, and buckets of white paint.\nThe whitewashing was inconsistent. Some works were completely covered in white\npaint. Others were only partially covered. Some were fully covered, but by such a\nthin layer of paint that the artwork was easily visible beneath the paint. What was\nconsistent was that none of the covered works was salvageable. And plaintiffs were\nno longer allowed on the site, even to recover the scattered remnants of their ruined\ncreations.\nSince their works were effectively destroyed, plaintiffs were relegated to seeking\nmonetary relief under VARA.\nIV\nA. Temporary Works of Art\nDefendants\xe2\x80\x99 overarching contention is that plaintiffs knew that the day would come\nwhen the buildings would be torn down and that, regardless, the nature of the work\nof an outdoor aerosol artist is ephemeral. They argue, therefore, that VARA should\nnot afford plaintiffs protection for their temporary works.\nVARA does not directly address whether it protects temporary works. However, in\nthe context of works on buildings, it is clear from 17 U.S.C. \xc2\xa7 113(d) that temporary\nworks are protected. Moreover, relevant case law conceptually supports this\nconclusion. In short, there is no legal support for the proposition that temporary\nworks do not come within VARA\xe2\x80\x99s embrace.\nFirst, \xc2\xa7 113(d)(1) specifies that an unremovable work incorporated in a building is\nprotected by VARA unless the artist waives his or her rights in a writing signed by\nboth the artist and the building owner. If the building owner could orally inform the\nartist that the building is coming down someday, and thereby convert the work into\nan unprotected temporary work, the written consent provision would be rendered\nnugatory. As the House Judiciary Committee Report explains: \xe2\x80\x9cThe purpose of [the\nwritten waiver] is to ensure that the author is made fully aware of the circumstances\nsurrounding the installation and potential removal of the work and has nevertheless\nknowingly subjected the work to possible modifications that would otherwise be\nactionable under section106A.\xe2\x80\x9d House Report at 21. And as Patry adds: \xe2\x80\x9cIn light of\nthis provision\xe2\x80\x99s purpose of ensuring that artists be made aware fully of the\ncircumstances surrounding installation and potential destructive removal, it should\nbe strictly construed.\xe2\x80\x9d Patry on Copyright \xc2\xa7 16:33.\nSecond, \xc2\xa7 113(d)(2), specifying that artists are entitled to 90 days\xe2\x80\x99 written notice to\nallow them to salvage their removable works, contemplates that such works may be\ntemporarily on the side of a building. Thus, VARA resolves the tension between the\nbuilding owners\xe2\x80\x99 rights and the artists\xe2\x80\x99 rights through \xc2\xa7 113(d), not by excluding\ntemporary works from protection.\n408\n\n\x0cOf the limited available case law, Board of Managers of Soho International Arts\nCondominium v. City of New York, 2003 WL 21403333 (S.D.N.Y. June 17, 2003)\nperhaps best illustrates this point. There, an artist sought to prevent his work from\nbeing permanently removed from the wall of a condo under VARA. There was\nconflicting testimony as to whether the work was intended to be kept on the wall\npermanently or temporarily. Nonetheless, the Court, in denying summary judgment,\nheld VARA only allowed the artist to remove the mural, not keep it in its place. The\ncourt rejected the artist\xe2\x80\x99s argument that removal was \xe2\x80\x9ctantamount to the Work\xe2\x80\x99s\ndestruction\xe2\x80\x9d as \xe2\x80\x9cnowhere in the dictionary definition of \xe2\x80\x98remove\xe2\x80\x99 does the\ntemporality of the act of removal arise.\xe2\x80\x9d Therefore, it was \xe2\x80\x9cclear to the Court that\nwhat Congress intended in bifurcating \xc2\xa7 113(d)\xe2\x80\x99s protections was to separate removal\nsituations based not on the temporality of the removal but on the consequences of\nthe removal.\xe2\x80\x9d\nThus, VARA draws no distinction between temporary and nontemporary works on\nthe side of a building, particularly when all that makes a work temporary is the\nbuilding owner\xe2\x80\x99s expressed intention to remove or destroy it. VARA protects such\nworks; how it protects them is governed by the carefully crafted provisions of \xc2\xa7\n113(d) based on the removability of the works, not their permanence.\nAlso supporting the conclusion that VARA applies to temporary works is 17 U.S.C.\n\xc2\xa7 106A(c)(1), which provides that modifications that are \xe2\x80\x9cthe result of the passage of\ntime or the inherent nature of the materials\xe2\x80\x9d are not violations of VARA. This\nexception was applied in Flack v. Friends of Queen Catherine Inc., 139 F. Supp. 2d 526\n(S.D.N.Y. 2001), where the court dismissed a VARA claim because the head of a\nstatue was exposed to the elements, causing the clay to deteriorate, but there was no\nevidence that the defendant otherwise directly damaged the work. The exception is\nnot applicable here. The whitewashing was not caused by the \xe2\x80\x9cpassage of time\xe2\x80\x9d or\nthe \xe2\x80\x9cinherent nature of the materials\xe2\x80\x9d; it was caused by Wolkoff throwing paint on\nthe works.\nThus, Congress chose to exclude protection for the passage of time and natural\ndeterioration but not for other types of temporary works. Under the principle of\nstatutory interpretation expressio unius est exclusio alterius (the expression of one thing\nimplies the exclusion of others), this choice lends support to the conclusion that\nthere is no categorical exception for temporary works.\nMoreover, the First Circuit has held that VARA protects unfinished works. Mass.\nMuseum of Contemporary Art Found., Inc. v. Buchel, 593 F.3d 38, 65 (1st Cir. 2010). An\nunfinished work is inherently in a temporary state since the ultimate goal is always to\nfinish the work; thus, VARA protects the interim, unfinished work even though it is\nonly temporarily in that form.\nAnalogy to traditional copyright law is also relevant. Under the Copyright Act \xe2\x80\x94of\nwhich VARA is a part\xe2\x80\x94a work is \xe2\x80\x9c\xe2\x80\x98created\xe2\x80\x99 when it is fixed in a copy or\nphonorecord for the first time.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101. And a work is \xe2\x80\x9c\xe2\x80\x98fixed\xe2\x80\x99 in a tangible\nmedium of expression when its embodiment in a copy or phonorecord, by or under\nthe authority of the author, is sufficiently permanent or stable to permit it to be perceived . . .\nfor a period of more than transitory duration.\xe2\x80\x9d Id. (emphasis added). For copyright\nprotection, therefore, fixation for even a short period will suffice.\n\n409\n\n\x0cThus, in Cartoon Network v. CSC Holdings, 536 F.3d 121 (2d Cir. 2008), the Second\nCircuit held that copies of television programs were not capable of being perceived\n\xe2\x80\x9cfor a period of more than transitory duration\xe2\x80\x9d when they existed in the defendant\xe2\x80\x99s\ndata buffers for only 1.2 seconds. However, the court suggested that a work would\nexist for \xe2\x80\x9cmore than transitory duration\xe2\x80\x9d if it was embodied in the data buffers for\n\xe2\x80\x9cat least several minutes.\xe2\x80\x9d With no indication to the contrary, it is reasonable to\nassume that Congress intended to apply the same minimal fixation requirement to\nworks of visual art under VARA. Cf. Buchel, 593 F.3d at 51 (applying \xc2\xa7 101\xe2\x80\x99s fixation\nrequirement to conclude that unfinished works are protected under VARA).\nIn sum, \xc2\xa7 113(d) contemplates temporary works, \xc2\xa7 106A(c) excludes only a narrow\ncategory of temporary works unrelated to this case, and analogous case law is\nconsistent with the conclusion that temporary works are protected under VARA.14\nFootnote 14: Common sense also supports this conclusion. Who would argue, for example, that if Picasso had\npainted Guernica on the walls of 5Pointz with the building owner\xe2\x80\x99s consent it would not be worthy of VARA\nprotection?\n\nB. Works of Recognized Stature\nAs the Court stated in Cohen I, the district court\xe2\x80\x99s decision in Carter v. Helmsley-Spear,\nInc., 861 F. Supp. 303 (S.D.N.Y. 1994) (\xe2\x80\x9cCarter I\xe2\x80\x9d), affirmed in part, vacated in part,\nreversed in part, 71 F.3d 77 (2d Cir. 1995) (\xe2\x80\x9cCarter II\xe2\x80\x9d) remains the seminal case\ninterpreting the phrase \xe2\x80\x9crecognized stature\xe2\x80\x9d\xe2\x80\x94which is not defined in VARA\xe2\x80\x94to\nrequire \xe2\x80\x9ca two-tiered showing: (1) that the visual art in question has \xe2\x80\x98stature,\xe2\x80\x99 i.e. is\nviewed as meritorious, and (2) that this stature is \xe2\x80\x98recognized\xe2\x80\x99 by art experts, other\nmembers of the artistic community, or by some cross-section of society.\xe2\x80\x9d 861 F.\nSupp. at 325.\nThe Second Circuit on appeal never had occasion to address the correctness of this\nformulation since, in reversing, it held that the work did not qualify for VARA\nprotection because it was made for hire. Carter II, 71 F.3d at 85-89. But one circuit\ncourt did thereafter embrace and apply the district court\xe2\x80\x99s standard for evaluating\nwhether a work of visual art is of \xe2\x80\x9crecognized stature.\xe2\x80\x9d\nAs explained in Cohen I, the Seventh Circuit in Martin v. City of Indianapolis, 192 F.3d\n608, 612 (7th Cir. 1999), noted that the Carter I test \xe2\x80\x9cmay be more rigorous than\nCongress intended,\xe2\x80\x9d id. at 612, but nonetheless affirmed the district court\xe2\x80\x99s grant of\nsummary judgment and its award of damages for a sculpture that had been destroyed,\nunder the Carter I test utilized by the district court. In doing so, it noted that\n\xe2\x80\x9cplaintiff offered no evidence of experts or others by deposition, affidavit or\ninterrogatories,\xe2\x80\x9d but nonetheless established the work\xe2\x80\x99s recognized stature via\n\xe2\x80\x9ccertain newspaper and magazine articles, and various letters, including a letter from\nan art gallery director and a letter to the editor of The Indianapolis News, all in\nsupport of the sculpture.\xe2\x80\x9d Id.\nThe circuit court\xe2\x80\x99s decision in Martin appropriately recognizes, therefore, that expert\ntestimony is not the sine qua non for establishing that a work of visual art is of\nrecognized stature, and indeed the district court in Carter I cautioned that plaintiffs\nneed \xe2\x80\x9cnot inevitably . . . call expert witnesses to testify before the trier of fact.\xe2\x80\x9d 861\nF.Supp. at 325. This is in keeping with Congress\xe2\x80\x99s expansive recognition of the moral\nrights of attribution and integrity of the visual artist and the consequent need to\n\n410\n\n\x0ccreate \xe2\x80\x9ca climate of artistic worth and honor that encourages the author in the\narduous act of creation.\xe2\x80\x9d Carter II, 71 F.3d at 83 (quoting House Report at 5). As the\nSecond Circuit noted in Carter II, therefore, the courts \xe2\x80\x9cshould use common sense\nand generally accepted standards of the artistic community in determining whether a\nparticular work\xe2\x80\x9d is a work of visual art since \xe2\x80\x9cartists may work in a variety of media,\nand use any number of materials in creating their works.\xe2\x80\x9d Id.\nThe same common sense should be utilized in assessing whether the visual work is\nof recognized stature since \xe2\x80\x9cby setting the standard too high, courts risk the\ndestruction of the unrecognized masterwork; by setting it too low, courts risk\nalienating those . . . whose legitimate property interests are curtailed.\xe2\x80\x9d Christopher J.\nRobinson, The \xe2\x80\x9cRecognized Stature\xe2\x80\x9d Standard in the Visual Artists Rights Act, 68 Fordham\nLaw Review 1935, 1968 (2000). Thus, as one court has held, even inferred\nrecognition from a successful career can be considered in determining whether a\nvisual artist\xe2\x80\x99s work has achieved recognized stature. See Lubner v. City of Los Angeles,\n45 Cal. App. 4th 525, 531 (1996).\nIn the present case, the Court need not dwell on the nuances of the appropriate\nevidentiary standard since the plaintiffs adduced such a plethora of exhibits and\ncredible testimony, including the testimony of a highly regarded expert, that even\nunder the most restrictive of evidentiary standards almost all of the plaintiffs\xe2\x80\x99 works\neasily qualify as works of recognized stature.\nTo begin, that Jonathan Cohen selected the handful of works from the thousands at\n5Pointz for permanence and prominence on long-standing walls is powerful, and\narguably singular, testament to their recognized stature. They were walls that spanned\nmultiple stories, walls visible to millions on the passing trains; walls near the\nentrances. Many of these works had survived for years. As 5Pointz\xe2\x80\x99s curator, Cohen\nconsidered them outstanding examples of the aerosol craft. And as Wolkoff himself\nacknowledged, Cohen was qualified to assess the artistic merits of the works since\n\xe2\x80\x9che had good taste in the artists that came there.\xe2\x80\x9d They were 5Pointz\xe2\x80\x99s jewels.\nWolkoff\xe2\x80\x99s faith in Cohen was not unwarranted. The multitude of artists painting on\nthe walls marched to Cohen\xe2\x80\x99s beat. He called the shots and had the respect of his\nartistic community. That it was he who chose the works that are worthy of VARA\nprotection in this litigation speaks volumes to their recognized stature.\nBut there is so much more. All of the plaintiffs had also achieved artistic recognition\noutside of 5Pointz. And in their Folios they collectively presented over a thousand\nexhibits in support of their claims that their works at 5Pointz had achieved\nrecognized stature. The Folios covered the highlights of their careers, as well as\nevidence of the placement of their works at 5Pointz in films, television, newspaper\narticles, blogs, and online videos, in addition to social media buzz.\nAnd plaintiffs\xe2\x80\x99 highly qualified expert, Vara, provided detailed findings as to the skill\nand craftsmanship of each of the 49 works, the importance of 5Pointz as a mecca for\naerosol art, the academic and professional interest of the art world in the works, and\nher professional opinion that they were all of recognized stature. The Court finds\nVara highly credible and affords great weight to her testimony, although, as explained\ninfra, it finds that four of the 49 works do not qualify as having achieved recognized\nstature.\n411\n\n\x0cDefendants\xe2\x80\x99 expert Thompson\xe2\x80\x99s testimony had two fatal flaws: First, she used an\nunduly restrictive interpretation of recognized stature that was more akin to a\nmasterpiece standard. Second, she relied heavily on her inability to find the works on\nsocial media or in academic databases; but, as effectively drawn out by plaintiffs\xe2\x80\x99\ncounsel on cross-examination, her search methodology was unduly restrictive and\nalmost designed to avoid finding results. Tellingly, her searches did not even uncover\nmany of plaintiffs\xe2\x80\x99 social media exhibits, demonstrating the weakness of her\napproach. Her final conclusion that none of the works had achieved recognized\nstature defies credibility. If not a single one of these works meet the recognized\nstature standard, it is hard to imagine works that would, short of a Caravaggio or\nRembrandt.\n1. Recognized Stature of Individual Artworks\nThe Court now turns to making the requisite individualized findings as to each of the\n49 works:\na. The Long-Standing Works\nThe Court finds that 37 works on long-standing walls all achieved recognized stature\nby virtue of their selection by Cohen for these highly coveted spaces, as reinforced\nby the supportive evidence in the plaintiffs\xe2\x80\x99 Folios and Vara\xe2\x80\x99s compelling expert\ntestimony as to their artistic merit and embrace by the artistic community. They are:\n\xe2\x80\xa2\n\nJonathan Cohen\xe2\x80\x99s Eleanor RIP, 7-Angle Time Lapse, Patience, Character,\nClown with Bulbs, Meres Outdoor Wildstyle, and Inside Wildstyle\n\n\xe2\x80\xa2\n\nSandra Fabara\xe2\x80\x99s Green Mother Earth\n\n\xe2\x80\xa2\n\nLuis Lamboy\xe2\x80\x99s Blue Jay Wall, Inside 4th Floor, World Traveler, Logo for\nClothing Brand aka Monopoly Man, and Electric Fish\n\n\xe2\x80\xa2\n\nEsteban Del Valle\xe2\x80\x99s Beauty and the Beast\n\n\xe2\x80\xa2\n\nChristian Cortes\xe2\x80\x99s Skulls Cluster, Jackson Avenue Skulls, Up High Blue\nSkulls, and Up High Orange Skulls\n\n\xe2\x80\xa2\n\nCarlos Game\xe2\x80\x99s Geisha, Marilyn, Red, Denim Girl, and Black and White\n5Pointz Girl\n\n\xe2\x80\xa2\n\nJames Rocco\xe2\x80\x99s Bull Face, Lord Paz, and Face on Jackson\n\n\xe2\x80\xa2\n\nSteven Lew\xe2\x80\x99s Crazy Monsters\n\n\xe2\x80\xa2\n\nNicholai Khan\xe2\x80\x99s Dos Equis Man\n\n\xe2\x80\xa2\n\nJames Cochran\xe2\x80\x99s Subway Rider\n\n\xe2\x80\xa2\n\nLuis Gomez\xe2\x80\x99s Inside King Kong\n\n\xe2\x80\xa2\n\nRichard Miller\xe2\x80\x99s Monster I\n\n\xe2\x80\xa2\n\nJonathan Cohen and Maria Castillo\xe2\x80\x99s Love Girl and Burner\n\n\xe2\x80\xa2\n\nJonathan Cohen and Akiko Miyakami\xe2\x80\x99s Underwater Fantasy\n\n412\n\n\x0c\xe2\x80\xa2\n\nWilliam Tramontozzi, Jr. and James Rocco\xe2\x80\x99s Jimi Hendrix Tribute\n\n\xe2\x80\xa2\n\nAkiko Miyakami and Carlos Game\xe2\x80\x99s Japanese Fantasy\n\n\xe2\x80\xa2\n\nBienbenido Guerra and Carlo Nieva\xe2\x80\x99s Return of New York\n\n\xe2\x80\xa2\n\nJonathan Cohen, Luis Lamboy, and Thomas Lucero\xe2\x80\x99s Angry Orchard\n\nb. Other Works\nTen works on the walls were of recent origin; two were not on walls at all. For these\n12 works, the \xe2\x80\xa6 jury found recognized stature for Rodrigo Henter de Rezende\xe2\x80\x99s\nFighting Tree, Thomas Lucero\xe2\x80\x99s Black Creature, Akiko Miyakami\xe2\x80\x99s Manga Koi,\nFrancisco Fernandez\xe2\x80\x99s Dream of Oil, Nicholai Khan\xe2\x80\x99s Orange Clockwork, Kenji\nTakabayashi\xe2\x80\x99s Starry Night, Richard Miller\xe2\x80\x99s Monster II, and Jonathan Cohen and\nAkiko Miyakami\xe2\x80\x99s Save 5Pointz. These eight works garnered third party attention,\nsocial media presence, and/or promises from Cohen that they would be longstanding.\nThe jury did not find recognized stature for Jonathan Cohen\xe2\x80\x99s Drunken Bulbs,\nAkiko Miyakami\xe2\x80\x99s Japanese Irish Girl, Carlos Game\xe2\x80\x99s Faces on Hut, and Jonathan\nCohen and Rodrigo Henter de Rezende\xe2\x80\x99s Halloween Pumpkins.\nDrunken Bulbs and Japanese Irish Girl were gifts to the Shannon Pot Bar. They\nwere not part of the curated 5Pointz collection. Furthermore, neither attracted\nsignificant third-party attention or social media buzz during their short life spans.\nFaces on Hut was not on a 5Pointz wall; it was on a tin shack near the loading dock.\nAs its creator, Carlos Game testified: \xe2\x80\x9cNobody wanted to paint on it because it was a\ntin shack, you know, and it was rusted out . . . .\xe2\x80\x9d Game also did not adduce any social\nmedia coverage or commentary regarding the work.\nHalloween Pumpkins was created in very late October \xe2\x80\x94, less than a month before\nthe whitewash, and did not achieve any third party recognition. Moreover, because it\nwas Halloween-themed, it was unlikely to have survived the holiday season.\nIn sum, the Court finds 45 of the 49 works achieved recognized stature. Drunken\nBulbs, Japanese Irish Girl, Faces on Hut, and Halloween Pumpkins did not.\nC. Mutilation and Prejudice to Honor or Reputation\nAs noted, even if a work is not of \xe2\x80\x9crecognized stature,\xe2\x80\x9d VARA also protects works\nfrom \xe2\x80\x9cintentional distortion, mutilation, or other modification . . . [that] would be\nprejudicial to [the artist\xe2\x80\x99s] honor or reputation.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 106A(a)(3)(A). \xe2\x80\x9cIn\ndetermining whether \xe2\x80\x98intentional distortion, mutilation, or modification\xe2\x80\x99 of [a] Work\nwould be \xe2\x80\x98prejudicial to [plaintiffs\xe2\x80\x99] honor or reputation,\xe2\x80\x99 [a court should] consider\nwhether such alteration would cause injury or damage to plaintiffs\xe2\x80\x99 good name,\npublic esteem, or reputation in the artistic community.\xe2\x80\x9d Carter I, 861 F. Supp. at 323.\nThis concept is inherently murky. Carter I held that an artist\xe2\x80\x99s honor or reputation\nmay be harmed if the artwork presented to viewers an artistic vision materially\ndifferent from that intended by the artist. In Massachusetts Museum of Contemporary Art\nFoundation, Inc. v. Buchel, 593 F.3d 38 (1st Cir. 2010), the circuit court held that\nchanges made to an unfinished art installation by a museum against the artist\xe2\x80\x99s\n\n413\n\n\x0cwishes were sufficient to raise a question of fact as to whether the artist\xe2\x80\x99s honor or\nreputation were injured. The court focused on evidence that newspapers covering\nthe exhibit after the changes had a negative opinion of the altered work.\nHere, the question is academic in respect to the 45 works of recognized stature since\nthe Court is not awarding any actual damages, as explained infra, and only one\nstatutory damages award may be awarded per artwork \xe2\x80\x9cfor all infringements involved\nin the action.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 504(c)(1). Thus, whether defendants are additionally liable\nunder this second prong is not of any practical consequence.\nOf the remaining four, Japanese Irish Girl was destroyed and therefore not\n\xe2\x80\x9cdistorted, mutilated, or otherwise modified.\xe2\x80\x9d Faces on Hut was not destroyed until\nthe demolition of the building and apparently survived the whitewash. Therefore, it\ntoo was not \xe2\x80\x9cdistorted, mutilated, or otherwise modified.\xe2\x80\x9d\nDrunken Bulbs was only partially whitewashed; the outlines of the bulbs are dimly\nvisible underneath the white paint. However, these vague outlines are unrecognizable\nas Cohen\xe2\x80\x99s original work. Nobody looking at the work would know that it was his.\nTherefore, the Court holds this distortion did not prejudice his honor or reputation.\nHalloween Pumpkins was almost entirely covered in black paint, but Cohen\xe2\x80\x99s \xe2\x80\x9cwild\nstyle\xe2\x80\x9d contribution to the painting was apparently left untouched. However, Cohen\ntestified that he was able to recover this portion of the work, and once the piece was\nremoved, the final result was a black wall; the original artwork was not visible at all\nunder the black paint, except for one purple cloud at the top of the wall, a minor\ndetail in the painting. Therefore, the Court holds this distortion also did not\nprejudice the artists\xe2\x80\x99 honor or reputation.\nHaving determined that the defendants have violated plaintiffs\xe2\x80\x99 rights by\nintentionally destroying their works of \xe2\x80\x9crecognized stature,\xe2\x80\x9d the Court now turns to\ndamages.\nV\nA. Actual Damages\nAs for actual damages, the parties presented dueling experts as to the valuation of\nthe destroyed works. Plaintiffs\xe2\x80\x99 expert, Elizabeth Littlejohn, testified that the works\nwere worth from $50,000 to $80,000 per artwork. She arrived at this number through\na complicated formula that began with the sale price of a Banksy piece and awarded\neach artwork a percentage of that value based on the artist\xe2\x80\x99s reputation, the merit of\nthe work, and other factors.\nThe Court finds this methodology flawed. First, it does not account for the removal\ncosts of the works, which plaintiffs\xe2\x80\x99 own removal expert, Alden, testified could run\nin the hundreds of thousands of dollars. Second, there is no evidence that these\nartists have ever achieved a fraction of Banksy\xe2\x80\x99s sales history; most testified that they\nhad never sold a work for more than a few thousand dollars. Third, Littlejohn\xe2\x80\x99s\nmethod did not account for the unique problems in selling artwork that is the size of\na wall of a building.\nThe Court finds defendants\xe2\x80\x99 appraisal expert, Christopher Gaillard, credible. Gaillard\ntestified that because of the unique challenges and costs of selling those artworks at\n414\n\n\x0c5Pointz which were the size of a building wall, they did not have a provable market\nvalue. The Court agrees and holds that plaintiffs failed to establish a reliable market\nvalue for their works.\nTherefore, the Court does not award actual damages.\nB. Statutory Damages\nThe Copyright Act affords the trial court \xe2\x80\x9cwide discretion . . . in setting the amount\nof statutory damages.\xe2\x80\x9d Fitzgerald Pub. Co., Inc. v. Baylor Pub. Co., Inc., 807 F.2d 1110,\n1116 (2d Cir. 1986). \xe2\x80\xa6 There need not be a correlation between statutory damages\nand actual damages. Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 127 (2d Cir. \xe2\x80\x94).\nAs such, statutory damages are particularly appropriate \xe2\x80\x9cwhen no actual damages are\nproven or they are difficult to calculate.\xe2\x80\x9d Warner Bros. Inc. v. Dae Rim Trading, Inc., 877\nF.2d 1120, 1126 (2d Cir. 1989). They are \xe2\x80\x9cnot meant to be merely compensatory or\nrestitutionary. The statutory award is also meant \xe2\x80\x98to discourage wrongful conduct.\xe2\x80\x99\xe2\x80\x9d\nYurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 113 (2d Cir. 2001) (rejecting\ndefendant\xe2\x80\x99s argument that statutory damages award should be overturned because it\n\xe2\x80\x9cbears little relationship\xe2\x80\x9d to actual damages) (citation omitted).\nAs previously explained, the factfinder may award between $750 and $30,000 per\nwork, unless the infringement was committed willfully; if so, the award may be as\nhigh as $150,000 per work.\n1. Willfulness\n\xe2\x80\x9cA copyright holder seeking to prove that a copier\xe2\x80\x99s infringement was willful must\nshow that the infringer \xe2\x80\x98had knowledge that its conduct represented infringement\nor . . . recklessly disregarded the possibility.\xe2\x80\x99\xe2\x80\x9d Bryant v. Media Right Prods., 603 F.3d\n135, 143 (2d Cir. 2010) (quoting Twin Peaks Prods., Inc. v. Publ\xe2\x80\x99ns Int\xe2\x80\x99l, Ltd., 996\nF.2d 1366, 1382 (2d Cir. 1993)). \xe2\x80\x9cThis knowledge may be \xe2\x80\x98actual or constructive.\xe2\x80\x99\xe2\x80\x9d\nN.A.S. Import, Corp. v. Chenson Enters., Inc., 968 F.2d 250, 252 (2d Cir. 1992). \xe2\x80\x9cIn\nother words, it need not be proven directly but may be inferred from the defendant\xe2\x80\x99s\nconduct.\xe2\x80\x9d Id.\nThe jury found that in each case Wolkoff acted willfully. The Court could not agree\nmore. Wolkoff knew from the moment the lawsuit was initiated that the artists were\npressing their VARA claims. He admitted as much at trial:\nQ: And you were aware that the artists were trying to apply under the Visual Artists\nRights Act?\nA: Yes.\n...\nTHE COURT: You heard about VARA at that time?\nA: Yes.\nTHE COURT: You have a generalized view\xe2\x80\x94\nA: At that time, yes.\n...\nQ: And you had hired Mr. Ebert\xe2\x80\x99s law firm at the time; correct?\n\n415\n\n\x0cA: Yes.\nQ: You had a general counsel\xe2\x80\x94an in-house lawyer advising you on legal matters;\ncorrect?\nA: Yes.\n\nAs previously explained, under VARA, Wolkoff could have given the plaintiffs 90\ndays\xe2\x80\x99 notice to allow them the opportunity to salvage their works. And indeed,\nplaintiffs\xe2\x80\x99 expert conservator, Alden, convincingly testified that curation techniques\nhad evolved to the point where removal of works of art from the wall of a building\nwas feasible and had been done. As an example, she referenced the Berlin Wall, from\nwhich hundreds of works of graffiti on the wall have been preserved and sold,\nauctioned, or given as gifts, including five works which were successfully transported\nto New York City. Alden also testified that she had personally successfully removed\na mural from a building.\nAnd in respect to the plaintiffs\xe2\x80\x99 works at 5Pointz, Alden explained that many could\nhave been totally or partially removed by the artists, at little cost, because the works\nwere on \xe2\x80\x9csiding or plywood or sheetrock\xe2\x80\x9d or they \xe2\x80\x9cincorporated doors or windows\nfrom the building [which] could have been easily removed,\xe2\x80\x9d Tr. at 1971:23-1972:4;\nand many others could be removed by a conservator and contractors. See Exhibit\n1270 (identifying 12 \xe2\x80\x9cWorks for Which Artists\xe2\x80\x99 Removal Was Possible\xe2\x80\x9d; 9 \xe2\x80\x9cWorks\nWhich Artists Were Able to Partially Remove,\xe2\x80\x9d and 28 \xe2\x80\x9cWorks Which Could Only\nHave Been Removed by Conservator and Contractors\xe2\x80\x9d).\nBut Wolkoff could care less. As he callously testified:\nI decided\xe2\x80\x94I alone decided to hire people to whitewash it in one shot instead of\nwaiting for three months and them going to do something irrational again and getting\narrested. I will go and end it and whitewash it. I decided to do that. It was pretty\nmuch a spur-of-the-moment thing.\n\n(Emphasis added).\nWolkoff\xe2\x80\x99s reference to the artists doing \xe2\x80\x9csomething irrational again and getting\narrested\xe2\x80\x9d is fanciful and unfounded. Plainly, the evidence does not support the\nnotion that he cared much for what was best for the artists. After the whitewash, he\nrefused to let them onto his property to recover what had survived and even\nattempted to have them arrested when they tried to do so.\nAnd his claim that he was worried that the plaintiffs may do something reckless and\nillegal is also belied by the evidence. The plaintiffs operated within the law in\nattempting to protect their works: They sought legal advice, filed a claim with the\nLandmark Preservation Commission, sought to generate public pressure to preserve\nthe site, raised money, and filed this lawsuit. Wolkoff\xe2\x80\x99s only justification for his\nconcern that the plaintiffs may attempt to break the law to preserve their work is that\nhe heard nonspecific \xe2\x80\x9crumblings.\xe2\x80\x9d Id. at 2042:5. But he could not identify any\nparticular source of the rumblings, nor had he ever personally had a problem with\nthe artists:\nQ: So this information that you received that the artists could be emotional is from\nsomeone you cannot identify; correct?\nA: Yes.\n\n416\n\n\x0cQ: The artists were never violent; correct?\nA: Correct.\nQ: They always followed the law when then were on your property; correct?\nA: Yes.\nQ: You have never had any problems with the artists; right?\nA: Absolutely correct.\n\nAs Cohen confirmed: \xe2\x80\x9cI followed the rules from day one. I went by my lawyer and\nhe did not.\xe2\x80\x9d\nWolkoff\xe2\x80\x99s recalcitrant behavior was consistent with the manner by which he testified\nin court. He was bent on doing it his way, and just as he ignored the artists\xe2\x80\x99 rights he\nalso ignored the many efforts the Court painstakingly made to try to have him\nresponsively answer the questions posed to him.\nFrom his testimony, the only logical inference that the Court could draw from\nWolkoff\xe2\x80\x99s precipitous conduct as soon as the Court denied the artists\xe2\x80\x99 preliminary\ninjunction application was that it was an act of pure pique and revenge for the nerve\nof the plaintiffs to sue to attempt to prevent the destruction of their art. This was the\nepitome of willfulness.\nIt remains for the Court to fix the amount of statutory damages.\n2. The Statutory Factors\n\xe2\x80\x9cWhen determining the amount of statutory damages to award for copyright\ninfringement, courts consider: (1) the infringer\xe2\x80\x99s state of mind; (2) the expenses\nsaved, and profits earned, by the infringer; (3) the revenue lost by the copyright\nholder; (4) the deterrent effect on the infringer and third parties; (5) the infringer\xe2\x80\x99s\ncooperation in providing evidence concerning the value of the infringing material;\nand (6) the conduct and attitude of the parties.\xe2\x80\x9d Bryant, 603 F.3d at 144.\nWolkoff rings the bell on each relevant factor.\na. The Infringer\xe2\x80\x99s State of Mind\nBecause Wolkoff acted willfully in destroying the works of art, this factor weighs in\nfavor of a high statutory damages award. As noted, Wolkoff\xe2\x80\x99s two alleged\njustifications for the whitewash\xe2\x80\x94that it would be better for the plaintiffs to lose\ntheir works quickly, and that he was concerned the plaintiffs might do something\nreckless and illegal in an attempt to save the works\xe2\x80\x94are implausible.\nThe whitewash did not end the conflict in one go; the effects lingered for almost a\nyear. The sloppy, half-hearted nature of the whitewashing left the works easily visible\nunder thin layers of cheap, white paint, reminding the plaintiffs on a daily basis what\nhad happened. The mutilated works were visible by millions of people on the passing\n7 train. One plaintiff, Miyakami, said that upon seeing her characters mutilated in\nthat manner, it \xe2\x80\x9cfelt like [she] was raped.\xe2\x80\x9d Tr. at 1306:24-25. It is simply untenable\nthat a rational person could view the whitewashing as being in the best interest of the\nartists.\nb. The Expenses Saved, and Profits Earned, by the Infringer\n417\n\n\x0cThis factor is not a clean fit for VARA since, unlike a traditional copyright\ninfringement case, Wolkoff did not sell the plaintiffs\xe2\x80\x99 art; hence, there were no direct\nprofits. However, he indirectly profited when the value of the site increased from\n$40 million to $200 million as soon as the variance was obtained. Destroying 5Pointz\nallowed Wolkoff to realize this gain. He also charged licensing fees to film at the site\nthat netted him hundreds of thousands of dollars. Because Wolkoff realized\nsignificant profits by violating VARA, this factor cuts in favor of a high statutory\ndamages award.\nc. Revenue Lost by the Copyright Holder\nWhile the plaintiffs were never able to place a dollar figure on how the whitewash of\n5Pointz impacted their careers, it often had a negative effect. As plaintiff\nTakabayashi testified: \xe2\x80\x9cI would actually have clients . . . come by and observe the\nwork to get an idea of what they would be getting if I was going to execute a mural\non their property . . . . There were possibilities\xe2\x80\x94there was business that I probably\nlost because of the fact that the artwork was eliminated.\xe2\x80\x9d Tr. at 315:23-316:4. And\nplaintiff Del Valle testified: \xe2\x80\x9cIt definitely took away a lot of opportunities that I\nwould have had. I was consistently getting contacted about opportunities . . . all\ncoming from me building my career from [5Pointz].\xe2\x80\x9d Id. at 131:15-22.\nFurthermore, as Cohen testified, the salvageable artwork at 5Pointz \xe2\x80\x9ccould have\nadorned a museum, a full wing of a museum. . . . I don\xe2\x80\x99t think you guys really get a\nfull idea of the picture of this building and its property . . . . It was eight stories tall.\nWe could have filled a wing, if not more, of a museum.\xe2\x80\x9d Id. at 1466:18-23.\nThe value of 5Pointz to the artists\xe2\x80\x99 careers was significant, and its loss, though\ndifficult to quantify, precluded future opportunities and acclaim. Therefore, this\nfactor also supports a significant statutory damages award.\nd. The Deterrent Effect on the Infringer and Third Parties\nThis is perhaps the most important factor in this case. Without a significant statutory\ndamages award, the preservative goals of VARA cannot be met. If potential\ninfringers believe that they can violate VARA at will and escape liability because\nplaintiffs are not able to provide a reliable financial valuation for their works, VARA\nwill have no teeth. It will simply be cost-effective for infringers to violate the statute.\nThis would not further its preservative goals.\nWolkoff has been singularly unrepentant. He was given multiple opportunities to\nadmit the whitewashing was a mistake, show remorse, or suggest he would do things\ndifferently if he had another chance. He denied them all:\nQ: Let me ask you a hypothetical question. Let\xe2\x80\x99s go back in time.\nA: Yes.\nQ: Would you have done it again?\nA: Yes.\nA: But that was the decision I made. I would make the same decision today if that\nhappened today.\n\n418\n\n\x0cThus, Wolkoff remains undeterred, and unrepentant that his thoughtless act violated\nthe law and had a devastating impact on people he claims he was trying to help. This\nfactor could not cut more strongly in favor of a high statutory damages award.\ne. The Conduct and Attitude of the Parties\nThe Court has discussed at length the problematic conduct of Wolkoff during the\nwhitewashing and on the witness stand. Needless to say, he has not helped his case.\nOn the other hand, the plaintiffs have conducted themselves with dignity, maturity,\nrespect, and at all times within the law. Therefore, this factor also cuts heavily in\nfavor of a high statutory damages award.\n3. The Statutory Damages Award\nCollectively, all five relevant factors support the maximum award of statutory\ndamages. Therefore, the Court awards $150,000 for each of the 45 works, for a total\nstatutory damages award of $6,750,000.\nIf not for Wolkoff\xe2\x80\x99s insolence, these damages would not have been assessed. If he\ndid not destroy 5Pointz until he received his permits and demolished it 10 months\nlater, the Court would not have found that he had acted willfully. Given the degree\nof difficulty in proving actual damages, a modest amount of statutory damages would\nprobably have been more in order.\nThe shame of it all is that since 5Pointz was a prominent tourist attraction the public\nwould undoubtedly have thronged to say its goodbyes during those 10 months and\ngaze at the formidable works of aerosol art for the last time. It would have been a\nwonderful tribute for the artists that they richly deserved.\nCONCLUSION\nJudgment will be entered for each individual plaintiff in the following amounts:\nArtist\n\nTotal Award\n\nJonathan Cohen\n\n$1,325,000.00\n\nSandra Fabara\n\n$150,000.00\n\nLuis Lamboy\n\n$800,000.00\n\nEstaban Del Valle\n\n$150,000.00\n\nRodrigo Henter de Rezende\n\n$150,000.00\n\nThomas Lucero\n\n$200,000.00\n\nAkiko Miyakami\n\n$375,000.00\n\nChristian Cortes\n\n$600,000.00\n\nCarlos Game\n\n$825,000.00\n\nJames Rocco\n\n$525,000.00\n\nSteven Lew\n\n$150,000.00\n\nFrancisco Fernandez\n\n$150,000.00\n\nNicholai Khan\n\n$300,000.00\n419\n\n\x0cJames Cochran\n\n$150,000.00\n\nLuis Gomez\n\n$150,000.00\n\nRichard Miller\n\n$300,000.00\n\nKenji Takabayashi\n\n$150,000.00\n\nMaria Castillo\n\n$75,000.00\n\nWilliam Tramontozzi\n\n$75,000.00\n\nCarlo Nieva\n\n$75,000.00\n\nBienbenido Guerra\n\n$75,000.00\n\nTotal\n\n$6,750,000.00\n\nSO ORDERED.\nNotes and Questions\n(1) Who \xe2\x80\x9cowned\xe2\x80\x9d the graffiti murals in this case? In what sense did they own them?\n(2) One of many interesting issues in the 5Pointz case is what makes something a work of\nrecognized stature. The district court in Carter v. Helmsley-Spear, Inc. held that the art must\nbe(1) meritorious and (2) recognized by art experts and other members of the artistic\ncommunity as such. Other courts have accepted letters, articles, and awards as evidence of\nrecognized stature. See Martin v. City of Indianapolis 982 F. Supp. 625, 630\xe2\x80\x9331 (S.D. Ind. 1997).\nIn the 5Pointz case, the district court agreed with the jury\xe2\x80\x99s finding that 45 out of 49 graffiti\nworks were works of recognized stature based on the artistic recognition of the works\noutside of the graffiti site, the art world\xe2\x80\x99s academic and professional interest in the works,\nand the skill and craftsmanship inherent in the works. The court noted that to be a work of\nrecognized stature, a work need not be a masterpiece. The 5Pointz court was careful to\nconsider the graffiti works at issue within the appropriate community and context for that\nparticular medium.\n(3) VARA is addressed to works of recognized stature, not artists of recognized stature.\nThus a work that has never been publicly displayed will usually struggle to achieve that status,\nregardless of the fame of the artist.\n\n420\n\n\x0c12. FORMALITIES AND DURATION\nInternational\nFormalities\n\nContext\xe2\x80\x94The\n\nBerne\n\nConvention\n\nProhibition\n\non\n\nBerne Convention reflects the view that copyright protection should not depend on\nformalities, such as notice and registration. However, what the Berne Convention actually\nsays about formalities is a little more complicated. Article 5(1) of the Berne Convention\nespouses a principle of national treatment. It requires member countries to grant foreign\nauthors all the rights they grant to their own citizens with respect to works covered by the\nBerne Convention, and, in addition, \xe2\x80\x9cthe rights specially granted by this convention.\xe2\x80\x9d\nA careful reading of this section reveals that while individual countries must accord foreign\nnationals all of the rights covered by the Berne Convention, they are not\xe2\x80\x94by virtue of this\nprovision at least\xe2\x80\x94required to extend those rights to their own citizens.\nYou may wonder why any country would want to give foreigners more rights than domestic\nauthors. Read on.\nBerne Convention (Paris 1971) Article 5\n(1) Authors shall enjoy, in respect of works for which they are protected under this\nConvention, in countries of the Union other than the country of origin, the rights\nwhich their respective laws do now or may hereafter grant to their nationals, as well\nas the rights specially granted by this Convention.\n(2) The enjoyment and the exercise of these rights shall not be subject to any\nformality; such enjoyment and such exercise shall be independent of the existence of\nprotection in the country of origin of the work. Consequently, apart from the\nprovisions of this Convention, the extent of protection, as well as the means of\nredress afforded to the author to protect his rights, shall be governed exclusively by\nthe laws of the country where protection is claimed. (emphasis added)\n\nArticle 5(2) of the Berne Convention is often described as a \xe2\x80\x98prohibition against formalities\xe2\x80\x99,\nbut that is something of an oversimplification. Article 5(2) provides that \xe2\x80\x9cthe enjoyment and\nthe exercise of these rights shall not be subject to any formality\xe2\x80\xa6\xe2\x80\x9d The expression \xe2\x80\x9cthese\nrights\xe2\x80\x9d refers back to the rights in the previous subsection\xe2\x80\x94it thus refers to rights of foreign\nauthors, not domestic ones.\nAs a result, the Berne Convention does not in fact prohibit a member nation from subjecting\nthe exercise of copyright to formalities in the case of that country\xe2\x80\x99s own authors. This leads\nto the curious situation in the United States where Americans are required to register their\ncopyrights in order to bring a cause of action in federal court, but foreign nationals are not.\nTo see exactly where to draw the line between domestic and foreign works, work through\nthe definition of \xe2\x80\x9cUnited States work\xe2\x80\x9d in Section 101 of the Act.\n17 U.S. Code \xc2\xa7 101. Definitions\nFor purposes of section 411, a work is a \xe2\x80\x9cUnited States work\xe2\x80\x9d only if\xe2\x80\x94\n(1) in the case of a published work, the work is first published\xe2\x80\x94\n(A) in the United States;\n\n421\n\n\x0c(B) simultaneously in the United States and another treaty party or parties, whose\nlaw grants a term of copyright protection that is the same as or longer than the term\nprovided in the United States;\n(C) simultaneously in the United States and a foreign nation that is not a treaty\nparty; or\n(D) in a foreign nation that is not a treaty party, and all of the authors of the work\nare nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual\nwork legal entities with headquarters in, the United States;\n(2) in the case of an unpublished work, all the authors of the work are nationals,\ndomiciliaries, or habitual residents of the United States, or, in the case of an\nunpublished audiovisual work, all the authors are legal entities with headquarters in\nthe United States; or\n(3) in the case of a pictorial, graphic, or sculptural work incorporated in a building\nor structure, the building or structure is located in the United States.\n\nThe United States did not enter into the Berne Convention until 1989, in part because of its\nopposition to the Conventions prohibition against formalities.94 The other stumbling block\nfor the United States was the requirement for the protection of moral rights. The English\nStatute of Anne, which provided the model for the first United States copyright act, limited\nits protection to works complying with various formalities, including registration and deposit.\nAlthough the United Kingdom abandoned these formalities long ago, they continue to play\nan important role in United States copyright law.\n\nThe significance of formalities in the United States\nThe distinction between published and unpublished works is vitally important in United\nStates copyright law. Until the 1976 Act came into effect, the duration of copyright\nprotection was determined with reference to the date of first publication. Moreover, again\nuntil relatively recently, voluntary publication of a work without complying with the\nformalities of notice, registration, and deposit would place the work in the public domain.\nNotice\nCopyright notice is the familiar \xc2\xa9 that you have no doubt seen thousands of times.\nTechnically, a copyright notice must contain the word copyright or some abbreviation\nthereof, the name of the copyright owner and the date of first publication.\nThe failure to include copyright notice has no effect on works published after March 1, 1989,\nhowever the inclusion of copyright notices is still commonplace and it has some significance\nin relation to statutory damages for copyright infringement.\nIn contrast, publication without the appropriate copyright notice prior to January 1, 1978 \xe2\x80\x93\nthe date at which the copyright act of 1976 became effective \xe2\x80\x93 makes a work in eligible for\ncopyright protection.\n\nUntil 1891, foreign works were categorically excluded from Copyright Act protection. Throughout most of\nthe 20th century, the only eligible foreign authors were those whose countries granted reciprocal rights to U.S.\nauthors and whose works were printed in the United States.\n94\n\n422\n\n\x0cWorks published between 1978 and 1989 were still subject to the notice requirement,\nhowever the 1976 copyright act included provisions excusing the emission of notice where\nonly a few copies like notice or the mission was due to a publisher\xe2\x80\x99s error. The 1976 act also\nprovided a mechanism to cure defective notice within five years of publication provided that\nthe copyright owner undertook reasonable efforts to add notice to all domestically\ndistributed copies after becoming aware of the omission.\nRegistration & Deposit\nUnited States law still provides that two copies of the best edition of a work must be\ndeposited in the copyright office within three months of first publication in the United\nStates. However, deposit is not a condition of copyright protection. Nonetheless, deposit is\nrequired as part of the registration process.\nThe current U.S. Copyright Act does not require registration for a valid copyright to exist.\nHowever, registration is a prerequisite for bringing an action for copyright infringement for\nUnited States works. In compliance with the Berne Convention, the owners of foreign works\nare entitled to bring a suit without registration. What exactly makes a work a foreign work\ndepends on the nationality and residence and the place of first publication of the work. See\nthe definition of \xe2\x80\x9cUnited States work\xe2\x80\x9d in Section 101 for details.\nCopyright registration is strongly encouraged by the fact that a certificate of registration is\nprima facie evidence of ownership and validity. More importantly, the powerful remedies of\nstatutory damages and attorney\xe2\x80\x99s fees do not apply to infringements that took place prior to\nregistration, unless the author registered within three months up to first publication.\nWhat is publication?\nWith so much riding on the question of publication, it should not be surprising that the very\nconcept publication itself has become somewhat tortured under United States law.\nEstate of Martin Luther King v. CBS, INC., 194 F. 3d 1211 (11th Cir. 1999)\nChief Judge Anderson\nThe Estate of Martin Luther King, Jr., Inc. brought this copyright infringement\naction against CBS, Inc. after CBS produced a video documentary that used, without\nauthorization, portions of civil rights leader Dr. Martin Luther King\xe2\x80\x99s famous \xe2\x80\x9cI\nHave a Dream\xe2\x80\x9d speech at the March on Washington on August 28, 1963. The\ndistrict court granted summary judgment to CBS on the ground that Dr. King had\nengaged in a general publication of the speech, placing it into the public domain. We\nnow reverse.\nI. FACTS\nThe facts underlying this case form part of our national heritage and are well-known\nto many Americans. On the afternoon of August 28, 1963, the Southern Christian\nLeadership Conference (\xe2\x80\x9cSCLC\xe2\x80\x9d) held the March on Washington (\xe2\x80\x9cMarch\xe2\x80\x9d) to\npromote the growing civil rights movement. The events of the day were seen and\nheard by some 200,000 people gathered at the March, and were broadcast live via\nradio and television to a nationwide audience of millions of viewers. The highlight of\nthe March was a rousing speech that Dr. Martin Luther King, Jr., the SCLC\xe2\x80\x99s\n423\n\n\x0cfounder and president, gave in front of the Lincoln Memorial (\xe2\x80\x9cSpeech\xe2\x80\x9d). The\nSpeech contained the famous utterance, \xe2\x80\x9cI have a dream . . .,\xe2\x80\x9d which became\nsymbolic of the civil rights movement. The SCLC had sought out wide press\ncoverage of the March and the Speech, and these efforts were successful; the Speech\nwas reported in daily newspapers across the country, was broadcast live on radio and\ntelevision, and was extensively covered on television and radio subsequent to the live\nbroadcast.\nOn September 30, 1963, approximately one month after the delivery of the Speech,\nDr. King took steps to secure federal copyright protection for the Speech under the\nCopyright Act of 1909, and a certificate of registration of his claim to copyright was\nissued by the Copyright Office on October 2, 1963. Almost immediately thereafter,\nDr. King filed suit in the Southern District of New York to enjoin the unauthorized\nsale of recordings of the Speech and won a preliminary injunction on December 13,\n1963. See King v. Mister Maestro, Inc., 224 F. Supp. 101 (S.D.N.Y. 1963).\nFor the next twenty years, Dr. King and the Estate enjoyed copyright protection in\nthe Speech and licensed it for a variety of uses, and renewed the copyright when\nnecessary. In 1994, CBS entered into a contract with the Arts & Entertainment\nNetwork to produce a historical documentary series entitled \xe2\x80\x9cThe 20th Century with\nMike Wallace.\xe2\x80\x9d One segment was devoted to \xe2\x80\x9cMartin Luther King, Jr. and The\nMarch on Washington.\xe2\x80\x9d That episode contained material filmed by CBS during the\nMarch and extensive footage of the Speech (amounting to about 60% of its total\ncontent). CBS, however, did not seek the Estate\xe2\x80\x99s permission to use the Speech in\nthis manner and refused to pay royalties to the Estate. The instant litigation ensued.\nOn summary judgment, the district court framed the issue as \xe2\x80\x9cwhether the public\ndelivery of Dr. King\xe2\x80\x99s speech constituted a general publication of the speech so as to\nplace it in the public domain.\xe2\x80\x9d After discussing the relevant case law, the district\ncourt held that Dr. King\xe2\x80\x99s \xe2\x80\x9cperformance coupled with such wide and unlimited\nreproduction and dissemination as occurred concomitant to Dr. King\xe2\x80\x99s speech\nduring the March on Washington can be seen only as a general publication which\nthrust the speech into the public domain.\xe2\x80\x9d Thus, the district court granted CBS\xe2\x80\x99s\nmotion for summary judgment. The Estate now appeals to this Court.\nII. DISCUSSION\nWe review the district court\xe2\x80\x99s grant of summary judgment de novo, with all facts and\nreasonable inferences therefrom reviewed in the light most favorable to the\nnonmoving party. Summary judgment was due to be granted only if the forecast of\nevidence before the district court showed that there was no genuine issue as to any\nmaterial fact and that the moving party, i.e., CBS, was entitled to judgment as a\nmatter of law.\nBecause of the dates of the critical events, the determinative issues in this case are\nproperly analyzed under the Copyright Act of 1909 (\xe2\x80\x9c1909 Act\xe2\x80\x9d), rather than the\nCopyright Act of 1976 (\xe2\x80\x9c1976 Act\xe2\x80\x9d) that is currently in effect. The question is\nwhether Dr. King\xe2\x80\x99s attempt to obtain statutory copyright protection on September\n30, 1963 was effective, or whether it was a nullity because the Speech had already\nbeen forfeited to the public domain via a general publication.\n\n424\n\n\x0cUnder the regime created by the 1909 Act, an author received state common law\nprotection automatically at the time of creation of a work. This state common law\nprotection persisted until the moment of a general publication. When a general\npublication occurred, the author either forfeited his work to the public domain, or, if\nhe had therebefore complied with federal statutory requirements, converted his\ncommon law copyright into a federal statutory copyright.\nIn order to soften the hardship of the rule that publication destroys common law\nrights, courts developed a distinction between a \xe2\x80\x9cgeneral publication\xe2\x80\x9d and a \xe2\x80\x9climited\npublication.\xe2\x80\x9d Only a general publication divested a common law copyright. A general\npublication occurred when a work was made available to members of the public at\nlarge without regard to their identity or what they intended to do with the work.\nConversely, a non-divesting limited publication was one that communicated the\ncontents of a work to a select group and for a limited purpose, and without the right\nof diffusion, reproduction, distribution or sale. The issue before us is whether Dr.\nKing\xe2\x80\x99s delivery of the Speech was a general publication.\nNumerous cases stand for the proposition that the performance of a work is not a\ngeneral publication. See, e.g., Ferris v. Frohman, 223 U.S. 424, 433 (1912) (\xe2\x80\x9cThe public\nrepresentation of a dramatic composition, not printed and published, does not\ndeprive the owner of his common-law right. The public performance of the play is\nnot an abandonment of it to the public use.\nIt appears from the case law that a general publication occurs only in two situations.\nFirst, a general publication occurs if tangible copies of the work are distributed to the\ngeneral public in such a manner as allows the public to exercise dominion and\ncontrol over the work. Second, a general publication may occur if the work is\nexhibited or displayed in such a manner as to permit unrestricted copying by the\ngeneral public. However, the case law indicates that restrictions on copying may be\nimplied, and that express limitations in that regard are deemed unnecessary.\nThe case law indicates that distribution to the news media, as opposed to the general\npublic, for the purpose of enabling the reporting of a contemporary newsworthy\nevent, is only a limited publication. This rule comports with common sense; it does\nnot force an author whose message happens to be newsworthy to choose between\nobtaining news coverage for his work and preserving his common-law copyright.\nWith the above principles in mind, in the summary judgment posture of this case and\non the current state of this record, we are unable to conclude that CBS has\ndemonstrated beyond any genuine issue of material fact that Dr. King, simply\nthrough his oral delivery of the Speech, engaged in a general publication making the\nSpeech \xe2\x80\x9cavailable to members of the public at large without regard to their identity\nor what they intended to do with the work.\xe2\x80\x9d Brown v. Tabb, 714 F.2d 1088, 1091\n(11th Cir.1983). A performance, no matter how broad the audience, is not a\npublication; to hold otherwise would be to upset a long line of precedent. This\nconclusion is not altered by the fact that the Speech was broadcast live to a broad\nradio and television audience and was the subject of extensive contemporaneous\nnews coverage. We follow the above cited case law [omitted from this extract]\nindicating that release to the news media for contemporary coverage of a\nnewsworthy event is only a limited publication.\n\n425\n\n\x0cThe district court held that \xe2\x80\x9cthe circumstances in this case take the work in question\noutside the parameters of the `performance is not a publication\xe2\x80\x99 doctrine.\xe2\x80\x9d These\ncircumstances included \xe2\x80\x9cthe overwhelmingly public nature of the speech and the\nfervent intentions of the March organizers to draw press attention.\xe2\x80\x9d Certainly, the\nSpeech was one of a kind\xe2\x80\x94a unique event in history. However, the features that\nmake the Speech unique\xe2\x80\x94e.g., the huge audience and the Speech\xe2\x80\x99s significance in\nterms of newsworthiness and history\xe2\x80\x94are features that, according to the case law,\nare not significant in the general versus limited publication analysis. With respect to\nthe huge audience, the case law indicates that the general publication issue depends,\nnot on the number of people involved, but rather on the fact that the work is made\navailable to the public without regard to who they are or what they propose to do\nwith it. See Brown v. Tabb, 714 F.2d 1088, 1091-92 (11th Cir. 1983). For this\nproposition, Brown cited Burke, 598 F.2d at 691 (\xe2\x80\x9cGeneral publication depends on the\nauthor making the work available to those interested, and not on the number of\npeople who actually express an interest.\xe2\x80\x9d). In the instant case, the district court\nacknowledged that \xe2\x80\x9cthe size of the audience before which a work is performed\ncannot be the basis for a court\xe2\x80\x99s finding that a general publication has occurred.\xe2\x80\x9d\nWith respect to the significance of the Speech in terms of newsworthiness and\nhistory, the case law again suggests that this feature should not play a substantial role\nin the analysis. As noted above, the D.C. Circuit in Rickover indicated that the wide\npress distribution of the speeches at issue there would not alone have constituted a\ngeneral publication. Indeed, Mister Maestro so held with respect to the very Speech at\nissue before us. Also supporting this proposition is the case law above cited to the\neffect that size of the audience is not significant.\nThe district court cited Letter Edged in Black Press, Inc. v. Public Bldg. Comm\xe2\x80\x99n of Chicago,\n320 F.Supp. 1303 (N.D.Ill. 1970), CBS\xe2\x80\x99s best case, in support of its reasoning, see 13\nF.Supp.2d at 1353-54, and that case warrants some exploration. In Letter Edged in\nBlack, the question was whether the city had dedicated a Picasso sculpture (located in\nfront of the Chicago Civic Center) to the public domain by general publication. The\ncity had done the following: it carried out a massive campaign to publicize the\nmonumental sculpture; it placed a maquette (portable model of the sculpture) on\nexhibition at a local museum; it gave photographs to the public upon request; it\narranged for pictures of the sculpture to appear in several magazines of large national\ncirculation; it sold a postcard featuring the sculpture; and it distributed numerous\npublications and reports containing photographs of the sculpture. After stating the\ncontrolling legal principles with regard to general and limited publication, the Letter\nEdged in Black court stated its view that the cumulation of these various acts by the\ncity equated to general publication. The court then distinguished American Tobacco,\n207 U.S. 284, the primary authority that the city cited to support its theory of mere\nlimited publication. In American Tobacco, the Supreme Court held that the display of a\npainting in a gallery did not constitute general publication putting the painting into\nthe public domain. According to the Letter Edged in Black court, a cornerstone of\nAmerican Tobacco was the fact that copying of the painting was strictly forbidden and\nthe gallery strictly enforced the anti-copying rules. See Letter Edged in Black, 320\nF.Supp. at 1310. The court held that the facts in Letter Edged in Black were\ndistinguishable:\n\n426\n\n\x0cIn the case at bar there were no restrictions on copying and no guards preventing\ncopying. Rather every citizen was free to copy the maquette for his own pleasure\nand camera permits were available to members of the public. At its first public\ndisplay the press was freely allowed to photograph the maquette and publish these\nphotographs in major newspapers and magazines. Further, officials at this first\npublic showing of the maquette made uncopyrighted pictures of the maquette\navailable on request. Were this activity strictly classified as limited publication, there\nwould no longer be any meaningful distinction between limited and general\npublication.\n\nId. at 1311 (footnotes omitted).\nThe district court likened the instant case to Letter Edged in Black on the ground that\nthere was a lack of restriction on copying and free allowance of reproduction by the\npress. However, we do not believe the analogy fits\xe2\x80\x94at least not at this summary\njudgment stage. Significantly, in Letter Edged in Black there were manifestations of the\ncity\xe2\x80\x99s intent to distribute generally among the public at large that have no parallels in\nthe evidence we can consider in the instant summary judgment posture. The city\ngave photographs of the sculpture to the public, not merely the press, upon request.\nThe city commercially sold a postcard featuring the sculpture. Copying was\napparently widespread at an exhibit of the sculpture, and the city took no action to\ncurtail copying and photographing by the public. See Letter Edged in Black, 320\nF.Supp. at 1306-07, 1311. At trial, CBS may well produce evidence that brings the\ninstant case on all fours with Letter Edged in Black, but the present state of the record\ndoes not support the analogy; to the contrary, the performance of the Speech in the\ninstant case is more like the exhibition of the painting in the gallery in American\nTobacco.\nBecause there exist genuine issues of material fact as to whether a general publication\noccurred, we must reverse the district court\xe2\x80\x99s grant of summary judgment for CBS. It\nwould be inappropriate for us to address CBS\xe2\x80\x99s other arguments, e.g., fair use and\nthe First Amendment, because the district court did not address them, and because\nthe relevant facts may not yet be fully developed. Of course, we express no opinion\non the eventual merits of this litigation. The judgment of the district court is reversed\nand remanded for further proceedings not inconsistent with this opinion.\nREVERSED AND REMANDED.\nSenior District Judge Cook, concurring in part and dissenting in part:\nI concur in the result that was reached by my distinguished colleague, Chief Judge\nAnderson. Nevertheless, I write separately to express my own thoughts about this\nvery complicated area of the law. To summarize, I agree with the proposition that\nthis case is controlled by the 1909 Copyright Act, under which Dr. King did not lose\ncopyright protection over his \xe2\x80\x9cI Have A Dream Speech\xe2\x80\x9d by placing it into the public\ndomain based on the factors considered below. However, my reading of the law\nleads me to believe that a distinction between works that are performed and those\nthat are not is crucial to a proper resolution of this dispute. I will attempt to explain\nmy rationale, as well as the ramifications that flow from it.\n\n427\n\n\x0cThe district court held that a general publication had occurred on the basis of the\ncombined presence of three factors; namely, (1) the performance of the speech by\nDr. King during the March on Washington, (2) its contemporaneous wide\ndissemination by the press, through the broadcasting and print media, which resulted\nfrom the concerted efforts of the March organizers to gain media attention, and (3)\nthe lack of restrictions, explicit, implicit, or in practice, on the copying or\nreproduction of the speech by the press or public. While agreeing with Chief Judge\nAnderson that the speech was not placed into the public domain on the basis of\nthese factors, I do not reach this conclusion because of the limited publication rule.\nRather, I rely upon the more fundamental principle that, in the context of performed\nworks, none of these factors may be properly considered as having contributed to a\ngeneral or limited publication in the absence of an authorized dissemination of a\ntangible copy of the work without copyright notice.\nA.\nIn my opinion, the trial court erred by holding that Dr. King\xe2\x80\x99s performance of the\nspeech was a factor which contributed to a general publication. The long-standing,\nwell-understood, and accepted rule in copyright law is that performance does not\nconstitute publication. See Ferris v. Frohman, 223 U.S. 424, 434-36 (1912). This was\nthe rule under state common law.\nThe public representation of a dramatic composition, not printed and published,\ndoes not deprive the owner of his common-law right, save by operation of statute.\nAt common law, the public performance of the play is not an abandonment of it to\nthe public use.\n\nFerris, 223 U.S. at 435. This principle was also applied to the 1909 Act by the courts,\nand was eventually codified in the 1976 Act.\nInasmuch as the 1976 Act simply adopts the performance rule that existed under\nstate common law and the 1909 Act, any reference to its provisions conclusively\nestablishes that Dr. King\xe2\x80\x99s oration of his \xe2\x80\x9cI Have A Dream\xe2\x80\x9d speech should not be\nconstrued as contributing to a divestive publication.\n\xe2\x80\x9cPublication\xe2\x80\x9d is the distribution of copies or phonorecords of a work to the public\nby sale or other transfer of ownership, or by rental, lease, or lending. The offering to\ndistribute copies or phonorecords to a group of persons for purposes of further\ndistribution, public performance, or public display, constitutes publication. A public\nperformance . . . of a work does not of itself constitute publication.\n\n17 U.S.C. \xc2\xa7 101 (emphasis added). Further,\n[t]o perform . . . a work \xe2\x80\x9cpublicly\xe2\x80\x9d means\xe2\x80\x94\n(1) to perform . . . it at a place open to the public or at any place where a substantial\nnumber of persons outside of a normal circle of a family and its social acquaintances\nis gathered; or\n(2) to transmit or otherwise communicate a performance . . . of the work to a place\nspecified by clause (1) or to the public, by means of any device or process, whether\nthe members of the public capable of receiving the performance or display receive it\nin the same place or in separate places and at the same time or at different times.\n\n428\n\n\x0cId. Dr. King\xe2\x80\x99s performance of the speech in the presence of over 200,000 individuals\nwho had assembled for a demonstration at the Lincoln Memorial falls squarely\nwithin subclause (1) above, while the transmission of his speech by radio and\ntelevision meets the criteria in subclause (2).\nMoreover, consistent with the rationale behind the rule that performance is not a\npublication, I would hold that, for those controversies that are governed by the 1909\nAct, neither a general nor a limited publication can ever occur merely from\nperformance in the absence of an authorized distribution of a tangible copy of the\nwork without a copyright notice or reservation of rights. Under the 1909 Act, a\nstatutory copyright over a performed work could be obtained by two methods, each\nof which required the existence of a tangible copy. Section 9 of the 1909 Act\nprovided that a copyright claim could be secured by affixing a notice to the tangible\ncopies that were published or offered for sale. On the other hand, if a performed\nwork, such as a speech or musical or dramatic composition, had not been\n\xe2\x80\x9creproduced in copies for sale,\xe2\x80\x9d \xc2\xa7 11 of the 1909 Act permitted an author to gain\nstatutory copyright protection only by depositing a tangible copy with the Copyright\nOffice. Due to their peculiar nature, there were too many cases in which the\nrequirement under the 1909 Act (to wit, that a tangible copy must exist before\nstatutory copyright protection could be obtained) was unrealistically onerous for\nperformed works because of the common necessity to make last minute revisions to\nplays, or, as this case exemplifies, speeches. The 1909 Act appears to have\nrecognized this problem, as \xc2\xa7 2 (emphasis added) specified that \xe2\x80\x9cNothing in this title\nshall be construed to annul or limit the right of the author or proprietor of an\nunpublished work, at common law or equity, to prevent the copying, publication, or\nuse of such unpublished work without his consent, and to obtain damages therefor.\xe2\x80\x9d\nThus, \xc2\xa7 2 recognized an absolute need for the strict adherence to a rule that, in the\nabsence of a published tangible copy, a performance alone would never constitute a\npublication. Otherwise, an author could lose all copyright protection because of his\ninability to comply with the tangible copy requirement prior to the performance that\nwas necessary to transform his common law copyright into a statutory copyright\nunder \xc2\xa7 11 of the 1909 Act.\nTherefore, it is my view that the trial court erred by failing to recognize the special\nnature of performed works such as speeches which was recognized by the principle\nunder the common law and the 1909 Act that performance does not constitute\npublication in the absence of an authorized distribution of tangible copies without a\ncopyright notice or a reservation of rights. Consequently, I would reverse because\nthe trial court relied upon Dr. King\xe2\x80\x99s performance of the speech to conclude that a\ngeneral publication had occurred.\nB.\nThe trial court ruled that the widespread dissemination of the speech, which was due\nin large measure to the efforts of the March organizers, supported the conclusion\nthat it had been placed into the public domain. In my opinion, this reasoning is\nincorrect because the size of the audience before whom a work is performed is\nirrelevant to the issue of publication.\n\n429\n\n\x0cA conclusively established corollary to the rule, which prescribes that performance\ndoes not constitute a general publication, is the principle that the size of an audience\nbefore whom an unpublished work is performed is irrelevant to the issue of\npublication. \xe2\x80\xa6 The trial court appears to have relied upon the language in Burke,\nwhich held that \xe2\x80\x9c[a] general publication is such dissemination of the work itself\namong the public as justifies the belief that it has been dedicated to the public and\nrendered common property.\xe2\x80\x9d Burke, 598 F.2d at 691.\nAlthough the reasoning of the trial court may have been justified on the basis of\nworks that are manifested through a physical object, such as books or pieces of art, it\nis inapplicable to performed works because of the axiom that performance is not a\npublication, regardless of the size of the audience. This axiom negates any inference\nthat the amount of the dissemination is sufficient to justify a belief that a performed\nwork was dedicated to the public and thus entered into the public domain inasmuch\nas an inherent tension exists between the two doctrines. If the size of an audience\nhas no effect on the rule that performance is not a publication, then no degree of\ndissemination due to performance could result in a dedication to the public.\nImportantly, the distinction that I seek to draw is consistent with the Ferris holding\nthat performance does not amount to an abandonment of title or to a dedication of\nthe work to the public at large. Ferris, 223 U.S. at 435-36.\nThe logical result of the rule that performance cannot constitute a publication\nregardless of audience size is that an affirmative effort to obtain press coverage does\nnot constitute an exception because media coverage does nothing more than increase\nthe size of the audience, which is irrelevant to the issue of publication. Thus, I am of\nthe opinion that the trial court erroneously found that a general publication existed\nin part because of the widespread dissemination of the speech that had been\nimplemented by the concerted efforts of the March organizers to maximize press\ncoverage.\nC.\nThe trial court also determined that a failure to control copying or reproductions of\nthe speech supported a finding of a general publication. This principle appears to\noriginate from American Tobacco Co. v. Werckmeister, 207 U.S. 284, 300 (1907), which\nstated in dicta that \xe2\x80\x9c[w]e do not mean to say that the public exhibition of a painting\nor statue, where all might see and freely copy it, might not amount to publication\nwithin the statute, regardless of the artist\xe2\x80\x99s purpose or notice of reservation of rights\nwhich he takes no measure to protect.\xe2\x80\x9d In addition, the decision by the trial court\nevidenced its reliance upon the principle from American Tobacco, 207 U.S. at 299, in\nwhich the Supreme Court indicated that the test for a general publication is whether\nan exhibition of the work to the public evinces a dedication without a reservation of\nrights rather than merely the right to view and inspect.\nI believe that the court below erred when it failed to recognize that these maxims\nhave no application in the context of performed works, as made clear by Ferris,\nwhich was decided over four years after American Tobacco. In Ferris, the Supreme\nCourt, immediately after enunciating the rule that performance alone cannot\nconstitute publication, quoted favorably from a treatise by Justice Story.\n\n430\n\n\x0cStory states the rule as follows: \xe2\x80\x9cSo, where a dramatic performance has been allowed\nby the author to be acted at a theater, no person has a right to pirate such\nperformance, and to publish copies of it surreptitiously; or to act it at another\ntheater without the consent of the author or proprietor; for his permission to act it\nat a public theater does not amount to an abandonment of his title to it, or to a\ndedication of it to the public at large.\xe2\x80\x9d It has been said that the owner of a play\ncannot complain if the piece is reproduced from memory. But the distinction is\nwithout sound basis and has been repudiated.\n\nFerris, 223 U.S. at 435-36. The opportunity to copy or reproduce a performed work,\nor the fact of performance in and of itself, has no relevance to the issue of whether it\nhas been placed into the public domain because the performance \xe2\x80\x9cdoes not amount\nto an abandonment of the author\xe2\x80\x99s title to it, or to a dedication of it to the public at\nlarge.\xe2\x80\x9d Id. See also Nutt v. National Inst. Inc. for the Improvement of Memory, 31 F.2d 236,\n238 (2d Cir.1929) (\xe2\x80\x9cEven where the hearers are allowed to make copies of what was\nsaid for their personal use, they cannot later publish for profit that which they had\nnot obtained the right to sell.\xe2\x80\x9d). Moreover, given that Dr. King\xe2\x80\x99s speech enjoyed the\nautomatic protection of common law copyright, it is significant that CBS did not\npoint to any authority in which forfeiture was found on the basis of the copying\nactivities or the reproduction of copyrighted work by a third party.\nThe trial court also cited Letter Edged in Black Press, Inc. v. Public Bldg. Comm\xe2\x80\x99n of Chicago,\n320 F.Supp. 1303 (N.D.Ill.1970), where a general publication of a sculpture had been\nfound to exist based upon the lack of restriction on the copying and successful\nefforts to court press coverage, with no restrictions on press reproductions.\nHowever, I believe that Letter Edged in Black Press is not applicable to this controversy\nfor several reasons.\nFirst, that court had placed importance on the supplying of uncopyrighted tangible\ncopies, in the form of photographs of the work, which were made available upon\nrequest. By contrast, no similar situation is presented in the decision below because\nthe trial court expressly disavowed any reliance on the only two tangible copies in\nevidence.\nSecond, and more fundamentally, Letter Edged in Black Press is distinguishable, in that\nthe copyrightable work at issue was physical and thus the application of the American\nTobacco principles was justified. In contrast, the situation presented here involves a\ncopyrightable work that is manifested by performance. The American Tobacco\nprinciples of unfettered copying and reproduction, or an exhibition which\ndemonstrates a dedication without reservation of rights, are inapposite to performed\nworks in the absence of an authorized distribution of tangible copies. Otherwise, it\nwould be very difficult, if even possible, to explain the results in Silverman v. CBS, Inc.,\n632 F.Supp. 1344, 1347, 1350 (S.D.N.Y.1986), aff\xe2\x80\x99d in part, vacated in part on other\ngrounds by 870 F.2d 40 (2d Cir.1989) and CBS, Inc. v. Documentaries Unlimited, Inc., 42\nMisc.2d 723, 248 N.Y.S.2d 809, 811 (Sup.Ct.1964), where Appellee was held by the\ntrial court to have a valid copyright over radio broadcasts whose performances were\nostensibly disseminated to thousands, or perhaps even millions, of people.\nD.\nFor the reasons that have been explained above, I would hold that no publication,\ngeneral or limited, occurred because Dr. King\xe2\x80\x99s delivery of his \xe2\x80\x9cI Have A Dream\xe2\x80\x9d\n431\n\n\x0cspeech was a mere performance of that work, and performance simply cannot\nconstitute a publication regardless of (1) the size of the audience involved, or (2)\nefforts to obtain widespread contemporary news coverage under circumstances that\nmay have allowed the copying of the work. It is my belief that this analysis (1) differs\nsignificantly from one which is premised on a limited publication theory, and (2) also\navoids the legal fiction of declaring that Dr. King\xe2\x80\x99s \xe2\x80\x9cI Have A Dream\xe2\x80\x9d speech, as a\nlimited publication, was communicated to a select group for a narrow purpose, a\nholding that has been generally criticized by commentators.\n[Senior Circuit Judge Roney, dissented]\nNotes and questions\n(1) The copyright law concept of publication is obviously strained and artificial. As Estate of\nMartin Luther King Jr. v. CBS illustrates courts developed a distinction between \xe2\x80\x9climited\npublication\xe2\x80\x9d and \xe2\x80\x9cgeneral publication.\xe2\x80\x9d to mitigate the extreme consequences of publication\nwithout copyright notice. Under the 1909 Act, only a \xe2\x80\x9cgeneral publication\xe2\x80\x9d made without\ncomplying with copyright formalities would divest a work of its potential for federal\ncopyright and simultaneously end its common law copyright (the right of first publication).\n(2) In 1963, Dr. King gave his famous \xe2\x80\x9cI Have a Dream\xe2\x80\x9d speech to an audience of 200,000\npeople outside the Lincoln Memorial in Washington, D.C. The speech was broadcast live via\nradio and television to a nationwide audience of millions of viewers. Hundreds of copies of\nthe speech were also distributed to the media. About a month later, Dr. King took steps to\nsecure federal copyright protection for the speech. As the Estate of Martin Luther King Jr. v.\nCBS illustrates, courts have fairly consistently held that distribution of a limited number of\ncopies of the work to a limited group of people for a limited purpose was held to be a\nlimited publication. Moreover, a public performance or public display of a work did not\nconstitute a publication either as long as there was an express or implied condition that the\npublic could not copy the work.\n(3) Common law copyright and copyright in unpublished works:\nHistorically, the common law recognized the right of an author to control the first\npublication of an unpublished work. This doctrine grew out of early English cases involving\nunpublished letters and manuscripts, which held that the author of the letters rather than\ntheir possessor had the right to authorize or prohibit their publication.95 The common law\ndid not, however, recognize any right to control subsequent publication of a work after a\nfirst authorized publication had taken place. As the U.S. Supreme Court summarized in\nWheaton v Peters 33 U.S. 591 (1834)\xe2\x80\x94after reviewing the important English cases, such as\nMillar v Taylor, 98 Eng Rep 201, 257 [KB 1769] and Donaldson v Beckett 4 Burr 2408 [HL\n1774]\xe2\x80\x94\nThat an author, at common law, has a property in his manuscript, and may obtain\nredress against any one who deprives him of it, or by improperly obtaining a copy\nPope v. Curl, 2 Atk. (3d ed.) 342, 26 Eng. Rep. 608 (Ch. 1741) is extracted in an earlier chapter of these\nmaterials. See also, Duke of Queensbury v. Shebbeare, 2 Eden (2d ed.) 329, 28 Eng. Rep. 924 (Ch. 1758)\n(unpublished manuscript of the Earl of Clarendon\'s history of the reign of Charles II). See generally Howard B.\nAbrams, The Historic Foundation of American Copyright Law: Exploding the Myth of Common Law Copyright, 29 WAYNE\nL. REV. 1119 (1983).\n95\n\n432\n\n\x0cendeavours to realise a profit by its publication, cannot be doubted; but this is a very\ndifferent right from that which asserts a perpetual and exclusive property in the\nfuture publication of the work, after the author shall have published it to the world.\nThe argument that a literary man is as much entitled to the product of his labour as\nany other member of society, cannot be controverted. And the answer is, that he\nrealises this product by the transfer of his manuscripts, or in the sale of his works,\nwhen first published.\n\n(4) Until the Copyright Act of 1976, unpublished works enjoyed a common law right of first\npublication that is sometimes referred to as \xe2\x80\x9ccommon law copyright\xe2\x80\x9d. So long as a work\nremained unpublished it was eligible for statutory copyright protection from the moment of\ngeneral publication in compliance with copyright formalities.\nIt is often said that publication without compliance with formalities would \xe2\x80\x9cdivest\xe2\x80\x9d common\nlaw copyright. But this is only true in the sense there can be only one \xe2\x80\x9cfirst\xe2\x80\x9d publication. In\ntruth, publication without notice was not literally divesting, it is more accurate to say that it\nwas exhausting of one\xe2\x80\x99s common law rights and represented the failure to take advantage of\na contingent statutory requirement. This right of first publication did not amount to the\nbroad concept of literary property advocated by Blackstone, and the right of first publication\nshould not be treated as the exclusive right to reproduce, distribute, publicly perform and\ndisplay the work that applies to statutory copyright.\n(5) In Flo & Eddie, Inc. v. SIRIUS, 28 NY 3d 583 - NY: Court of Appeals 2016, the New\nYork Court of Appeals held that the common law of New York does not recognize a right\nof public performance for the creators of sound recordings fixed prior to February 15, 1972).\n(6) The Copyright Act of 1976 vests copyright protection in a work from the moment it is\nfixed in a tangible medium of expression, thus rendering the common-law right of first\npublication redundant. Accordingly, the 1976 Act expressly preempts common-law\ncopyright. Note that special rules apply for determining the duration of copyright for works\ncreated before 1978 but unpublished and unregistered as of January 1, 1978.\nThe effect of publication of derivative works\nIn Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 593 (2d Cir. 1999) the Second\nCircuit held that the publication of a Motion Picture based on a screenplay had the effect of\npublishing the screenplay \xe2\x80\x9cto the extent that the screenplay was thereby disclosed.\xe2\x80\x9d But note\nthat in TCA TV Corp. v. McCollum, 839 F.3d 168, 187\xe2\x80\x9392 (2d Cir. 2016) the court held the\n\xe2\x80\x9cWho\xe2\x80\x99s on first\xe2\x80\x9d comedy routine did not merge into the film (One Night in the Tropics) that\nincorporated it for the purposes of copyright renewal.\n[Placeholder: This issue is worth exploring in greater depth.]\n\nCopyright Duration\nAn abridged timeline of copyright duration follows:\n1710: Statute of Anne establishes statutory copyright for the first time. 14 year term,\nrenewable for an additional 14 years.\n1774: Donaldson vs. Beckett holds that there is no common law copyright that survives\nfirst publication.\n\n433\n\n\x0c1790: United States Copyright Act follows the Statute of Anne and adopts 14 years,\nrenewable for 14.\n1793: France\xe2\x80\x94The revolutionary government establishes a copyright term of life\nplus 10 posthumous years if the author has heirs.\n1810: France\xe2\x80\x94Napoleon establishes copyright for the life of the author and of the\nsurviving spouse (if there is one), plus 20 years if there are children.\n1826: France\xe2\x80\x94The Bourbon restoration proposes life plus 50 years\n1831: The United States extends copyright to 28 years from publication, still\nrenewable for only 14 years.\n1836: France\xe2\x80\x94The July Monarchy proposes life plus 50 years.\n1837: Prussia adopts copyright term of author\xe2\x80\x99s life plus 30 posthumous years.\n1845: The German Federation adopts term of author\xe2\x80\x99s life plus 30 posthumous\nyears.\n1854: France adopts life plus 30 years.\n1856: Germany adds ten years for certain classic authors.\n1866: France adopts life plus 50 years\n1879: Spain adopts life plus 80 years\n1891: The United States recognizes international copyright.\n1909: United States extends copyright to 28 years from publication, renewable for\nan additional 28 years.\n1928: Berne Convention supports life plus 50 years, but leaves terms up to\nindividual countries.\n1934: Germany\xe2\x80\x99s Nazi government adopts life plus 50 years.\n1948: Life plus 50 years is made obligatory for Berne Convention members\n1957: France passes a copyright act that keeps \xe2\x80\x9cmaterial\xe2\x80\x9d rights at life plus 50 years,\nbut makes \xe2\x80\x9cimmaterial\xe2\x80\x9d rights (including \xe2\x80\x9cmoral\xe2\x80\x9d ones) perpetual/eternal.\n1965: West Germany adopts life plus 70 years\n1976: United States adopts life of the author plus 50 years\n1985: France extends copyright to life plus 70 years.\n1987: Spain reduces copyright to life plus 60 years (it had been 80)\n1988: The United States joins the Berne Convention (effective March 1989)\n1993: The European Union standardizes copyright at life plus 70 years.\n1998: The United States extends copyright to life plus 70 years and adds 20 years to\nall existing terms.\n\n434\n\n\x0cInternational Norms and Agreements Concerning Copyright Duration\nThe Berne Formula: life of the author plus 50 years\nArticle 7 of the Berne Convention provides for a general minimum term of copyright\nprotection of the life of the author plus 50 years. The Berne Convention authorizes\ncountries to apply fixed terms of at least 50 years for cinematographic works, anonymous or\npseudonymous works. Presumably, because of the difficulties in determining the exact\nidentity of the author to use as a measuring life. The Berne Convention also allows that\nphotographic works and works of applied art protected as artistic works can be protected for\na term as little as 25 years.\nBerne Convention (Paris 1971) Article 7.\n(1) The term of protection granted by this Convention shall be the life of the author\nand fifty years after his death.\n(2) However, in the case of cinematographic works, the countries of the Union may\nprovide that the term of protection shall expire fifty years after the work has been\nmade available to the public with the consent of the author, or, failing such an event\nwithin fifty years from the making of such a work, fifty years after the making.\n(3) In the case of anonymous or pseudonymous works, the term of protection\ngranted by this Convention shall expire fifty years after the work has been lawfully\nmade available to the public. However, when the pseudonym adopted by the author\nleaves no doubt as to his identity, the term of protection shall be that provided in\nparagraph (1). If the author of an anonymous or pseudonymous work discloses his\nidentity during the above-mentioned period, the term of protection applicable shall\nbe that provided in paragraph (1). The countries of the Union shall not be required\nto protect anonymous or pseudonymous works in respect of which it is reasonable\nto presume that their author has been dead for fifty years.\n(4) It shall be a matter for legislation in the countries of the Union to determine the\nterm of protection of photographic works and that of works of applied art in so far\nas they are protected as artistic works; however, this term shall last at least until the\nend of a period of twenty-five years from the making of such a work.\n(6) The countries of the Union may grant a term of protection in excess of those\nprovided by the preceding paragraphs.\n\nBeyond Berne\nThe Berne Convention is a floor, not a ceiling: Article 7(6) expressly authorizes countries of\nthe Union to grant terms of protection in excess of the Berne Convention minimum\nrequirements. The United States and the European Union have done so by extending the\nbasic copyright term to the life of the author plus 70 years. Australia also agreed to extend its\ncopyright term as part of the Australian-US free trade agreement. In Mexico, copyright lasts\nfor the life of the author plus 100 years.\nNote also that TRIPs Article 14(5) provides for a minimum term of 50 years for the rights of\nperformers and produces and a minimum term of 20 years for the rights of broadcasters.\nThe WIPO Performances and Phonograms Treaty Article 17 recognizes a minimum term of\n50 years for performances.\n\n435\n\n\x0cCopyright Duration in the United States\nOverview\nLike the English Statute of Anne in 1710, the first United States Copyright Act, enacted in\n1790, provided a 14-year term of protection from the date of registration, renewable for an\nadditional 14 years upon application. In 1831 the initial term of protection was extended to\n28 years, and in 1909 the renewal period was also extended to 28 years. Thus the potential\nterm of copyright protection for works under the 1909 Act was 56 years from the date of\npublication.\nIn practice, however, very few copyright owners applied for the second term of protection.\nSometimes this failure was inadvertent, primarily it was because 28 years after publication the\nvast majority of works had no obvious economic value.\nThe Copyright Act of 1976 changed the basic term from 28 plus 28 from the date of\nregistration to the life of the author plus 50 years in preemptive compliance with the Berne\nConvention. In 1998 Congress passed the Copyright Term Extension Act adding an\nadditional 20 years of protection. Under the current law, copyright lasts for the life of the\nauthor plus 70 years, or 95 years from the date of creation in the case of a work made for\nhire or a work made anonymously or under a pseudonym (unless the identity of the\npseudonymous author is actually known).\n17 U.S. Code \xc2\xa7 302. Duration of copyright: Works created on or after January\n1, 1978\n(a) In General.\xe2\x80\x94Copyright in a work created on or after January 1, 1978, subsists\nfrom its creation and, except as provided by the following subsections, endures for a\nterm consisting of the life of the author and 70 years after the author\xe2\x80\x99s death.\n(b) Joint Works.\xe2\x80\x94In the case of a joint work prepared by two or more authors who\ndid not work for hire, the copyright endures for a term consisting of the life of the\nlast surviving author and 70 years after such last surviving author\xe2\x80\x99s death.\n(c) Anonymous Works, and Works Made for Hire.\xe2\x80\x94In the case of an anonymous\nwork, a pseudonymous work, or a work made for hire, the copyright endures for a\nterm of 95 years from the year of its first publication, or a term of 120 years from\nthe year of its creation, whichever expires first. \xe2\x80\xa6\n\nComplexity\nDetermining whether a work still subject to copyright protection is actually much more\ncomplicated than the preceding summary indicates. Some of these complications are no\nlonger relevant. The 1976 Act gave works that had already been published before its\neffective date, but were still in force, an additional 19 years of protection, for a total of 75\nyears. Works published prior to January 1, 1978 and still in their first period of copyright\nprotection still had to be renewed\xe2\x80\x94however this requirement was abolished in 1992\xe2\x80\x94which\nmeans that works published or registered between 1964 and 1977 are automatically treated as\nhaving been renewed.\n\n436\n\n\x0cFigure 12 Arthur Conan Doyle, The Problem of Thor Bridge (1922), Illustration by Alfred Gilbert, in\nThe Strand Magazine\n\nArthur Conan Doyle\xe2\x80\x99s \xe2\x80\x9cThe Problem of Thor Bridge\xe2\x80\x9d, published in February and March\n1922, had an initial term of protection lasting until 1950. Thor Bridge was renewed, and was\ndue to expire in 1978, however, under the 1976 Act the renewal term was extended by 19\nyears. So the renewal term expired in 1997.\nFigure 13 Arthur Conan Doyle, The Adventure of the Creeping Man (1923), Illustration by Howard K.\nElcock\n\nHowever, \xe2\x80\x9cThe Adventure of the Creeping Man\xe2\x80\x9d, published in 1923, was due to expire in\n1998 and was thus ineligible to benefit from the 20 year extension in the Copyright Term\nExtension Act of that year. Copyright in the Creeping Man expired at midnight on December\n31, 2018.\n\n437\n\n\x0cFor guidelines for calculating copyright term, see the Cornell University Library\xe2\x80\x99s Copyright\nInformation Center, Copyright Term and the Public Domain in the United States at\nhttps://copyright.cornell.edu/publicdomain.96\nCopyright Duration for unpublished works\n17 U.S. Code \xc2\xa7 303. Duration of copyright: Works created but not published\nor copyrighted before January 1, 1978\n(a) Copyright in a work created before January 1, 1978, but not theretofore in the\npublic domain or copyrighted, subsists from January 1, 1978, and endures for the\nterm provided by section 302. In no case, however, shall the term of copyright in\nsuch a work expire before December 31, 2002; and, if the work is published on or\nbefore December 31, 2002, the term of copyright shall not expire before December\n31, 2047.\n(b) The distribution before January 1, 1978, of a phonorecord shall not for any\npurpose constitute a publication of any musical work, dramatic work, or literary\nwork embodied therein.\n\nThe copyright term for a work that has never been published and was never registered for\nfederal copyright expires 70 years after the death of the author. So the unpublished works of\nauthors who died before 1949 were in the public domain as of 2019. What if we don\xe2\x80\x99t know\nwhen the author died because we don\xe2\x80\x99t know who the author was? Unpublished anonymous\nand pseudonymous works are given 120 years of copyright protection under the Act,\nmeasured from the date of creation. So, unpublished anonymous and pseudonymous works\ncreated before 1899 became part of the public domain in 2019. This is also true of\nunpublished works made for hire. What if we know who the author was, but we don\xe2\x80\x99t know\nwhen the author died? In that case, the Copyright Act also provides that the work gets 120\nyears of copyright protection.97\nSpecial rules apply to sound recordings\nAlthough sound recordings have existed since the 19th century, they were only made the\nsubject of federal copyright in the United States in 1972. The 1972 law forward looking and\ndid not grant retrospective protection to recordings prior to February 15, 1972. Many sound\nrecordings were protected by state laws prior to 1972, and some even argue (probably\nincorrectly in this author\xe2\x80\x99s view) that state common law provided copyright-like protection\nto sound recordings.\nThis changed in 2018 when Congress passed the Music Modernization Act (or MMA). The\nMusic Modernization Act bundled together three different proposals: the Musical Works\nModernization Act (now Title I), the Classics Protection and Access Act (now Title II), and\nthe Allocation for Music Producers Act (now Title III). Other features of the Music\nModernization Act are discussed elsewhere in these materials.\n\nChart based on Peter B. Hirtle, "Recent Changes To The Copyright Law: Copyright Term Extension,"\nArchival Outlook, January/February 1999 and updated on a regular basis, at least as of 2019.\n96\n\nNote that a certification from the Copyright Office that it has no record to indicate whether the person is\nliving or died less than 70 years before is a complete defense to any action for infringement. See 17 U.S.C. \xc2\xa7\n302(e).\n97\n\n438\n\n\x0cThe important thing to note for present purposes is that Title II of the MMA (originally\ncalled the Classics Act) provides a new federal right for sound recordings fixed before\nFebruary 15, 1972. The Act includes a rolling timeline for these pre-72 sound recordings to\nenter the public domain, with sound recordings receiving protection for a period of at least\n95 years after publication.\n17 U.S. Code \xc2\xa7 1401. Unauthorized use of pre-1972 sound recordings\n(a) In General.\xe2\x80\x94\n(1) Unauthorized acts.\xe2\x80\x94\nAnyone who, on or before the last day of the applicable transition period under\nparagraph (2), and without the consent of the rights owner, engages in covered\nactivity with respect to a sound recording fixed before February 15, 1972, shall be\nsubject to the remedies provided in sections 502 through 505 and 1203 to the same\nextent as an infringer of copyright or a person that engages in unauthorized activity\nunder chapter 12.\n(2) Term of prohibition.\xe2\x80\x94\n(A) In general.\xe2\x80\x94The prohibition under paragraph (1)\xe2\x80\x94\n(i) subject to clause (ii), shall apply to a sound recording described in that\nparagraph\xe2\x80\x94\n(I) through December 31 of the year that is 95 years after the year of first\npublication; and\n(II) for a further transition period as prescribed under subparagraph (B) of\nthis paragraph; and\n(ii) shall not apply to any sound recording after February 15, 2067.\n(B) Transition periods.\xe2\x80\x94\n(i) Pre-1923 recordings.\xe2\x80\x94\nIn the case of a sound recording first published before January 1, 1923, the\ntransition period described in subparagraph (A)(i)(II) shall end on December 31 of\nthe year that is 3 years after the date of enactment of this section.\n(ii) 1923\xe2\x80\x931946 recordings.\xe2\x80\x94\nIn the case of a sound recording first published during the period beginning on\nJanuary 1, 1923, and ending on December 31, 1946, the transition period described\nin subparagraph (A)(i)(II) shall end on the date that is 5 years after the last day of\nthe period described in subparagraph (A)(i)(I).\n(iii) 1947\xe2\x80\x931956 recordings.\xe2\x80\x94\nIn the case of a sound recording first published during the period beginning on\nJanuary 1, 1947, and ending on December 31, 1956, the transition period described\nin subparagraph (A)(i)(II) shall end on the date that is 15 years after the last day of\nthe period described in subparagraph (A)(i)(I).\n(iv) Post-1956 recordings.\xe2\x80\x94\nIn the case of a sound recording fixed before February 15, 1972, that is not\ndescribed in clause (i), (ii), or (iii), the transition period described in subparagraph\n(A)(i)(II) shall end on February 15, 2067.\n\n439\n\n\x0cThe new Section 1401 also preempts certain claims that might have been made under state\ncommon law or state statutes. See Section 1401(e). Like the rights in Section 106 of the Act,\nthe new Section 1401 rights are limited by sections 107, 108, 109, 110, and 112(f) of the Act\nand subject to the Internet safe harbors in section 512. See Section 1401(f). Significantly,\nSection 1401(g) specifies that the new rights in section 1401(a) \xe2\x80\x9cshall be considered to be a\n\xe2\x80\x98law pertaining to intellectual property\xe2\x80\x99\xe2\x80\x9d for purposes of section 230 of the Communications\nAct. Thus the broad immunity from state law causes of action that Internet platforms obtain\nunder section 230 of the CDA does not apply to claims of copyright infringement for pre1972 sound recordings, just as it doesn\xe2\x80\x99t apply to other federal copyright infringement claims.\nNotice that the new section 1401 doesn\xe2\x80\x99t speak of \xe2\x80\x9cauthors\xe2\x80\x9d or \xe2\x80\x9ccopyright owners,\xe2\x80\x9d instead\nit uses the term \xe2\x80\x9crights owner.\xe2\x80\x9d For the purposes of section 1401, \xe2\x80\x9crights owner\xe2\x80\x9d means\neither \xe2\x80\x9cthe person that ha[d] the exclusive right to reproduce a sound recording under the\nlaws of any State, as of the day before the date of enactment of this section.\xe2\x80\x9d Future cases\nwill need to determine who exactly had \xe2\x80\x9chad the exclusive right to reproduce a sound\nrecording under the laws of any State\xe2\x80\x9d on October 10, 2018. The MMA does not appear to\ncontemplate that the answer might have been different in different states, but the correct\ninterpretation of this awkward definition is probably that any person who \xe2\x80\x9chad the exclusive\nright to reproduce a sound recording under the laws of any State\xe2\x80\x9d qualifies, even if they must\nshare that right with other people.\nSection 1401(l) Definitions.\nIn this section: \xe2\x80\xa6 (2) Rights owner.\xe2\x80\x94The term \xe2\x80\x9crights owner\xe2\x80\x9d means\xe2\x80\x94(A) the\nperson that has the exclusive right to reproduce a sound recording under the laws of\nany State, as of the day before the date of enactment of this section; or (B) any\nperson to which a right to enforce a violation of this section may be transferred, in\nwhole or in part, after the date of enactment of this section, under\xe2\x80\x94(i) subsections\n(d) and (e) of section 201; and (ii) section 204.\n\nThe constitutionality and wisdom of copyright term extension\nThomas Macaulay, Speeches to House of Commons on Feb. 5, 1841.\n[T]he evil effects of the monopoly are proportioned to the length of its duration.\nBut the good effects for the sake of which we bear with the evil effects are by no\nmeans proportioned to the length of its duration. A monopoly of sixty years\nproduces twice as much evil as a monopoly of thirty years, and thrice as much evil\nas a monopoly of twenty years. But it is by no means the fact that a posthumous\nmonopoly of sixty years gives to an author thrice as much pleasure and thrice as\nstrong a motive as a posthumous monopoly of twenty years. On the contrary, the\ndifference is so small as to be hardly perceptible. We all know how faintly we are\naffected by the prospect of very distant advantages, even when they are advantages\nwhich we may reasonably hope that we shall ourselves enjoy. But an advantage that\nis to be enjoyed more than half a century after we are dead, by somebody, we know\nnot by whom, perhaps by somebody unborn, by somebody utterly unconnected\nwith us, is really no motive at all to action.\n\nThe Sonny Bono Copyright Term Extension Act of 1988 extended the term of copyright\nprotection by 20 years, both prospectively and retrospectively. This law was widely decried\n\n440\n\n\x0cas \xe2\x80\x9ca classic instance of almost pure rent-seeking legislation,\xe2\x80\x9d and a triumph of special\ninterest lobbying over a diffuse and unrepresented public interest.98\nThe political economy that lead to the CTEA is neatly summarized in a forthcoming article\nby Kristelia A. Garci\xcc\x81a & Justin McCrary.\nKristelia A. Garci\xcc\x81a & Justin McCrary, A Reconsideration Of Copyright\xe2\x80\x99s Term ,\n(2019 working paper)\nThe Sonny Bono Act was introduced in 1995. Backed by the entertainment\nindustries who were led by the Disney Corporation, the bill sought an extension that\nwas both prospective and retrospective. Disney\xe2\x80\x99s Mickey Mouse copyright\xe2\x80\x94worth\n$8 billion in 1998\xe2\x80\x94was set to expire in 2003, and the company had much to gain by\nextending this revenue stream (among others). To that end, Disney\xe2\x80\x99s then-CEO\nMichael Eichner met with Senate Majority Leader Trent Lott, who shortly thereafter\nsigned on as co-sponsor of the bill. Of the thirteen sponsors of the House bill,\nDisney contributed directly to ten of them. In the Senate, Disney contributed to\neight of the twelve sponsors. Three years after its introduction, the Sonny Bono Act\nwas signed into law by President Clinton on October 27, 1998.\nBeaten but not defeated, the coalition of librarians, scholars and others who\nopposed the CTEA focused their litigation efforts on the retrospective component\nof the extension. Led by Harvard law professor Larry Lessig, the lawsuit originally\ntitled Eldred v. Reno when filed at the District Court for the District of Columbia25\nmade it to the Supreme Court as Eldred v. Ashcroft in 2002.\n\nEldred v. Ashcroft, 537 U.S. 186 (2003)\nIn 2003, the Supreme Court rejected a constitutional challenge to the copyright term\nextension act in the case of Eldred v. Ashcroft. The challengers argued that the retrospective\nextension of copyright protection was beyond Congressional power because it obviously did\nnothing to \xe2\x80\x9cpromote the progress of science and useful arts\xe2\x80\x9d and that extending existing\nterms also defied the concept of \xe2\x80\x9climited times\xe2\x80\x9d. The Supreme Court majority disagreed, for\nreasons that say more about constitutional law than the merits of the extension as a matter\nof public policy. Justices Breyer and Stevens dissented.\nGolan v. Holder, 565 U.S. 302 (2012)\nIn 2012, the Supreme Court also rejected a constitutional challenge to copyright restoration\nfor a class of foreign works in the public domain. The challenge legislation restored\nprotection to works originating abroad that did not obtain, or at some point lost, American\ncopyright protection because (1) the author failed to comply with applicable American\ncopyright formalities (such as notice or renewal), or (2) the nation in which they were first\npublished then lacked copyright relations with the United States, or (3) they are sound\nrecordings fixed before February 15, 1972.\nPetitioners challenged the constitutionality of the application of Section 514 of the Uruguay\nRound Agreements Act. The Act restored copyright status to foreign works previously in the\npublic domain by virtue of their failure to comply with United States copyright formalities.\nRobert P. Merges, One Hundred Years of Solicitude: Intellectual Property Law, 1900\xe2\x80\x932000, 88 CALIF. L. REV. 2187,\n2236 (2000).\n98\n\n441\n\n\x0cThe United States no longer imposes such formalities, but at the relevant times, publication\nwithout copyright notice and registration made a work ineligible for copyright protection in\nthe United States.\nThe law applied mainly to works first published abroad from 1923 to 1989 that had not been\neligible for copyright protection under American law. It was unclear how many works might\nbe affected, but United States register of copyrights, said in 1996 that it was \xe2\x80\x9cprobably\nnumber in the millions.\xe2\x80\x9d\nWorks eligible for restoration under the law included: films by Alfred Hitchcock, books by\nC.S. Lewis and Virginia Woolf, symphonies by Prokofiev and by Stravinsky, and paintings by\nPicasso. The law was challenged by a variety of people who had relied on the free availability\nof such works. One of the best examples of such reliance was a local community orchestra\nthat had invested in mastering works in the public domain, precisely because they were in the\npublic domain. The Petitioners\xe2\x80\x99 primary arguments were that restoring copyright violates the\n\xe2\x80\x9climited time\xe2\x80\x9d language of the United States Constitution\xe2\x80\x99s Copyright Clause, and that\nrestoring to copyright works that had passed into the public domain interferes with the\npublic\xe2\x80\x99s First Amendment rights to use, copy, and otherwise exploit public domain works as\npart of their freedom of expression.\nThe majority rejected all of the petitioners\xe2\x80\x99 arguments and upheld the constitutionality of the\nchallenged law. As Justice Ginsburg, writing for the majority, explained, although the\npurpose of copyright law is to promote the progress of science (meaning knowledge), its\nreview is quite deferential. Justice Ginsburg said (at 888):\nIn Eldred, we rejected an argument nearly identical to the one petitioners rehearse.\nThe Eldred petitioners urged that the CTEA\'s extension of existing copyrights\ncategorically fails to \xe2\x80\x9cpromote the Progress of Science,\xe2\x80\x9d because it does not\nstimulate the creation of new works. In response to this argument, we held that the\nCopyright Clause does not demand that each copyright provision, examined\ndiscretely, operate to induce new works. Rather, we explained, the Clause empowers\nCongress to determine the intellectual property regimes that, overall, in that body\'s\njudgment, will serve the ends of the Clause. And those permissible ends, we held,\nextended beyond the creation of new works.\n\nJustices Breyer and Alito took a different view.\nJustice Breyer, with whom Justice Alito joins, dissenting\nIn order \xe2\x80\x9c[t]o promote the Progress of Science\xe2\x80\x9d (by which term the Founders meant\n\xe2\x80\x9clearning\xe2\x80\x9d or \xe2\x80\x9cknowledge\xe2\x80\x9d), the Constitution\xe2\x80\x99s Copyright Clause grants Congress the\npower to \xe2\x80\x9csecur[e] for limited Times to Authors ... the exclusive Right to their ...\nWritings.\xe2\x80\x9d Art. I, \xc2\xa7 8, cl. 8. This \xe2\x80\x9cexclusive Right\xe2\x80\x9d allows its holder to charge a fee to\nthose who wish to use a copyrighted work, and the ability to charge that fee\nencourages the production of new material. In this sense, a copyright is, in\nMacaulay\xe2\x80\x99s words, a \xe2\x80\x9ctax on readers for the purpose of giving a bounty to writers\xe2\x80\x9d\xe2\x80\x94\na bounty designed to encourage new production. As the Court said in Eldred, \xe2\x80\x9cthe\neconomic philosophy behind the Copyright Clause is the conviction that\nencouragement of individual effort by personal gain is the best way to advance\npublic welfare through the talents of authors and inventors.\xe2\x80\x9d Eldred v. Ashcroft, 537\nU.S. 186, 212, n. 18 (2003).\n\n442\n\n\x0cThe statute before us, however, does not encourage anyone to produce a single new\nwork. By definition, it bestows monetary rewards only on owners of old works\xe2\x80\x94\nworks that have already been created and already are in the American public domain.\nAt the same time, the statute inhibits the dissemination of those works, foreign\nworks published abroad after 1923, of which there are many millions, including films,\nworks of art, innumerable photographs, and, of course, books\xe2\x80\x94books that (in the\nabsence of the statute) would assume their rightful places in computer-accessible\ndatabases, spreading knowledge throughout the world. See infra, at 904-906. In my\nview, the Copyright Clause does not authorize Congress to enact this statute. And I\nconsequently dissent.\nThe possibility of eliciting new production is, and always has been, an essential\nprecondition for American copyright protection. The Constitution\xe2\x80\x99s words,\n\xe2\x80\x9cexclusive Right,\xe2\x80\x9d \xe2\x80\x9climited Times,\xe2\x80\x9d \xe2\x80\x9cProgress of Science,\xe2\x80\x9d viewed through the lens\nof history underscore the legal significance of what the Court in Eldred referred to as\nthe \xe2\x80\x9ceconomic philosophy behind the Copyright Clause.\xe2\x80\x9d That philosophy\nunderstands copyright\xe2\x80\x99s grants of limited monopoly privileges to authors as private\nbenefits that are conferred for a public reason\xe2\x80\x94to elicit new creation.\nYet, as the Founders recognized, monopoly is a two-edged sword. On the one hand,\nit can encourage production of new works. In the absence of copyright protection,\nanyone might freely copy the products of an author\xe2\x80\x99s creative labor, appropriating\nthe benefits without incurring the nonrepeatable costs of creation, thereby deterring\nauthors from exerting themselves in the first place. On the other hand, copyright\ntends to restrict the dissemination (and use) of works once produced either because\nthe absence of competition translates directly into higher consumer prices or because\nthe need to secure copying permission sometimes imposes administrative costs that\nmake it difficult for potential users of a copyrighted work to find its owner and strike\na bargain. Consequently, the original British copyright statute, the Constitution\xe2\x80\x99s\nFramers, and our case law all have recognized copyright\xe2\x80\x99s resulting and necessary call\nfor balance.\n[Historical discussion omitted] The upshot is that text, history, and precedent\ndemonstrate that the Copyright Clause places great value on the power of copyright\nto elicit new production. Congress in particular cases may determine that copyright\xe2\x80\x99s\nability to do so outweighs any concomitant high prices, administrative costs, and\nrestrictions on dissemination. And when it does so, we must respect its judgment.\nBut does the Clause empower Congress to enact a statute that withdraws works from\nthe public domain, brings about higher prices and costs, and in doing so seriously\nrestricts dissemination, particularly to those who need it for scholarly, educational, or\ncultural purposes\xe2\x80\x94all without providing any additional incentive for the production\nof new material? That is the question before us. And, as I have said, I believe the\nanswer is no. Congress in this statute has exceeded what are, under any plausible\nreading of the Copyright Clause, its permissible limits.\nThe Act before us says that it \xe2\x80\x9crestores\xe2\x80\x9d American copyright to a set of works, which,\nfor the most part, did not previously enjoy American copyright protection. These\nworks had fallen into America\xe2\x80\x99s public domain, but as of the \xe2\x80\x9crestoration\xe2\x80\x9d date, they\nhad not yet fallen into the public domain of the foreign country where they\noriginated.\n443\n\n\x0cThe statute covers works originating almost anywhere outside the United States. See\n17 U.S.C. \xc2\xa7 104A(h)(3) (setting out eligibility criteria); U.S. Copyright Office, Circular\nNo. 38A: International Copyright Relations of the United States (2010). The relevant\nset of works consists primarily of works originating abroad that did not obtain, or at\nsome point lost, American copyright protection because (1) the author failed to\ncomply with applicable American copyright formalities (such as notice or renewal),\nor (2) the nation in which they were first published then lacked copyright relations\nwith the United States, or (3) they are sound recordings fixed before February 15,\n1972. \xc2\xa7 104A(h)(6)(C). A work must also satisfy other technical requirements: It must\nhave had a rightholder who was a national or resident of an eligible country on the\nday it was created; and it cannot have been published in the United States within 30\ndays of its first publication. \xc2\xa7 104A(h)(6)(D). The Act grants these works a copyright\nthat expires at the time it would have expired had the author obtained a full\nAmerican copyright term starting from the date on which the work was first\npublished (in the foreign country). \xc2\xa7 104A(a)(1)(B).\nThe Act mainly applies to works first published abroad between 1923 and 1989. It\ndoes not apply significantly to earlier works because any work published before 1921\nwould have fallen into the public domain before 1977 had it received a full American\ncopyright term, while works published between 1921 and 1923 obtained a \xe2\x80\x9crestored\xe2\x80\x9d\ncopyright that expired before the 1998 Sonny Bono Copyright Term Extension Act,\nand so could have lasted two years at most. It has less impact on more recent works\nbecause in 1989 the United States became a Berne member, abolished the copyright\nnotice requirement, and thenceforth provided prospective copyright protection\nthroughout the Berne Union.\nDespite these temporal limitations, the Act covers vast numbers of works. The first\ncategory includes works published in countries that had copyright relations with the\nUnited States during this time period, such as most of Western Europe and Latin\nAmerica, Australia, and Japan, whose authors did not satisfy American copyright\nformalities, perhaps because the author, who may not have sought an American\ncopyright, published the book abroad without proper American notice, or perhaps\nbecause the author obtained a valid American copyright but failed to renew it.\nThe second category (works that entered the public domain due to a lack of\ncopyright relations) includes, among others, all works published in Russia and other\ncountries of the former Soviet Union before May 1973 (when the U.S.S.R. joined the\nUniversal Copyright Convention (UCC)), all works published in the People\xe2\x80\x99s\nRepublic of China before March 1992 (when bilateral copyright relations between\nthe People\xe2\x80\x99s Republic and the United States were first established), all South Korean\nworks published before October 1987 (when South Korea joined the UCC), and all\nEgyptian and Turkish works published before March 1989 (when the United States\njoined Berne).\nThe third category covers all sound recordings from eligible foreign countries\npublished after February 15, 1972. The practical significance of federal copyright\nrestoration to this category of works is less clear, since these works received, and\ncontinued to receive, copyright protection under state law. See 17 U.S.C. \xc2\xa7 301(c).\n\n444\n\n\x0cApparently there are no precise figures about the number of works the Act affects,\nbut in 1996 the then-Register of Copyrights, Marybeth Peters, thought that they\n\xe2\x80\x9cprobably number in the millions.\xe2\x80\x9d\nThe provision before us takes works from the public domain, at least as of January 1,\n1996. See \xc2\xa7 104A(h)(2)(A) (setting \xe2\x80\x9crestoration\xe2\x80\x9d dates). It then restricts the\ndissemination of those works in two ways.\nFirst, \xe2\x80\x9crestored copyright\xe2\x80\x9d holders can now charge fees for works that consumers\npreviously used for free. The price of a score of Shostakovich\xe2\x80\x99s Preludes and Fugues\nfor example, has risen by a multiple of seven. And, as the Court recognizes, an\norchestra that once could perform \xe2\x80\x9cPeter and the Wolf. . . free of charge\xe2\x80\x9d will now\nhave to buy the \xe2\x80\x9cright to perform it . . . in the marketplace.\xe2\x80\x9d But for the case of\ncertain \xe2\x80\x9cderivative\xe2\x80\x9d works, \xc2\xa7 104A(d)(3), the \xe2\x80\x9crestored copyright\xe2\x80\x9d holder, like other\ncopyright holders, can charge what the market will bear. If a school orchestra or\nother nonprofit organization cannot afford the new charges, so be it. They will have\nto do without\xe2\x80\x94aggravating the already serious problem of cultural education in the\nUnited States. See Brief for Conductors Guild et al. as Amici Curiae 4-5, 7-8\n(describing the inability of many orchestras to pay for the rental of sheet music\ncovered by \xe2\x80\x9crestored copyright[s]\xe2\x80\x9d).\nSecond, and at least as important, the statute creates administrative costs, such as the\ncosts of determining whether a work is the subject of a \xe2\x80\x9crestored copyright,\xe2\x80\x9d\nsearching for a \xe2\x80\x9crestored copyright\xe2\x80\x9d holder, and negotiating a fee. Congress has tried\nto ease the administrative burden of contacting copyright holders and negotiating\nprices for those whom the statute calls \xe2\x80\x9creliance part[ies],\xe2\x80\x9d namely those who\npreviously had used such works when they were freely available in the public domain.\n\xc2\xa7 104A(h)(4). But Congress has done nothing to ease the administrative burden of\nsecuring permission from copyright owners that is placed upon those who want to\nuse a work that they did not previously use, and this is a particular problem when it\ncomes to \xe2\x80\x9corphan works\xe2\x80\x9d\xe2\x80\x94older and more obscure works with minimal commercial\nvalue that have copyright owners who are difficult or impossible to track down.\nUnusually high administrative costs threaten to limit severely the distribution and use\nof those works\xe2\x80\x94works which, despite their characteristic lack of economic value,\ncan prove culturally invaluable.\nThere are millions of such works. For example, according to European Union\nfigures, there are 13 million orphan books in the European Union (13% of the total\nnumber of books in-copyright there), 225,000 orphan films in European film\narchives, and 17 million orphan photographs in United Kingdom museums. How is\na university, a film collector, a musician, a database compiler, or a scholar now to\nobtain permission to use any such lesser known foreign work previously in the\nAmerican public domain? Consider the questions that any such individual, group, or\ninstitution usually must answer: Is the work eligible for restoration under the statute?\nIf so, who now holds the copyright\xe2\x80\x94the author? an heir? a publisher? an\nassociation? a long-lost cousin? Whom must we contact? What is the address?\nSuppose no one answers? How do we conduct a negotiation?\nTo find answers to these, and similar questions, costs money. The cost to the\nUniversity of Michigan and the Institute of Museum and Library Services, for\n\n445\n\n\x0cexample, to determine the copyright status of books contained in the HathiTrust\nDigital Library that were published in the United States from 1923 to 1963 will\nexceed $1 million.\nIt is consequently not surprising to learn that the Los Angeles Public Library has\nbeen unable to make its collection of Mexican folk music publicly available because\nof problems locating copyright owners, that a Jewish cultural organization has\nabandoned similar efforts to make available Jewish cultural music and other materials,\nor that film preservers, museums, universities, scholars, database compilers, and\nothers report that the administrative costs associated with trying to locate foreign\ncopyright owners have forced them to curtail their cultural, scholarly, or other workpreserving efforts.\nThese high administrative costs can prove counterproductive in another way. They\nwill tempt some potential users to \xe2\x80\x9csteal\xe2\x80\x9d or \xe2\x80\x9cpirate\xe2\x80\x9d works rather than do without.\nAnd piracy often begets piracy, breeding the destructive habit of taking copyrighted\nworks without paying for them, even where payment is possible. Such habits ignore\nthe critical role copyright plays in the creation of new works, while reflecting a false\nbelief that new creation appears by magic without thought or hope of compensation.\nI recognize that ordinary copyright protection also comes accompanied with\ndissemination-restricting royalty charges and administrative costs. But here the\nrestrictions work special harm. For one thing, the foreign location of restored works\nmeans higher than ordinary administrative costs. For another, the statute\xe2\x80\x99s technical\nrequirements make it very difficult to establish whether a work has had its copyright\nrestored by the statute.\nWorst of all, \xe2\x80\x9crestored copyright\xe2\x80\x9d protection removes material from the public\ndomain. In doing so, it reverses the payment expectations of those who used, or\nintended to use, works that they thought belonged to them. Were Congress to act\nsimilarly with respect to well-established property rights, the problem would be\nobvious. This statute analogously restricts, and thereby diminishes, Americans\xe2\x80\x99\npreexisting freedom to use formerly public domain material in their expressive\nactivities.\nThus, while the majority correctly observes that the dissemination-restricting harms\nof copyright normally present problems appropriate for legislation to resolve, the\nquestion is whether the Copyright Clause permits Congress seriously to exacerbate\nsuch a problem by taking works out of the public domain without a countervailing\nbenefit. This question is appropriate for judicial resolution. Indeed, unlike Eldred\nwhere the Court had to decide a complicated line-drawing question\xe2\x80\x94when is a\ncopyright term too long?\xe2\x80\x94here an easily administrable standard is available\xe2\x80\x94a\nstandard that would require works that have already fallen into the public domain to\nstay there.\nThe several, just mentioned features of the present statute are important, for they\ndistinguish it from other copyright laws. By removing material from the public\ndomain, the statute, in literal terms, \xe2\x80\x9cabridges\xe2\x80\x9d a preexisting freedom to speak. In\npractical terms, members of the public might well have decided what to say, as well\nas when and how to say it, in part by reviewing with a view to repeating, expression\nthat they reasonably believed was, or would be, freely available. Given these speech\n446\n\n\x0cimplications, it is not surprising that Congress has long sought to protect public\ndomain material when revising the copyright laws. And this Court has assumed the\nparticular importance of public domain material in roughly analogous circumstances.\nSee Graham, 383 U.S., at 6, (\xe2\x80\x9cCongress may not authorize the issuance of patents\nwhose effects are to remove existent knowledge from the public domain\xe2\x80\x9d); Kewanee\nOil Co. v. Bicron Corp., 416 U.S. 470, 484 (1974) (trade secret protection is not\nincompatible with \xe2\x80\x9cpolicy that matter once in the public domain must remain in the\npublic domain\xe2\x80\x9d); Cox Broadcasting Corp. v. Cohn, 420 U.S. 469, 496, (1975) (First\nAmendment prohibits sanctioning press for publishing material disclosed in public\ncourt documents); see also Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23,\n33 (2003) (\xe2\x80\x9cThe right to copy once a copyright has expired passes to the public\xe2\x80\x9d).\nMoreover, whereas forward-looking copyright laws tend to benefit those whose\nidentities are not yet known (the writer who has not yet written a book, the musician\nwho has not yet composed a song), when a copyright law is primarily backward\nlooking the risk is greater that Congress is trying to help known beneficiaries at the\nexpense of badly organized unknown users who find it difficult to argue and present\ntheir case to Congress. In Eldred, I thought this problem was severe. And in light of\nthe fact that Congress, with one minor exception, heard testimony only from the\nrepresentatives of existing copyright holders, who hoped that passage of the statute\nwould enable them to benefit from reciprocal treatment of American authors abroad,\nI cannot say that even here the problem, while much diminished, was nonexistent.\nI agree with the majority that, in doing so, this statute does not discriminate among\nspeakers based on their viewpoints or subject matter. But such considerations do not\nexhaust potential First Amendment problems.\nTaken together, these speech-related harms (e.g., restricting use of previously\navailable material; reversing payment expectations; rewarding rent-seekers at the\npublic\xe2\x80\x99s expense) at least show the presence of a First Amendment interest. And that\nis enough. For present purposes, I need not decide whether the harms to that\ninterest show a violation of the First Amendment. I need only point to the\nimportance of interpreting the Constitution as a single document\xe2\x80\x94a document that\nwe should not read as setting the Copyright Clause and the First Amendment at\ncross-purposes. Nor need I advocate the application here of strict or specially\nheightened review. I need only find that the First Amendment interest is important\nenough to require courts to scrutinize with some care the reasons claimed to justify\nthe Act in order to determine whether they constitute reasonable copyright-related\njustifications for the serious harms, including speech-related harms, which the Act\nseems likely to impose. \xe2\x80\xa6\nThis statute does not serve copyright\xe2\x80\x99s traditional public ends, namely the creation of\nmonetary awards that \xe2\x80\x9cmotivate the creative activity of authors,\xe2\x80\x9d Sony, 464 U.S., at\n429, \xe2\x80\x9cencourage individual effort,\xe2\x80\x9d Mazer, 347 U.S., at 219, and thereby \xe2\x80\x9cserve the\ncause of promoting broad public availability of literature, music, and the other arts,\xe2\x80\x9d\nTwentieth Century Music, 422 U.S., at 156. The statute grants its \xe2\x80\x9crestored copyright[s]\xe2\x80\x9d\nonly to works already produced. It provides no monetary incentive to produce\nanything new. Unlike other American copyright statutes from the time of the\nFounders onwards, including the statute at issue in Eldred, it lacks any significant\ncopyright-related quid pro quo.\n447\n\n\x0cThe majority seeks to avoid this awkward fact by referring to past congressional\npractice that mostly suggests that Congress may provide new or increased protection\nboth to newly created and to previously created, works. I do not dispute that\ncopyright power. Insofar as such a statute does the former, i.e., extends protection to\nnewly created material, it embodies copyright\xe2\x80\x99s traditional justification\xe2\x80\x94eliciting new\nproduction. And I do not doubt that Congress may then also include existing works\nwithin the scope of, say, increased protection for equitable and administrative\nreasons. See Eldred, 537 U.S. at 204, 214-215 (describing equitable reasons for\napplying newly extended copyright terms to future and existing copyrights alike). The\nstatute before us, however, does not directly elicit any new production.\nThe other statutes to which the majority refers are private bills, statutes retroactively\ngranting protection in wartime, or the like. But special circumstances, like wars,\nhurricanes, earthquakes, and other disasters, prevent the realization in practice of a\nreasonable expectation of securing or maintaining a preexisting right. Private bills are\ndesigned to provide special exceptions for comparable equitable reasons. To find in\nthese laws an important analogy to the present law, which for the most part covers\nworks that the author did not expect to protect in America (and often did not\nparticularly want to protect), seems somewhat farfetched.\nIn fact, Congressional practice shows the contrary. It consists of a virtually unbroken\nstring of legislation preventing the withdrawal of works from the public domain.\nThe majority makes several other arguments. First, it argues that the Clause does not\nrequire the \xe2\x80\x9ccreation of at least one new work,\xe2\x80\x9d but may instead \xe2\x80\x9cpromote the\nProgress of Science\xe2\x80\x9d in other ways. And it specifically mentions the \xe2\x80\x9cdissemination\nof existing and future works\xe2\x80\x9d as determinative here. The industry experts to whom\nthe majority refers argue that copyright protection of already existing works can help,\nsay, music publishers or film distributers raise prices, produce extra profits and\nconsequently lead them to publish or distribute works they might otherwise have\nignored. But ordinarily a copyright\xe2\x80\x94since it is a monopoly on copying\xe2\x80\x94restricts\ndissemination of a work once produced compared to a competitive market. And\nsimply making the industry richer does not mean that the industry, when it makes an\nordinary forward-looking economic calculus, will distribute works not previously\ndistributed. The industry experts might mean that temporary extra profits will lead\nthem to invest in the development of a market, say, by advertising. But this kind of\nargument, which can be made by distributers of all sorts of goods, ranging from kiwi\nfruit to Swedish furniture, has little if anything to do with the nonrepeatable costs of\ninitial creation, which is the special concern of copyright protection.\nMoreover, the argument proves too much. It is the kind of argument that the\nStationers\xe2\x80\x99 Company might well have made and which the British Parliament rejected.\nCf. Patterson 154-155 (describing failed booksellers\xe2\x80\x99 bill seeking protection from\nforeign competition through an extension of the copyright term). It is the kind of\nargument that could justify a legislature\xe2\x80\x99s withdrawing from the public domain the\nworks, say, of Hawthorne or of Swift or for that matter the King James Bible in\norder to encourage further publication of those works; and, it could even more easily\njustify similar action in the case of lesser known early works, perhaps those of the\nVenerable Bede. The Court has not, to my knowledge, previously accepted such a\nrationale\xe2\x80\x94a rationale well removed from the special economic circumstances that\n448\n\n\x0csurround the nonrepeatable costs of the initial creation of a \xe2\x80\x9cWriting.\xe2\x80\x9d And I fear\nthat doing so would read the Copyright Clause as if it were a blank check made out\nin favor of those who are not themselves creators.\nIt is not surprising that the copyright holders\xe2\x80\x99 representatives who appeared before\nCongress did not emphasize this argument. Rather, they focused on the Berne\nConvention itself. By that time, Congress had already protected all new works of\nBerne members. But it had not provided additional protection to preexisting foreign\nworks that were then in the American public domain. Industry witnesses testified\nthat withdrawing such works from the American public domain would permit\nforeign copyright owners to charge American consumers more for their products;\nand that, as a result, the United States would be able to persuade foreign countries to\nallow American holders of preexisting copyrights to charge foreign customers more\nmoney for their products.\nThis argument, whatever its intrinsic merits, is an argument that directly concerns a\nprivate benefit: how to obtain more money from the sales of existing products. It is\nnot an argument about a public benefit, such as how to promote or to protect the\ncreative process.\nThird, the majority points out that the statute \xe2\x80\x9cgives [authors] nothing more than the\nbenefit of their labors during whatever time remains before the normal copyright\nterm expires.\xe2\x80\x9d But insofar as it suggests that copyright should in general help authors\nobtain greater monetary rewards than needed to elicit new works, it rests upon\nprimarily European, but not American, copyright concepts.\nFourth, the majority argues that this statutory provision is necessary to fulfill our\nBerne Convention obligations. The Treaty, in Article 18, says that the \xe2\x80\x9cConvention\nshall apply to all works which, at the moment of its coming into force [i.e., 1989 in\nthe case of the United States] have not yet fallen into the public domain in the\ncountry of origin through the expiry of the term of protection.\xe2\x80\x9d Berne Convention\nfor the Protection of Literary and Artistic Works, Art. 18(1), Sept. 9, 1886, as revised\nat Stockholm on July 14, 1967, 828 U.N.T.S. 221, 251. The majority and\nGovernment say that this means we must protect the foreign works at issue here.\nAnd since the Berne Convention, taken as a whole, provides incentives for the\ncreation of new works, I am willing to speculate, for argument\xe2\x80\x99s sake, that the statute\nmight indirectly encourage production of new works by making the United States\xe2\x80\x99\nplace in the international copyright regime more secure.\nStill, I cannot find this argument sufficient to save the statute. For one thing, this is a\ndilemma of the Government\xe2\x80\x99s own making. The United States obtained the benefits\nof Berne for many years despite its failure to enact a statute implementing Article 18.\nBut in 1994, the United States and other nations signed the Agreement on TradeRelated Aspects of Intellectual Property Rights, which enabled signatories to use\nWorld Trade Organization dispute resolution mechanisms to complain about other\nmembers\xe2\x80\x99 Berne Convention violations. But at that time the Government, although\nit successfully secured reservations protecting other special features of American\ncopyright law, made no effort to secure a reservation permitting the United States to\nkeep some or all restored works in the American public domain. And it made no\neffort to do so despite the fact that Article 18 explicitly authorizes countries to\n\n449\n\n\x0cnegotiate exceptions to the Article\xe2\x80\x99s retroactivity principle. See Art. 18(3), ibid. (\xe2\x80\x9cThe\napplication of [the retroactivity] principle shall be subject to any provisions contained\nin special conventions to that effect existing or to be concluded between countries of\nthe Union\xe2\x80\x9d (emphasis added)).\nFor another thing, the Convention does not require Congress to enact a statute that\ncauses so much damage to public domain material. Article 18(3) also states that \xe2\x80\x9cthe\nrespective countries shall determine, each in so far as it is concerned, the conditions\nof application of this principle.\xe2\x80\x9d Congress could have alleviated many of the costs\nthat the statute imposes by, for example, creating forms of compulsory licensing,\nrequiring \xe2\x80\x9crestored copyright\xe2\x80\x9d holders to provide necessary administrative\ninformation as a condition of protection, or insisting upon \xe2\x80\x9creasonable royalties.\xe2\x80\x9d\nTo say this is not to criticize the Convention or our joining it. Rather, it is to argue\nthat the other branches of Government should have tried to follow the Convention\nand in particular its provisions offering compliance flexibility. The fact that the\nstatute has significant First Amendment costs is relevant in this respect, for that\nAmendment ordinarily requires courts to evaluate less restrictive, alternative\npossibilities. Doing so here, reveals that neither Congress nor the Executive took\nadvantage of less-restrictive methods of compliance that the Convention itself\nprovides. And that fact means that the Convention cannot provide the statute with a\nconstitutionally sufficient justification that is otherwise lacking.\nThe fact that, by withdrawing material from the public domain, the statute inhibits an\nimportant preexisting flow of information is sufficient, when combined with the\nother features of the statute that I have discussed, to convince me that the Copyright\nClause, interpreted in the light of the First Amendment, does not authorize Congress\nto enact this statute.\nI respectfully dissent from the Court\xe2\x80\x99s contrary conclusion.\nNotes and questions\n(1) In Golan v. Holder, 565 U.S. 302 (2012), the Supreme Court upheld the constitutionality of\nSection 514 of the Uruguay Round Agreements Act which restored copyright status to\nforeign works previously in the public domain in the United States. The majority held that\nthe \xe2\x80\x9climited time\xe2\x80\x9d language of Copyright Clause did not preclude the extension of copyright\nprotections to works previously in the public domain. It held further that restoring to\ncopyright works that had passed into the public domain did not violate the First\nAmendment.\n(2) Why does Justice Breyer conclude that \xe2\x80\x9cthe Copyright Clause, interpreted in the light of\nthe First Amendment\xe2\x80\x9d should not allow for extending copyright protection to works\npreviously in the public domain? Are his objections grounded in copyright policy,\nConstitutional theory, both, or neither?\n\n450\n\n\x0cOrphan works\nThe U.S. Copyright Office uses the term \xe2\x80\x9corphan works\xe2\x80\x9d to describe the situation where the\nowner of a copyrighted work cannot be identified and located by someone who wishes to\nmake use of the work in a manner that requires permission of the copyright owner.99\nDetermining whether a work is an \xe2\x80\x9corphan work\xe2\x80\x9d requires some context. In any given\nsituation, opinions will vary as to how much effort a potential user should be expected to\nexert to track down missing rightsholders and negotiate with them. The owners of some\ncopyrighted works will never be identifiable with reasonable certainty either because initial\nauthorship is ambiguous or because the copyright ownership has been passed along a chain\nof title too complex to unravel. In contrast to these \xe2\x80\x9cpure orphans,\xe2\x80\x9d there are \xe2\x80\x9ccontextual\norphans,\xe2\x80\x9d works for which the copyright owner could be found, but for which the expenses\nof so doing is prohibitive or unjustifiable based on a cost-benefit analysis. Potential users of\nboth pure and contextual orphan works often choose not to use or display such works out of\nconcern that they may be subject to injunctions and statutory damages if the owner of an\norphan work subsequently comes into the picture and sues for infringement.\nTracing the ownership of copyright requires more than just tracking down the original\nauthor\xe2\x80\x94copyrights are transferred by the operation of certain statutory provisions, private\ncontracts, corporate mergers, divestitures and bankruptcies, and as part of estates. As the\nLibrary Copyright Alliance notes:\nA person seeking permission to use an older work needs to untangle the\ncomplicated history of mergers and acquisitions of the original publisher to identify\nthe corporation that now might own the rights to the work. This corporation,\nhowever, might not have adequate records concerning all the works to which it\nholds title. And since the person typically is seeking to use the work for at most\nnominal compensation, the corporation has no incentive to invest adequate\nresources in locating the records concerning the work.100\n\nThe orphan works problem is particularly acute for users who need to assemble large\ncollections of rights (library digitization and archive digitization are two good examples) and\nthe problem is exacerbated by:\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\nthe elimination of formalities such as notice and registration\ncopyright term extension\nretroactive restoration of copyright in works previously in the public domain\n\nBy uniformly extending copyright far beyond the commercial lifespan of almost all\ncopyrighted works, we have increased the transaction costs of previously unforeseen uses for\nno actual benefit in terms of the copyright\xe2\x80\x99s incentive value.\n\nSee U.S. Copyright Office, Report on\nhttp://www.copyright.gov/orphan/orphan-report.pdf.\n99\n\nOrphan\n\nWorks\n\n15\n\n(2006),\n\navailable\n\nat\n\nMiriam M. Nisbet, Orphan Works Reply Comment, U.S. Copyright Office 2 (Mar. 25, 2005), http://\nwww.copyright.gov/orphan/comments/OW0658-LCA.pdf.\n100\n\n451\n\n\x0cDoes the fair use doctrine justify the use of orphan works?\nIt seems unlikely that courts would accept that the use of orphan works is always fair use,\nbut there are definitely some circumstances in which the fact that a work was an orphan\nwork will be an essential element of a claim to fair use.\nOrphan works example 1: the Civil Rights Movement Veterans Website\nBruce Hartford, the webmaster of the Civil Rights Movement Veterans Website presented this\nfascinating story to Berkeley Law School\xe2\x80\x99s \xe2\x80\x9cOrphan works and Mass Digitization\xe2\x80\x9d\nconference on April 12, 2012. The Civil Rights Movement Veterans Website recounts the\nhistory of the civil rights movement:\nThis website is created by Veterans of the Southern Freedom Movement (19511968). It is where we tell it like it was, the way we lived it, the way we saw it, the way\nwe still see it. With a few minor exceptions, everything on this site was written,\ncreated, or spoken by Movement activists who were direct participants in the events\nthey chronicle.101\n\nMuch of the material on the Civil Rights Movement Veterans website is used with\npermission or requires no permission because it is in the public domain. However, according\nto Bruce Hartford, that still leaves a significant proportion of material that he would classify\nas orphan works. When Hartford uses the term orphan works he means (i) material that was\noriginally copyrighted by an organization which no longer exists and made no provision for\nits copyrights upon dissolution; (ii) material where the copyright owner cannot be found; (iii)\nor material where the identity of the copyright owner was always unknown.\nThe photo below of James Forman (October 4, 1928 \xe2\x80\x93 January 10, 2005), an American Civil\nRights leader active in the Student Nonviolent Coordinating Committee.\n\n101\n\nCivil Rights Movement Veterans Website, http://www.crmvet.org (last visited April 30, 2013.)\n\n452\n\n\x0cFigure 14 Orphan works example: image of civil rights leader James Forman available at the Civil\nRights Movement Veterans Website\n\nAs Hartford described it:\nThe camera was smuggled into the jail, given to an unknown prisoner who clicked\nthe button and took the picture. Under copyright law, as I am told, the copyright to\nthe picture is owned by the unknown prisoner who pressed the button on the\ncamera, who then gave it back to whoever smuggled the camera into the prison, to\nsmuggle it out of the prison.\nNow I know this is off topic, but I am just going to say, some of us are a little\nannoyed about this stupid rule that the person who presses the button totally owns\nthe rights and those of us who are risking our lives to do whatever it was that they\nwere taking the picture of have no say so in whatever happens to that and they can\nmake lots of money on it and we can look and weep.\n\nOrphan works example 2: Trove, The National Library of Australia\xe2\x80\x99s Digital Archive\nTrove is the National Library of Australia\xe2\x80\x99s primary vehicle to assist users to access digital\ncontent held by collecting institutions across Australia. Trove is used by tens of thousands of\nAustralians every day. In July 2008, Trove opened up Australian newspaper articles\npublished from the 1800s to 1955 to full-text searching and display.\n\n453\n\n\x0cFigure 15 Newspaper Image from Trove (The Sydney Morning Herald, Page 1, Thursday, February 1,\n1951)\n\nTrove goes beyond 1955 by agreement with newspaper publishers, but for anything prior to\n1955 the National Library of Australia and the libraries in its network proceed on the\nassumption that there is no requirement to obtain permission.102\nThe National Library of Australia does not embrace the term \xe2\x80\x9corphan works\xe2\x80\x9d, but it clearly\nhas an implicit orphan works policy. In selecting 1955 as the cut-off date, the National\nLibrary of Australia has adopted what they would call a sensible risk management policy and\nothers would recognize as an orphan works policy. Under Australian copyright law\n(Australian Copyright Act 1968), the date on which the copyright in a literary work expires\ndepends on the date of publication and the date of the death of the author.\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\nIf a literary work was published in the lifetime of the author, and that author died before\nJanuary 1, 1957, the work is out of copyright.\nAny literary work published in the lifetime of an author who died on or after January 1,\n1957 and before 2005, will be out of copyright 50 years after that author\xe2\x80\x99s death.\nIf a work was first published anonymously and the identity of the author cannot be\nascertained on reasonable inquiry, the period of copyright protection is measured from the\nyear of publication and not the year of the author\xe2\x80\x99s death. (See Section 34 of the Australian\nCopyright Act 1968).\n\nSee e.g., NLA, Selection Policy \xe2\x80\x9cThe newspapers must not have copyright restrictions i.e. anything before\n1955 is suitable\xe2\x80\x9d. http://www.nla.gov.au/content/selection-policy last visited May 2, 2013.\n102\n\n454\n\n\x0c\xe2\x80\xa2\n\nThe law relating to photographs in Australia is a little easier: any photograph taken before\n1955 is in the public domain. (See Section 33 of the Australian Copyright Act 1968).\n\nNewspapers contain works by many different authors. For each individual article in a\nnewspaper, the period of copyright protection is measured from the death of the author,\neven if the author assigned the copyright to the publisher.\nWhen Trove made Australian newspapers from the early 1950s available online in 2008,\nsome of those individual articles were still protected by copyright, but no one knew\nspecifically which ones. For example, if a work was published in 1953 and the author died in\n1973, then the copyright would not expire until 2023. This information is not unknowable in\nmost cases, but acquiring that knowledge would be time consuming and expensive.\nBefore he retired in 2011, Warwick Cathro was the Assistant Director-General of Resource\nSharing and Innovation at the National Library of Australia. Warwick was a pioneer in the\ndelivery of innovative network services to the Australian library community and is\nconsidered the founder of Trove. I spoke to Warwick about the library\xe2\x80\x99s approach to\nnewspaper digitization and he said:\nThe NLA thus took a \xe2\x80\x9crisk management\xe2\x80\x9d approach to copyright issues in its\nnewspaper digitization program.\nWe did this because of the manifest public benefit in digitising this content. We\nnever attempted to clear copyright in individual articles; how could we ever do this\nfor tens of millions of articles?\nTo my knowledge, in the five years since this content has been made available\nonline, not one copyright owner has objected. If any were to do so the NLA would\ndiscuss the purpose of its digitization program and seek permission to include the\ncreator\xe2\x80\x99s work in the newspaper database. If this could not be negotiated the NLA\nwould take down the item or article in question.103\n\nNotes and questions\n(1) Is displaying the photo of James Forman on the Civil Rights Movement Veterans\nWebsite fair use? Is reproducing the photo of James Forman in these Extended Readings on\nCopyright fair use? If the National Library of Australia\xe2\x80\x99s policy was judged by American fair\nuse standards, would it pass muster?\n(2) For a broader discussion of these issues, see Jennifer M. Urban, How Fair Use Can Help\nSolve The Orphan Works Problem, 27 Berkeley Technology Law Journal 1379 (2012).\n\nLegislative responses to the orphan works problem in the European\nUnion\nDirective 2012/28/EU of the European Parliament and the Council of 25 October 2012 on\ncertain permitted uses of orphan works, 2012 OJ (L 299)5. In addition, the Digital Single\n\n103\n\nEmail exchange between Matthew Sag and Warwick Cathro, April 22, 2013 to May 2, 2013.\n\n455\n\n\x0cMarket Directive of 2019 now also addresses the issue of orphan works.104 The DSM\nDirective focuses on the use of out-of-commerce works by cultural heritage institutions and\nit provides that all Member States must allow cultural heritage institutions to make available,\nfor non-commercial purposes, out-of-commerce works or other subject matter that are\npermanently in their collections under certain conditions. The key provisions of the DSM\nare extracted below.\nOut-of-commerce works and other subject matter\nArticle 8\nUse of out-of-commerce works and other subject matter by cultural heritage\ninstitutions\n1. Member States shall provide that a collective management organisation, in\naccordance with its mandates from rightholders, may conclude a non-exclusive\nlicence for non-commercial purposes with a cultural heritage institution for the\nreproduction, distribution, communication to the public or making available to the\npublic of out-of-commerce works or other subject matter that are permanently in\nthe collection of the institution, irrespective of whether all rightholders covered by\nthe licence have mandated the collective management organisation, on condition\nthat:\n(a) the collective management organisation is, on the basis of its mandates,\nsufficiently representative of rightholders in the relevant type of works or other\nsubject matter and of the rights that are the subject of the licence; and\n(b) all rightholders are guaranteed equal treatment in relation to the terms of the\nlicence.\n2. Member States shall provide for an exception or limitation to the rights provided\nfor in [various directives], in order to allow cultural heritage institutions to make\navailable, for non-commercial purposes, out-of-commerce works or other subject\nmatter that are permanently in their collections, on condition that:\n(a) the name of the author or any other identifiable rightholder is indicated, unless\nthis turns out to be impossible; and\n(b) such works or other subject matter are made available on non-commercial\nwebsites.\n3. Member States shall provide that the exception or limitation provided for in\nparagraph 2 only applies to types of works or other subject matter for which no\ncollective management organisation that fulfils the condition set out in point (a) of\nparagraph 1 exists.\n4. Member States shall provide that all rightholders may, at any time, easily and\neffectively, exclude their works or other subject matter from the licensing\nmechanism set out in paragraph 1 or from the application of the exception or\nlimitation provided for in paragraph 2, either in general or in specific cases,\nincluding after the conclusion of a licence or after the beginning of the use\nconcerned.\n\nThe Directive on Copyright in the Digital Single Market (DSM Directive) was approved by the European\nParliament on 26 March 2019. The directive will become law in the European Union when it is approved by\nthe European Council (a vote scheduled for 9 April 2019).\n104\n\n456\n\n\x0c5. A work or other subject matter shall be deemed to be out-of-commerce when it\ncan be presumed in good faith that the whole work or other subject matter is not\navailable to the public through customary channels of commerce, after a reasonable\neffort has been made to determine whether it is available to the public.\nMember States may provide for specific requirements, such as a cut-off date, to\ndetermine whether works and other subject matter can be licensed in accordance\nwith paragraph 1 or used under the exception or limitation provided for in\nparagraph 2. Such requirements shall not extend beyond what is necessary and\nreasonable, and shall not preclude being able to determine that a set of works or\nother subject matter as a whole is out-of-commerce, when it is reasonable to\npresume that all works or other subject matter are out-of-commerce.\n6. Member States shall provide that the licences referred to in paragraph 1 are to be\nsought from a collective management organisation that is representative for the\nMember State where the cultural heritage institution is established.\n7. This Article shall not apply to sets of out-of-commerce works or other subject\nmatter if, on the basis of the reasonable effort referred to in paragraph 5, there is\nevidence that such sets predominantly consist of:\n(a) works or other subject matter, other than cinematographic or audiovisual works,\nfirst published or, in the absence of publication, first broadcast in a third country\n(b) cinematographic or audiovisual works, of which the producers have their\nheadquarters or habitual residence in a third country; or\n(c) works or other subject matter of third country nationals, where after a reasonable\neffort no Member State or third country could be determined pursuant to points (a)\nand (b).\nBy way of derogation from the first subparagraph, this Article shall apply where the\ncollective management organisation is sufficiently representative, within the meaning\nof point (a) of paragraph 1, of rightholders of the relevant third country.\nArticle 9 Cross-border uses\n1. Member States shall ensure that licences granted in accordance with Article 8 may\nallow the use of out-of-commerce works or other subject matter by cultural heritage\ninstitutions in any Member State.\n2. The uses of works and other subject matter under the exception or limitation\nprovided for in Article 8(2) shall be deemed to occur solely in the Member State\nwhere the cultural heritage institution undertaking that use is established.\nArticle 10 Publicity measures\n1. Member States shall ensure that information from cultural heritage institutions,\ncollective management organisations or relevant public authorities, for the purposes\nof the identification of the out-of-commerce works or other subject matter, covered\nby a licence granted in accordance with Article 8 (1), or used under the exception or\nlimitation provided for in Article 8(2), as well as information about the options\navailable to rightholders as referred to in Article 8(4), and, as soon as it is available\nand where relevant, information on the parties to the licence, the territories covered\nand the uses, is made permanently, easily and effectively accessible on a public single\n\n457\n\n\x0conline portal from at least six months before the works or other subject matter are\ndistributed, communicated to the public or made available to the public in\naccordance with the licence or under the exception or limitation.\nThe portal shall be established and managed by the European Union Intellectual\nProperty Office in accordance with Regulation (EU) No 386/2012.\n2. Member States shall provide that, if necessary for the general awareness of\nrightholders, additional appropriate publicity measures are taken regarding the ability\nof collective management organisations to license works or other subject matter in\naccordance with Article 8, the licences granted, the uses under the exception or\nlimitation provided for in Article 8(2) and the options available to rightholders as\nreferred to in Article 8(4).\nThe appropriate publicity measures referred to in the first subparagraph of this\nparagraph shall be taken in the Member State where the licence is sought in\naccordance with Article 8(1) or, for uses under the exception or limitation provided\nfor in Article 8(2), in the Member State where the cultural heritage institution is\nestablished. If there is evidence, such as the origin of the works or other subject\nmatter, to suggest that the awareness of rightholders could be more efficiently raised\nin other Member States or third countries, such publicity measures shall also cover\nthose Member States and third countries.\nArticle 11 Stakeholder dialogue\nMember States shall consult rightholders, collective management organisations and\ncultural heritage institutions in each sector before establishing specific requirements\npursuant to Article 8(5), and shall encourage regular dialogue between representative\nusers\' and rightholders\' organisations, including collective management\norganisations, and any other relevant stakeholder organisations, on a sector-specific\nbasis, to foster the relevance and usability of the licensing mechanisms set out in\nArticle 8(1) and to ensure that the safeguards for rightholders referred to in this\nChapter are effective.\n\nThe effect of long copyright terms on the availability of older works\nIn Eldred v. Ashcroft, 537 U.S. 186, 207 (2003), the majority of the Supreme Court gave some\ncredence to \xe2\x80\x9cprojections that longer terms would encourage copyright holders to invest in\nthe restoration and public distribution of their works.\xe2\x80\x9d The argument here is that the\nabsence of copyright protection might impair incentives to invest in maintaining and\nexploiting these works that have fallen into the public domain.105\nPaul Heald has empirically tested this under-exploitation thesis in a number of studies. In a\nstudy of bestselling novels from 1913 to 1932, Heald found that that public-domain status\nsignificantly increased the chance that a book would be in print and increased the number of\npublishers of it. 106 Similarly, in a follow up study Heald and his coauthor Christopher\nSee e.g. William M. Landes & Richard A. Posner, Indefinitely Renewable Copyright, 70 U. CHI. L. REV. 471, 475\n(2003).\n105\n\nPaul J. Heald, Property Rights and the Efficient Exploitation of Copyrighted Works: An Empirical Analysis of\nCopyrighted and Public Domain Fiction Bestsellers, 92 MINN. L. REV. 1031 (2008).\n106\n\n458\n\n\x0cBuccafusco found the same effect for audio books: i.e., being in the public domain made a\nmodern audiobook release significantly more likely, not less.107 In a different study, Heald\ntook a random sample of 2,266 new books available on Amazon during the fall of 2012 and\nsorted them by the decade of the original publication date for the corresponding title. Heald\nfound that editions of books in the public domain (those published prior to 1923)\nconstituted 72 percent of the total, while editions of titles still under copyright constitute 28\npercent. Adjusting the figures to take into account\nfact that\noneWorks\npublicDisappeared\ndomain title could\nHowthe\nCopyright\nKeeps\n841\nbe published by more than one publisher, Heald produced the following graph of titles on\nAmazon\n2012 by year\nof firsttitles\npublication:\nFigure\n2: inEstimated\nAmazon\nby percent per decade.\n\nNote: Because Amazon only tracks the number of editions it sells (one per ISBN), it does not know the number of titles it\nThe figure\nclearly shows\na sharp\ndrop\navailability\nworks\ncross\nthe line\nfrom requires\noffers.\nBooks frequently\nare published\nin more\nthanoff\none in\nedition;\nestimatingonce\nthe number\nof titles\navailable\non Amazon\n108\ndividing\nnumber to\nof editions\nin the random\nsample\nby the\nnumber\nof editions\nper title.\nThe estimate\ngiven in terms\npublic the\ndomain\nin-copyright\n(which\nwas\nin average\n1923 at\nthe time\nHeald\ncollected\nthisisdata.)\nof the percentage of titles likely available on Amazon from each listed decade, with adjustments between decades based on the\nratio\nof editions\nto titles for books initially published within each decade.\nAs Heald\nsummarizes:\n\nIn a world without copyright, one would expect a fairly smoothly downward sloping\ncurve from the decade 2000\xe2\x80\x932010 to the decade of 1800\xe2\x80\x931810 based on the\nthat works\ngenerally\nbecome\nless Out\npopular\nas they\nage edition\n(and therefore\nare ISBN).\neditionsassumption\nand 401 ISBNs)\nthan\nLorimer\xe2\x80\x99s\nA Wife\nof Egypt\n(one\nand one\nless\ndesirable\nto\nmarket).\nIf\nage\nwere\nthe\nonly\nfactor,\none\nwould\nexpect\nto\nsee\nfewer\nNonetheless, the distribution of public-domain to copyrighted titles is quite dramatic, even\ntitles available from each successively older decade. Instead, the curve declines\nafter dividing\nby four, a likely inflated figure.\nsharply and quickly, and then rebounds significantly for books currently in the\nInpublic\na world\nwithout\ncopyright,\none\nwould\nexpect\na fairly\nsmoothly\ndomain\ninitially\npublished\nbefore\n1923.\nSince\nage should\nbe a downward\nfactor that sloping\ncurve from\nthe decade\n2000\xe2\x80\x932010\nto the\ndecadeconclusion\nof 1800\xe2\x80\x931810\nthat\ndepresses\navailability,\nthe most\nplausible\nfrombased\nthe on\ndatathe\nis assumption\nthat the\nexpiration become\nof copyright\nolderasworks\nA corollary\nhypothesis\nalso\nworks generally\nlessmakes\npopular\ntheyreappear.\nage (and\ntherefore\nare lessisdesirable\nto\n109\nsupported\nby\nthe\ndata:\ncopyright\nhelps\nmake\nbooks\ndisappear.\nmarket). If age were the only factor, one would expect to see fewer titles available from each\nsuccessively\ndecade.\nInstead,\nthe of\ncurve\ndeclines\nand100\nquickly,\nthen\nHeald found older\na similar\npattern\nin the age\nmusical\nworkssharply\nin the top\nhighestand\ngrossing\n110\nrebounds\nsignificantly\nfor\nbooks\ncurrently\nin\nthe\npublic\ndomain\ninitially\npublished\nbefore\nfilms of all time.\n1923. Since age should be a factor that depresses availability, the most plausible conclusion\nNotesthe\nanddata\nquestions:\nfrom\nis that the expiration of copyright makes older works reappear. A corollary\nhypothesis\nis\nalso\nsupported\nthe data:\ncopyright\nbooks disappear.\n(1) It is very hard to\nthink of by\na rational\nargument\nforhelps\nthe 95make\nyear copyright\nterm that applies\nAgemade\nseems\nbe or\nvery\nboth the\nof formula.\npost-1923If books\nstillwriting\nunder\nto works\nfortohire\nto relevant\nthe life ofwithin\nthe author\nplussubset\n70 years\nyou were\ncopyright and the subset of pre-1923 books in the public domain. Note, however, the\nsteeper decline in the number of copyrighted books over time: 2000\xe2\x80\x932010 (254 titles)\n107 Christopher Buccafusco & Paul J. Heald, Do Bad Things Happen When Works Enter the Public Domain?:\nto\nthe 1990s (109 titles) to the 1980s (29 titles). This is not a gently sloping downward\nEmpirical Tests of Copyright Term Extension, 28 Berkeley Tech. L.J. 1, 10\xe2\x80\x9312 (2013).\ncurve! Publishers seem unwilling to sell their books on Amazon for more than a few\n108 Paul J. Heald, How Copyright Keeps Works Disappeared, 11(4) Journal Of Empirical Legal Studies, 829 (2014).\nyears\nafter their initial publication. Section IV discusses business models, tax laws,\n109 Id. at\n841. law that help explain why new editions of books disappear; copyright law\nand\ncase\n110 Id. deters their reappearance until the copyright expires. On the left side of Figure 2,\nthen\nbefore 1920, the decline presents a gentler time-sensitive downward sloping curve. The\ndifference in the rate of decline between the public-domain subset and the copyrighted\n459for marketing books that are less than 20\nsubset demonstrates publishers\xe2\x80\x99 preferences\nyears old.\nFigure 2 is, of course, somewhat misleading because it fails to account for the differ-\n\n\x0con a blank slate, what term of copyright would you propose? What theory or perspective on\ncopyright law does your answer reflect?\n\n460\n\n\x0c13. COPYRIGHT AND INDUSTRIAL DESIGN\n\nDifferent Approaches to Functional Art\nFigure 16 Screenshot of MoMA Website (March 8, 2018)\n\nThere is no question that copyright protects drawings, paintings, and sculptures. However,\nwhen aesthetic and creative choices are embodied in utilitarian or useful articles, such as the\nshape of a chair or the design of a piece of consumer electronics, the appropriate scope of\ncopyright protection is a point of contention.\nConsider, for example, the Aeron office chair designed in 1992 by Don Chadwick and Bill\nStumpf. One of America\xe2\x80\x99s best-selling and most recognizable chairs in the early late 1990\xe2\x80\x99s\nand 2000\xe2\x80\x99s, the Aeron chair is also featured in the Museum of Modern Art\xe2\x80\x99s permanent\ncollection. Is the chair a functional object, an artistic design, or both?\nThe European tradition of intellectual property protection draws a distinction between\n\xe2\x80\x9cartistic and literary works of authorship\xe2\x80\x9d on the one hand and \xe2\x80\x9cindustrial property\xe2\x80\x9d on the\nother. Around the world, industrial designs are protected, variously, under sui generis design\nright regimes, under as special types of patents, and/or under the umbrella of copyright.\nArticles 25 and 26 of the TRIPs Agreement require the protection of industrial designs for a\nminimum period of 10 years.\nTRIPs Article 25(1)\nMembers shall provide for the protection of independently created industrial\ndesigns that are new or original. Members may provide that designs are not new or\noriginal if they do not significantly differ from known designs or combinations of\nknown design features. Members may provide that such protection shall not extend\nto designs dictated essentially by technical or functional considerations.\nTRIPs Article 26\n(1) The owner of a protected industrial design shall have the right to prevent third\nparties not having the owner\xe2\x80\x99s consent from making, selling or importing articles\nbearing or embodying a design which is a copy, or substantially a copy, of the\nprotected design, when such acts are undertaken for commercial purposes.\n\n461\n\n\x0c(3) The duration of protection available shall amount to at least 10 years.\n\nThe Berne Convention (Paris 1971) requires that member nations protect \xe2\x80\x9cevery production\nin the literary, scientific and artistic domain\xe2\x80\x9d as a literary work. However, Article 2(7) of the\nBerne Convention leaves it up to member countries to determine the extent to which\ncopyright law should apply to \xe2\x80\x9cworks of applied art and industrial designs and models, as\nwell as the conditions under which such works, designs and models shall be protected.\xe2\x80\x9d But\nnote that subsection 7 also provides that if a country has no special protection for designs\nand models, they must be protected as artistic works.\nBerne Convention (Paris 1971) Article 2\n(1) The expression \xe2\x80\x9cliterary and artistic works\xe2\x80\x9d shall include every production in the\nliterary, scientific and artistic domain, whatever may be the mode or form of its\nexpression \xe2\x80\xa6\n(7) \xe2\x80\xa6 it shall be a matter for legislation in the countries of the Union to determine\nthe extent of the application of their laws to works of applied art and industrial\ndesigns and models, as well as the conditions under which such works, designs and\nmodels shall be protected. Works protected in the country of origin solely as designs\nand models shall be entitled in another country of the Union only to such special\nprotection as is granted in that country to designs and models; however, if no such\nspecial protection is granted in that country, such works shall be protected as artistic\nworks.\n\nAccordingly, the TRIPs Agreement and the Berne Convention require some type of\nprotection for applied art and industrial design, but they leave considerable discretion open\nto member nations.\nDesign Patents in the United States\nIn the United States, the ornamental design of a functional item is eligible for a design patent\nas long as it meets the threshold requirements of novelty and non-obviousness.\n35 U.S. Code \xc2\xa7 171 - Patents for designs\n(a) Whoever invents any new, original and ornamental design for an article of\nmanufacture may obtain a patent therefor, subject to the conditions and\nrequirements of this title.\n(b) The provisions of this title relating to patents for inventions shall apply to\npatents for designs, except as otherwise provided.\n\nJewelry, furniture, the shapes of containers, and even computer icons have been patented as\ndesigns. A design patent confers the exclusive right to make, use, and sell objects embodying\nthe design, regardless of whether the defendant\xe2\x80\x99s product was copied or independently\nconceived. However, design patents only last for 15 years from the date that they are issued.\nThere is obviously a great deal more to be said about design patents, but it will not be said\nhere.\n\n462\n\n\x0cProtecting industrial designs and other PGS works through copyright\nPGS works\nThe subject matter of copyright as initially conceived, related to things written, not just\nworks of literature such as books, but also maps, charts, and tables. Over time, however, the\nsubject matter of copyright expanded to include works of authorship of a non-literary nature.\nOne important classification of copyright subject matter under the US Copyright Act of\n1976 Act is \xe2\x80\x9cpictorial, graphic, and sculptural works,\xe2\x80\x9d usually abbreviated to PGS works.\nThis category includes maps and diagrams as well as drawings, paintings, and photographs. It\nalso includes three-dimensional objects, and \xe2\x80\x9cthe design of a useful article,\xe2\x80\x9d but only in some\ncircumstances.\n17 U.S. Code \xc2\xa7 102(a)\nCopyright protection subsists, in accordance with this title, in original works of\nauthorship fixed in any tangible medium of expression[.] Works of authorship\ninclude the following categories: \xe2\x80\xa6 (5) pictorial, graphic, and sculptural works;\n17 U.S. Code \xc2\xa7 101\n\xe2\x80\x9cPictorial, graphic, and sculptural works\xe2\x80\x9d include two-dimensional and threedimensional works of fine, graphic, and applied art, photographs, prints and art\nreproductions, maps, globes, charts, diagrams, models, and technical drawings,\n[including architectural plans]. \xe2\x80\xa6 Such works shall include works of artistic\ncraftsmanship insofar as their form but not their mechanical or utilitarian aspects are\nconcerned; the design of a useful article, as defined in this section, shall be considered a\npictorial, graphic, or sculptural work only if, and only to the extent that, such design\nincorporates pictorial, graphic, or sculptural features that can be identified separately\nfrom, and are capable of existing independently of, the utilitarian aspects of the article.\n(emphasis added)\n\nUseful Articles and Conceptual Severability\nThe expression \xe2\x80\x9cuseful article\xe2\x80\x9d is a term of art in copyright law with some profound\nimplications. Section 101 of the Copyright Act provides that PGS works include \xe2\x80\x9cworks of\nartistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are\nconcerned.\xe2\x80\x9d It also provides that the design of a work that constitutes a \xe2\x80\x9cuseful article\xe2\x80\x9d is\nprotectable as a PGS work \xe2\x80\x9conly if and only to the extent that, such design incorporates\npictorial, graphic, or sculptural features that can be identified separately from, and are\ncapable of existing independently of, the utilitarian aspects of the article.\xe2\x80\x9d\nThe upshot of these provisions and the case law interpreting them is that a work of design is\nprotectable under copyright where its expressive \xe2\x80\x9cpictorial, graphic, or sculptural features\xe2\x80\x9d\nare separable from its \xe2\x80\x9cutilitarian aspects.\xe2\x80\x9d\nWhere does this concept of useful articles and conceptual severability come from? A useful\nplace to start is with the Supreme Court\xe2\x80\x99s opinion in Mazer v. Stein in 1954.\nMazer v. Stein, 347 U.S. 201 (1954)\nMr. Justice Reed delivered the opinion of the Court.\n\n463\n\n\x0cThis case involves the validity of copyrights obtained by respondents for statuettes\nof male and female dancing figures made of semivitreous china. The controversy\ncenters around the fact that although copyrighted as \xe2\x80\x9cworks of art,\xe2\x80\x9d the statuettes\nwere intended for use and used as bases for table lamps, with electric wiring, sockets\nand lamp shades attached.\nRespondents are partners in the manufacture and sale of electric lamps. One of the\nrespondents created original works of sculpture in the form of human figures by\ntraditional clay-model technique. From this model, a production mold for casting\ncopies was made. The resulting statuettes, without any lamp components added,\nwere submitted by the respondents to the Copyright Office for registration as\n\xe2\x80\x9cworks of art\xe2\x80\x9d or reproductions thereof and certificates of registration issued.\nThereafter, the statuettes were sold in quantity throughout the country both as lamp\nbases and as statuettes. The sales in lamp form accounted for all but an insignificant\nportion of respondents\xe2\x80\x99 sales.\nPetitioners are partners and, like respondents, make and sell lamps. Without\nauthorization, they copied the statuettes, embodied them in lamps and sold them.\nPetitioners, charged by the present complaint with infringement of respondents\xe2\x80\x99\ncopyrights of reproductions of their works of art, seek here a reversal of the Court of\nAppeals decree upholding the copyrights.\nThe case requires an answer, not as to a manufacturer\xe2\x80\x99s right to register a lamp base\nbut as to an artist\xe2\x80\x99s right to copyright a work of art intended to be reproduced for\nlamp bases. Petitioners question the validity of a copyright of a work of art for \xe2\x80\x9cmass\xe2\x80\x9d\nproduction. Their position is that a copyright does not cover industrial reproduction\nof the protected article. Thus their reply brief states:\nWhen an artist becomes a manufacturer or a designer for a manufacturer he is\nsubject to the limitations of design patents and deserves no more consideration than\nany other manufacturer or designer.\n\nIt is not the right to copyright an article that could have utility under \xc2\xa7\xc2\xa7 5 (g) and (h)\nthat petitioners oppose. \xe2\x80\xa6 It is publication as a lamp and registration as a statue to\ngain a monopoly in manufacture that they assert is such a misuse of copyright as to\nmake the registration invalid.\nThe successive acts, the legislative history of the 1909 Act and the practice of the\nCopyright Office unite to show that \xe2\x80\x9cworks of art\xe2\x80\x9d and \xe2\x80\x9creproductions of works of\nart\xe2\x80\x9d are terms that were intended by Congress to include the authority to copyright\nthese statuettes. Individual perception of the beautiful is too varied a power to\npermit a narrow or rigid concept of art. As a standard we can hardly do better than\nthe words of the present Regulation, \xc2\xa7 202.8, naming the things that appertain to the\narts. They must be original, that is, the author\xe2\x80\x99s tangible expression of his ideas.111\nBut petitioners assert that congressional enactment of the design patent laws should\nbe interpreted as denying protection to artistic articles embodied or reproduced in\nThe Court is referring to the then applicable 37 CFR, 1949, \xc2\xa7 202.8: \xe2\x80\x9cWorks of art (Class G)\xe2\x80\x94(a) In\nGeneral. This class includes works of artistic craftsmanship, in so far as their form but not their mechanical or\nutilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works\nbelonging to the fine arts, such as paintings, drawings and sculpture. . . .\xe2\x80\x9d\n111\n\n464\n\n\x0cmanufactured articles. \xe2\x80\xa6 Their argument is that design patents require the critical\nexamination given patents to protect the public against monopoly. \xe2\x80\xa6 Petitioner\nurges that overlapping of patent and copyright legislation so as to give an author or\ninventor a choice between patents and copyrights should not be permitted. We\nassume petitioner takes the position that protection for a statuette for industrial use\ncan only be obtained by patent, if any protection can be given.\nAs we have held the statuettes here involved copyrightable, we need not decide the\nquestion of their patentability. Though other courts have passed upon the issue as to\nwhether allowance by the election of the author or patentee of one bars a grant of\nthe other, we do not. We do hold that the patentability of the statuettes, fitted as\nlamps or unfitted, does not bar copyright as works of art. Neither the Copyright\nStatute nor any other says that because a thing is patentable it may not be\ncopyrighted. We should not so hold.\nUnlike a patent, a copyright gives no exclusive right to the art disclosed; protection is\ngiven only to the expression of the idea\xe2\x80\x94not the idea itself. The copyright protects\noriginality rather than novelty or invention\xe2\x80\x94conferring only \xe2\x80\x9cthe sole right of\nmultiplying copies.\xe2\x80\x9d Absent copying there can be no infringement of copyright. Thus,\nrespondents may not exclude others from using statuettes of human figures in table\nlamps; they may only prevent use of copies of their statuettes as such or as\nincorporated in some other article. Regulation \xc2\xa7 202.8 makes clear that artistic\narticles are protected in \xe2\x80\x9cform but not their mechanical or utilitarian aspects.\xe2\x80\x9d The\ndichotomy of protection for the aesthetic is not beauty and utility but art for the\ncopyright and the invention of original and ornamental design for design patents. We\nfind nothing in the copyright statute to support the argument that the intended use\nor use in industry of an article eligible for copyright bars or invalidates its registration.\nWe do not read such a limitation into the copyright law.\n\xe2\x80\xa6 Nor do we think the subsequent registration of a work of art published as an\nelement in a manufactured article, is a misuse of the copyright. This is not different\nfrom the registration of a statuette and its later embodiment in an industrial article.\nNotes and questions\n(1) Although the lamp base in Mazer v. Stein had features that might have made it more\nappropriate for either utility patent or design patent protection, the Court held as a matter of\nstatutory interpretation that independent works of art may be copyrighted even if they are\nincorporated into useful articles. Under the regulations in force at the time, copyright\nextended to \xe2\x80\x9cworks of artistic craftsmanship, in so far as their form but not their mechanical\nor utilitarian aspects are concerned.\xe2\x80\x9d Mazer is usually read as authority for this distinction.\nAlthough the term \xe2\x80\x9cconceptual separability\xe2\x80\x9d does not appear in Mazer, the idea is embedded\nin the Court\xe2\x80\x99s recognition that to be copyrightable, the statuettes \xe2\x80\x9cmust be original, that is,\nthe author\xe2\x80\x99s tangible expression of his ideas\xe2\x80\x9d even though they appeared on an otherwise\nmundane utilitarian object.\n\n465\n\n\x0cThe definition of \xe2\x80\x9cpictorial, graphic, and sculptural works\xe2\x80\x9d in the Copyright Act of\n1976\nThe Supreme Court\xe2\x80\x99s ruling in Mazer v. Stein led directly to the definition of \xe2\x80\x9cpictorial,\ngraphic, and sculptural works\xe2\x80\x9din the Copyright Act of 1976. As noted above, Section 101\ndefines pictorial graphic and sculptural works to include two-dimensional and threedimensional works of fine, graphic and applied art, and more. The definition distinguishes\nbetween the form and the \xe2\x80\x9cmechanical or utilitarian aspects\xe2\x80\x9d of works of artistic\ncraftsmanship and provides that the design of a useful article shall be considered a PGS\nwork \xe2\x80\x9conly if, and only to the extent that, such design incorporates pictorial, graphic, or\nsculptural features that can be identified separately from, and are capable of existing independently of,\nthe utilitarian aspects of the article.\xe2\x80\x9d\nDistinguishing Between Useful and Useless Articles\nFor a pictorial, graphical, or sculptural work to qualify as copyright subject matter it must\nmeet the thresholds of originality and the requirement of fixation like any other work of\nauthorship, but if it is a \xe2\x80\x9cuseful article\xe2\x80\x9d it must also satisfy the requirement of \xe2\x80\x9cconceptual\nseparability.\xe2\x80\x9d However, not every PGS work is a useful article.\nSection 101 also contains a definition of \xe2\x80\x9cuseful article.\xe2\x80\x9d\n17 U.S. Code \xc2\xa7 101.\nA \xe2\x80\x9cuseful article\xe2\x80\x9d is an article having an intrinsic utilitarian function that is not\nmerely to portray the appearance of the article or to convey information. An article\nthat is normally a part of a useful article is considered a \xe2\x80\x9cuseful article\xe2\x80\x9d.\n\nChristopher Buccafusco and Mark Lemley, provide a nice summary of this issue.\nChristopher Buccafusco & Mark Lemley Functionality Screens, 103 Virginia\nLaw Review, 1293, 1329\xe2\x80\x9331 (2017)\nMany PGS works will have no intrinsic utilitarian function. Although a painting may\nserve to cover a hole in the wall or a sculpture may offer shade from the sun, we\nwould not treat them as being intrinsically utilitarian. These works are not useful\narticles, are protectable to the extent that they are original, and, yet, any residual\nfunctional aspects of the works will not receive protection. If, however, the work\ndoes have an intrinsic utilitarian function, then it constitutes a useful article. For\nexample, clothing garments, automobiles, personal electronics, and furniture all have\nsome significant usefulness.\n[If a work] constitutes a useful article, the next step of the analysis has been to apply\nthe separability criterion. As noted above, this requires the court to determine\nwhether pictorial, graphic, or sculptural features of the work can be identified\nseparately from, and are capable of existing independently of, the utilitarian aspects\nof the article. Thus, the court must determine which parts of the work are purely\naesthetic features, which parts are purely utilitarian aspects, and which parts are\ndual-nature, those that simultaneously exhibit aesthetics and functionality. Although\nthe nature of this inquiry is not entirely clear, the best reading of the statute treats as\n\xe2\x80\x9cutilitarian aspects\xe2\x80\x9d any components of the work that do not \xe2\x80\x9cmerely ... portray the\nappearance of the article or ... convey information.\xe2\x80\x9d\nHaving analyzed the components of the work, the court can now apply the\nseparability criterion by asking whether the aesthetic features can be identified\n\n466\n\n\x0cseparately from, and are capable of existing independently of, the utilitarian aspects\nof the article. That is, the court will ask whether the useful article exhibits any purely\naesthetic features. These features, and only these features, can receive copyright\nprotection. In some cases, this inquiry is easy, because the aesthetic features can be\nphysically removed from the useful article. For example, the sculpted hood\nornament on a Jaguar automobile can simply be removed from the car leaving both\na sculpture and a car. Here, the aesthetic features are said to be \xe2\x80\x9cphysically\nseparable.\xe2\x80\x9d\nIn other cases, however, the aesthetic features cannot be removed from an article.\nNonetheless, courts typically hold that the aesthetic features of useful articles may\nstill be copyrightable if they are \xe2\x80\x9cconceptually separable.\xe2\x80\x9d Here, in particular, courts\nand scholars have struggled to understand how to make this determination.\nAlthough different formulations for the conceptual separability criterion exist, they\nall tend to ask a similar question: is the work (or its separable features) primarily\naesthetic or utilitarian?\n\nWhat is \xe2\x80\x9cconceptual separability\xe2\x80\x9d after Star Athletica v. Varsity Brands?\nBefore Star Athletica\nIn 2017, the Supreme Court announced its decision in a case involving the copyrightability\nof designs for cheerleading uniforms, Star Athletica v. Varsity Brands; a case that squarely\npresented the question of how the concept of conceptual separability should be understood\nand applied. Since the 1976 Act came into effect, lower courts and the Copyright Office had\nproposed a variety of tests for conceptual separability, including:\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\xe2\x80\xa2\n\nwhether the aesthetic features and utilitarian aspects could exist side by side and be perceived\nas fully realized, separate works;\nwhether the aesthetic features are primary to a subsidiary utilitarian function;\nwhether the aesthetic features can be identified as reflecting the designer\xe2\x80\x99s artistic judgment\nexercised independently of functional influences; and\nwhether there is a substantial likelihood that the aesthetic features would still be marketable\nto a significant segment of the community if the work had no utilitarian function.112\n\nThe different formulations all appear to converge on a central question: how important are\nthe aesthetic features relative to the utilitarian aspects of the article?\nIt is helpful to consider how copyright has historically dealt with fashion before getting into\nthe details of the Supreme Court\xe2\x80\x99s decision in Star Athletica. Two propositions with respect\nto copyright in fashion design had been well settled prior to Star Athletica. First, printed\ndesigns on clothes are copyrightable because the ornamentation is separable from the useful\naspects of the article. Second, items of clothing as such are generally not eligible for\ncopyright protection because they are considered useful articles in which any artistic element\nis hopelessly merged with the items utilitarian function.\nCompendium III of U.S. Copyright Office Practices, \xc2\xa7 924.3(A)(1).\nClothing Designs\n\n112\n\nSee 1-2 Nimmer on Copyright, \xc2\xa7 2.08.\n\n467\n\n\x0cClothing such as shirts, dresses, pants, coats, shoes, and outerwear are not eligible\nfor copyright protection because they are considered useful articles. This is because\nclothing provides utilitarian functions, such as warmth, protection, and modesty. As\na result, the U.S. Copyright Office will not register a claim in clothing or clothing\ndesigns.\n\nThe plaintiff in the Star Athletica case, Varsity Brands, did not attempt to register the design\nof a cheerleading uniform per se, it registered five different sets of two-dimensional artwork\nto be embodied in a uniform. This is tricky. A drawing of dress is not the dress, nor even\nnecessarily the design of the dress. It could be a pleasing visual image in its own right.\nHowever, applying Section 113(b), copyright in the drawing does not extend protection to\nthe creation of a three-dimensional dress that itself would be a useful article.\n17 U.S. Code \xc2\xa7 113(b)\nThis title does not afford, to the owner of copyright in a work that portrays a useful\narticle as such, any greater or lesser rights with respect to the making, distribution,\nor display of the useful article so portrayed than those afforded to such works under\n[copyright law].\n\nPursuant to this section, an artist would be entitled to copyright in a drawing of a mousetrap,\nbut would have no claim against anyone who made an actual mousetrap based on her\ndrawing.\nStar Athletica LLC v. Varsity Brands Inc. 137 S.Ct. 1002 (2017)113\nJustice Thomas delivered the opinion of the Court.\nCongress has provided copyright protection for original works of art, but not for\nindustrial designs. The line between art and industrial design, however, is often\ndifficult to draw. This is particularly true when an industrial design incorporates\nartistic elements. Congress has afforded limited protection for these artistic elements\nby providing that \xe2\x80\x9cpictorial, graphic, or sculptural features\xe2\x80\x9d of the \xe2\x80\x9cdesign of a useful\narticle\xe2\x80\x9d are eligible for copyright protection as artistic works if those features \xe2\x80\x9ccan be\nidentified separately from, and are capable of existing independently of, the utilitarian\naspects of the article.\xe2\x80\x9d 17 U.S.C. \xc2\xa7101.\nWe granted certiorari to resolve widespread disagreement over the proper test for\nimplementing \xc2\xa7101\xe2\x80\x99s separate-identification and independent-existence requirements.\nWe hold that a feature incorporated into the design of a useful article is eligible for\ncopyright protection only if the feature (1) can be perceived as a two- or threedimensional work of art separate from the useful article and (2) would qualify as a\nprotectable pictorial, graphic, or sculptural work\xe2\x80\x94either on its own or fixed in some\nother tangible medium of expression\xe2\x80\x94if it were imagined separately from the useful\narticle into which it is incorporated. Because that test is satisfied in this case, we\naffirm.\nRespondents Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit\nFashions & Supplies, Inc., design, make, and sell cheerleading uniforms.\nRespondents have obtained or acquired more than 200 U.S. copyright registrations\n113\n\nThis edited version of the case is based on Eric E Johnson\xe2\x80\x99s edit.\n\n468\n\n\x0cfor two-dimensional designs appearing on the surface of their uniforms and other\ngarments. These designs are primarily \xe2\x80\x9ccombinations, positionings, and\narrangements of elements\xe2\x80\x9d that include \xe2\x80\x9cchevrons . . . , lines, curves, stripes, angles,\ndiagonals, inverted [chevrons], coloring, and shapes.\xe2\x80\x9d At issue in this case are\nDesigns 299A, 299B, 074, 078, and 0815. See infra.\nFigure 17 Varsity\xe2\x80\x99s Claimed Designs\n\nPetitioner Star Athletica, L.L.C., also markets and sells cheerleading uniforms.\nRespondents sued petitioner for infringing their copyrights in the five designs.\nThe Copyright Act establishes a special rule for copyrighting a pictorial, graphic, or\nsculptural work incorporated into a \xe2\x80\x9cuseful article,\xe2\x80\x9d which is defined as \xe2\x80\x9can article\nhaving an intrinsic utilitarian function that is not merely to portray the appearance of\nthe article or to convey information.\xe2\x80\x9d The statute does not protect useful articles as\nsuch. Rather, \xe2\x80\x9cthe design of a useful article\xe2\x80\x9d is \xe2\x80\x9cconsidered a pictorial, graphical, or\nsculptural work only if, and only to the extent that, such design incorporates pictorial,\ngraphic, or sculptural features that can be identified separately from, and are capable\nof existing independently of, the utilitarian aspects of the article.\xe2\x80\x9d In this case, our\ntask is to determine whether the arrangements of lines, chevrons, and colorful shapes\nappearing on the surface of respondents\xe2\x80\x99 cheerleading uniforms are eligible for\ncopyright protection as separable features of the design of those cheerleading\nuniforms.\n469\n\n\x0cWe must decide when a feature incorporated into a useful article \xe2\x80\x9ccan be identified\nseparately from\xe2\x80\x9d and is \xe2\x80\x9ccapable of existing independently of\xe2\x80\x9d \xe2\x80\x9cthe utilitarian aspects\xe2\x80\x9d\nof the article. This is not a free-ranging search for the best copyright policy, but\nrather \xe2\x80\x9cdepends solely on statutory interpretation.\xe2\x80\x9d \xe2\x80\x9cThe controlling principle in this\ncase is the basic and unexceptional rule that courts must give effect to the clear\nmeaning of statutes as written.\xe2\x80\x9d We thus begin and end our inquiry with the text,\ngiving each word its \xe2\x80\x9cordinary, contemporary, common meaning.\xe2\x80\x9d\nThe statute provides that a pictorial, graphic, or sculptural feature incorporated into\nthe design of a useful article is eligible for copyright protection if it (1) \xe2\x80\x9ccan be\nidentified separately from,\xe2\x80\x9d and (2) is \xe2\x80\x9ccapable of existing independently of, the\nutilitarian aspects of the article.\xe2\x80\x9d \xc2\xa7101. The first requirement\xe2\x80\x94separate\nidentification\xe2\x80\x94is not onerous. The decisionmaker need only be able to look at the\nuseful article and spot some two- or three-dimensional element that appears to have\npictorial, graphic, or sculptural qualities.\nThe independent-existence requirement is ordinarily more difficult to satisfy. The\ndecisionmaker must determine that the separately identified feature has the capacity\nto exist apart from the utilitarian aspects of the article. In other words, the feature\nmust be able to exist as its own pictorial, graphic, or sculptural work as defined in\n\xc2\xa7101 once it is imagined apart from the useful article. If the feature is not capable of\nexisting as a pictorial, graphic, or sculptural work once separated from the useful\narticle, then it was not a pictorial, graphic, or sculptural feature of that article, but\nrather one of its utilitarian aspects.\nOf course, to qualify as a pictorial, graphic, or sculptural work on its own, the feature\ncannot itself be a useful article or \xe2\x80\x9c[a]n article that is normally a part of a useful\narticle\xe2\x80\x9d (which is itself considered a useful article). \xc2\xa7101. Nor could someone claim a\ncopyright in a useful article merely by creating a replica of that article in some other\nmedium\xe2\x80\x94for example, a cardboard model of a car. Although the replica could itself\nbe copyrightable, it would not give rise to any rights in the useful article that inspired\nit.\nIn sum, a feature of the design of a useful article is eligible for copyright if, when\nidentified and imagined apart from the useful article, it would qualify as a pictorial,\ngraphic, or sculptural work either on its own or when fixed in some other tangible\nmedium.\nApplying this test to the surface decorations on the cheerleading uniforms is\nstraightforward. First, one can identify the decorations as features having pictorial,\ngraphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes,\nand chevrons on the surface of the cheerleading uniforms were separated from the\nuniform and applied in another medium\xe2\x80\x94for example, on a painter\xe2\x80\x99s canvas\xe2\x80\x94they\nwould qualify as \xe2\x80\x9ctwo-dimensional \xe2\x80\xa6 works of \xe2\x80\xa6 art,\xe2\x80\x9d \xc2\xa7101. And imaginatively\nremoving the surface decorations from the uniforms and applying them in another\nmedium would not replicate the uniform itself. Indeed, respondents have applied the\ndesigns in this case to other media of expression\xe2\x80\x94different types of clothing\xe2\x80\x94\nwithout replicating the uniform. The decorations are therefore separable from the\nuniforms and eligible for copyright protection.\n\n470\n\n\x0cFootnote: We do not today hold that the surface decorations are copyrightable. We express no opinion on\nwhether these works are sufficiently original to qualify for copyright protection, see Feist Publications, Inc. v. Rural\nTelephone Service Co., 499 U.S. 340\xe2\x80\x93359 (1991), or on whether any other prerequisite of a valid copyright has been\nsatisfied.\n\nThe dissent argues that the designs are not separable because imaginatively removing\nthem from the uniforms and placing them in some other medium of expression\xe2\x80\x94a\ncanvas, for example\xe2\x80\x94would create \xe2\x80\x9cpictures of cheerleader uniforms.\xe2\x80\x9d Petitioner\nsimilarly argues that the decorations cannot be copyrighted because, even when\nextracted from the useful article, they retain the outline of a cheerleading uniform.\nThis is not a bar to copyright. Just as two-dimensional fine art corresponds to the\nshape of the canvas on which it is painted, two-dimensional applied art correlates to\nthe contours of the article on which it is applied. A fresco painted on a wall, ceiling\npanel, or dome would not lose copyright protection, for example, simply because it\nwas designed to track the dimensions of the surface on which it was painted. Or\nconsider, for example, a design etched or painted on the surface of a guitar. If that\nentire design is imaginatively removed from the guitar\xe2\x80\x99s surface and placed on an\nalbum cover, it would still resemble the shape of a guitar. But the image on the cover\ndoes not \xe2\x80\x9creplicate\xe2\x80\x9d the guitar as a useful article. Rather, the design is a twodimensional work of art that corresponds to the shape of the useful article to which\nit was applied. The statute protects that work of art whether it is first drawn on the\nalbum cover and then applied to the guitar\xe2\x80\x99s surface, or vice versa. Failing to protect\nthat art would create an anomaly: It would extend protection to two-dimensional\ndesigns that cover a part of a useful article but would not protect the same design if\nit covered the entire article. The statute does not support that distinction, nor can it\nbe reconciled with the dissent\xe2\x80\x99s recognition that \xe2\x80\x9cartwork printed on a t-shirt\xe2\x80\x9d could\nbe protected.\nTo be clear, the only feature of the cheerleading uniform eligible for a copyright in\nthis case is the two-dimensional work of art fixed in the tangible medium of the\nuniform fabric. Even if respondents ultimately succeed in establishing a valid\ncopyright in the surface decorations at issue here, respondents have no right to\nprohibit any person from manufacturing a cheerleading uniform of identical shape,\ncut, and dimensions to the ones on which the decorations in this case appear. They\nmay prohibit only the reproduction of the surface designs in any tangible medium of\nexpression\xe2\x80\x94a uniform or otherwise.\nFootnote: The dissent suggests that our test would lead to the copyrighting of shovels. But a shovel, like a\ncheerleading uniform, even if displayed in an art gallery, is \xe2\x80\x9can article having an intrinsic utilitarian function that is\nnot merely to portray the appearance of the article or to convey information.\xe2\x80\x9d 17 U.S.C. \xc2\xa7101. It therefore cannot\nbe copyrighted. A drawing of a shovel could, of course, be copyrighted. And, if the shovel included any artistic\nfeatures that could be perceived as art apart from the shovel, and which would qualify as protectable pictorial,\ngraphic, or sculptural works on their own or in another medium, they too could be copyrighted. But a shovel as a\nshovel cannot.\n\nAccording to petitioner, if a feature of a useful article \xe2\x80\x9cadvance[s] the utility of the\narticle,\xe2\x80\x9d then it is categorically beyond the scope of copyright. The designs here are\nnot protected, it argues, because they are necessary to two of the uniforms\xe2\x80\x99 \xe2\x80\x9cinherent,\nessential, or natural functions\xe2\x80\x9d\xe2\x80\x94identifying the wearer as a cheerleader and\nenhancing the wearer\xe2\x80\x99s physical appearance. Because the uniforms would not be\nequally useful without the designs, petitioner contends that the designs are\ninseparable from the \xe2\x80\x9cutilitarian aspects\xe2\x80\x9d of the uniform.\n471\n\n\x0cThe Government suggests that the appropriate test is whether the useful article with\nthe artistic feature removed would \xe2\x80\x9cremain similarly useful.\xe2\x80\x9d In the view of the\nUnited States, however, a plain white cheerleading uniform is \xe2\x80\x9csimilarly useful\xe2\x80\x9d to\nuniforms with respondents\xe2\x80\x99 designs.\nThe debate over the relative utility of a plain white cheerleading uniform is\nunnecessary. The focus of the separability inquiry is on the extracted feature and not\non any aspects of the useful article that remain after the imaginary extraction. The\nstatute does not require the decisionmaker to imagine a fully functioning useful\narticle without the artistic feature. Instead, it requires that the separated feature\nqualify as a nonuseful pictorial, graphic, or sculptural work on its own.\nOf course, because the removed feature may not be a useful article\xe2\x80\x94as it would then\nnot qualify as a pictorial, graphic, or sculptural work\xe2\x80\x94there necessarily would be\nsome aspects of the original useful article \xe2\x80\x9cleft behind\xe2\x80\x9d if the feature were\nconceptually removed. But the statute does not require the imagined remainder to be\na fully functioning useful article at all, much less an equally useful one.\nBecause we reject the view that a useful article must remain after the artistic feature\nhas been imaginatively separated from the article, we necessarily abandon the\ndistinction between \xe2\x80\x9cphysical\xe2\x80\x9d and \xe2\x80\x9cconceptual\xe2\x80\x9d separability, which some courts and\ncommentators have adopted based on the Copyright Act\xe2\x80\x99s legislative history.\nThe statutory text indicates that separability is a conceptual undertaking. Because\nseparability does not require the underlying useful article to remain, the physicalconceptual distinction is unnecessary.\nPetitioner next argues that we should incorporate two \xe2\x80\x9cobjective\xe2\x80\x9d components into\nour test to provide guidance to the lower courts: (1) \xe2\x80\x9cwhether the design elements\ncan be identified as reflecting the designer\xe2\x80\x99s artistic judgment exercised\nindependently of functional influence,\xe2\x80\x9d and (2) whether \xe2\x80\x9cthere is [a] substantial\nlikelihood that the pictorial, graphic, or sculptural feature would still be marketable to\nsome significant segment of the community without its utilitarian function.\xe2\x80\x9d\nWe reject this argument because neither consideration is grounded in the text of the\nstatute. The statute\xe2\x80\x99s text makes clear that our inquiry is limited to how the article\nand feature are perceived, not how or why they were designed. See Brandir Int\xe2\x80\x99l, Inc. v.\nCascade Pacific Lumber Co., 834 F. 2d 1142, 1152 (CA2 1987) (Winter, J., concurring in\npart and dissenting in part) (The statute \xe2\x80\x9cexpressly states that the legal test is how the\nfinal article is perceived, not how it was developed through various stages\xe2\x80\x9d).\nThe same is true of marketability. Nothing in the statute suggests that\ncopyrightability depends on market surveys. Moreover, asking whether some\nsegment of the market would be interested in a given work threatens to prize popular\nart over other forms, or to substitute judicial aesthetic preferences for the policy\nchoices embodied in the Copyright Act.\nFinally, petitioner argues that allowing the surface decorations to qualify as a \xe2\x80\x9cwork\nof authorship\xe2\x80\x9d is inconsistent with Congress\xe2\x80\x99 intent to entirely exclude industrial\ndesign from copyright. Petitioner notes that Congress refused to pass a provision\nthat would have provided limited copyright protection for industrial designs,\nincluding clothing, when it enacted the 1976 Act and that it has enacted laws\n472\n\n\x0cprotecting designs for specific useful articles\xe2\x80\x94semiconductor chips and boat hulls\xe2\x80\x94\nwhile declining to enact other industrial design statutes. From this history of failed\nlegislation petitioner reasons that Congress intends to channel intellectual property\nclaims for industrial design into design patents. It therefore urges us to approach this\nquestion with a presumption against copyrightability\nWe do not share petitioner\xe2\x80\x99s concern. As an initial matter, \xe2\x80\x9ccongressional inaction\nlacks persuasive significance\xe2\x80\x9d in most circumstances. Moreover, we have long held\nthat design patent and copyright are not mutually exclusive. In any event, as\nexplained above, our test does not render the shape, cut, and physical dimensions of\nthe cheerleading uniforms eligible for copyright protection.\nJustice Ginsburg, concurring in the judgment.\nI concur in the Court\xe2\x80\x99s judgment but not in its opinion. Unlike the majority, I would\nnot take up in this case the separability test appropriate under 17 U.S.C. \xc2\xa7101.\nConsideration of that test is unwarranted because the designs at issue are not designs\nof useful articles. Instead, the designs are themselves copyrightable pictorial or\ngraphic works reproduced on useful articles.\nThe designs here in controversy are standalone pictorial and graphic works that\nrespondents Varsity Brands reproduce on cheerleading uniforms. Varsity\xe2\x80\x99s designs\nfirst appeared as pictorial and graphic works that Varsity\xe2\x80\x99s design team sketched on\npaper. Varsity then sought copyright protection for those two-dimensional designs,\nnot for cheerleading costumes; its registration statements claimed \xe2\x80\x9c2-Dimensional\nartwork\xe2\x80\x9d and \xe2\x80\x9cfabric design (artwork).\xe2\x80\x9d Varsity next reproduced its two-dimensional\ngraphic designs on cheerleading uniforms, also on other garments, including T-shirts\nand jackets.\nIn short, Varsity\xe2\x80\x99s designs are standalone PGS works that may gain copyright\nprotection as such, including the exclusive right to reproduce the designs on useful\narticles.\nJustice Breyer, with whom Justice Kennedy joins, dissenting.\nI agree with much in the Court\xe2\x80\x99s opinion. But I do not agree that the designs that\nVarsity Brands, Inc., submitted to the Copyright Office are eligible for copyright\nprotection. Even applying the majority\xe2\x80\x99s test, the designs cannot \xe2\x80\x9cbe perceived as \xe2\x80\xa6\ntwo- or three-dimensional works of art separate from the useful article.\xe2\x80\x9d\nLook at the designs that Varsity submitted to the Copyright Office. You will see only\npictures of cheerleader uniforms. And cheerleader uniforms are useful articles. A\npicture of the relevant design features, whether separately \xe2\x80\x9cperceived\xe2\x80\x9d on paper or in\nthe imagination, is a picture of, and thereby \xe2\x80\x9creplicate[s],\xe2\x80\x9d the underlying useful\narticle of which they are a part. Hence the design features that Varsity seeks to\nprotect are not \xe2\x80\x9ccapable of existing independently o[f] the utilitarian aspects of the\narticle.\xe2\x80\x9d 17 U.S.C. \xc2\xa7101.\nThe relevant statutory provision says that the \xe2\x80\x9cdesign of a useful article\xe2\x80\x9d is\ncopyrightable \xe2\x80\x9conly if, and only to the extent that, such design incorporates pictorial,\n473\n\n\x0cgraphic, or sculptural features that can be identified separately from, and are capable\nof existing independently of, the utilitarian aspects of the article.\xe2\x80\x9d But what, we must\nask, do the words \xe2\x80\x9cidentified separately\xe2\x80\x9d mean? The most direct, helpful aspect of\nthe Court\xe2\x80\x99s opinion answers this question by stating:\nNor could someone claim a copyright in a useful article merely by creating a replica\nof that article in some other medium\xe2\x80\x94for example, a cardboard model of a car.\nAlthough the replica could itself be copyright-able, it would not give rise to any\nrights in the useful article that inspired it.\n\nExactly so. These words help explain the Court\xe2\x80\x99s statement that a copyrightable\nwork of art must be \xe2\x80\x9cperceived as a two- or three-dimensional work of art separate\nfrom the useful article.\xe2\x80\x9d They help clarify the concept of separateness. They are\nconsistent with Congress\xe2\x80\x99 own expressed intent.\nConsider, for example, the explanation that the House Report for the Copyright Act\nof 1976 provides. It says:\n\xe2\x80\x9cUnless the shape of an automobile, airplane, ladies\xe2\x80\x99 dress, food processor,\ntelevision set, or any other industrial product contains some element that, physically or\nconceptually, can be identified as separable from the utilitarian aspects of that article,\nthe design would not be copyrighted \xe2\x80\xa6 .\xe2\x80\x9d House Report at 55 (emphasis added).\n\nThese words suggest two exercises, one physical, one mental. Can the design features\n(the picture, the graphic, the sculpture) be physically removed from the article (and\nconsidered separately), all the while leaving the fully functioning utilitarian object in\nplace? If not, can one nonetheless conceive of the design features separately without\nreplicating a picture of the utilitarian object? If the answer to either of these\nquestions is \xe2\x80\x9cyes,\xe2\x80\x9d then the design is eligible for copyright protection. Otherwise, it is\nnot.\nAn example will help. Imagine a lamp with a circular marble base, a vertical 10-inch\ntall brass rod (containing wires) inserted off center on the base, a light bulb fixture\nemerging from the top of the brass rod, and a lampshade sitting on top. In front of\nthe brass rod a porcelain Siamese cat sits on the base facing outward. Obviously, the\nSiamese cat is physically separate from the lamp, as it could be easily removed while\nleaving both cat and lamp intact. And, assuming it otherwise qualifies, the designed\ncat is eligible for copyright protection.\nNow suppose there is no long brass rod; instead the cat sits in the middle of the base\nand the wires run up through the cat to the bulbs. The cat is not physically separate\nfrom the lamp, as the reality of the lamp\xe2\x80\x99s construction is such that an effort to\nphysically separate the cat and lamp will destroy both cat and lamp. The two are\nintegrated into a single functional object, like the similar configuration of the ballet\ndancer statuettes that formed the lamp bases at issue in Mazer v. Stein, 347 U.S. 201\n(1954). But we can easily imagine the cat on its own, as did Congress when\nconceptualizing the ballet dancer. See House Report, at 55 (the statuette in Mazer\nwas \xe2\x80\x9cincorporated into a product without losing its ability to exist independently as a\nwork of art\xe2\x80\x9d). In doing so, we do not create a mental picture of a lamp (or, in the\nCourt\xe2\x80\x99s words, a \xe2\x80\x9creplica\xe2\x80\x9d of the lamp), which is a useful article. We simply perceive\nthe cat separately, as a small cat figurine that could be a copyrightable design work\nstanding alone that does not replicate the lamp. Hence the cat is conceptually\n474\n\n\x0cseparate from the utilitarian article that is the lamp. The pair of lamps pictured at\nFigures 1 and 2 illustrate this principle.\nJustice Breyer\xe2\x80\x99s Figures 1 and 2 (Cat Lamps)\n\nBy way of contrast, Van Gogh\xe2\x80\x99s painting of a pair of old shoes, though beautifully\nexecuted and copyrightable as a painting, would not qualify for a shoe design\ncopyright. See fig. 3. Courts have similarly denied copyright protection to objects\nthat begin as three-dimensional designs, such as measuring spoons shaped like hearttipped arrows, candleholders shaped like sailboats, and wire spokes on a wheel cover.\nNone of these designs could qualify for copyright protection that would prevent\nothers from selling spoons, candleholders, or wheel covers with the same design.\nWhy not? Because in each case the design is not separable from the utilitarian aspects\nof the object to which it relates. The designs cannot be physically separated because\nthey themselves make up the shape of the spoon, candleholders, or wheel covers of\nwhich they are a part. One cannot easily imagine or otherwise conceptualize the\ndesign of the spoons or the candleholders or the shoes without that picture, or image,\nor replica being a picture of spoons, or candleholders, or wheel covers, or shoes. The\ndesigns necessarily bring along the underlying utilitarian object. Hence each design is\nnot conceptually separable from the physical useful object.\n\n475\n\n\x0cJustice Breyer\xe2\x80\x99s Figure 3\n\nTo repeat: A separable design feature must be \xe2\x80\x9ccapable of existing independently\xe2\x80\x9d of\nthe useful article as a separate artistic work that is not itself the useful article. If the\nclaimed feature could be extracted without replicating the useful article of which it is\na part, and the result would be a copyrightable artistic work standing alone, then\nthere is a separable design. But if extracting the claimed features would necessarily\nbring along the underlying useful article, the design is not separable from the useful\narticle. In many or most cases, to decide whether a design or artistic feature of a\nuseful article is conceptually separate from the article itself, it is enough to imagine\nthe feature on its own and ask, \xe2\x80\x9cHave I created a picture of a (useful part of a) useful\narticle?\xe2\x80\x9d If so, the design is not separable from the useful article. If not, it is.\nIn referring to imagined pictures and the like, I am not speaking technically. I am\nsimply trying to explain an intuitive idea of what separation is about, as well as how I\nunderstand the majority\xe2\x80\x99s opinion. So understood, the opinion puts design\ncopyrights in their rightful place. The law has long recognized that drawings or\nphotographs of real world objects are copyrightable as drawings or photographs, but\nthe copyright does not give protection against others making the underlying useful\nobjects. That is why a copyright on Van Gogh\xe2\x80\x99s painting would prevent others from\nreproducing that painting, but it would not prevent others from reproducing and\nselling the comfortable old shoes that the painting depicts.\nTo ask this kind of simple question\xe2\x80\x94does the design picture the useful article?\xe2\x80\x94will\nnot provide an answer in every case, for there will be cases where it is difficult to say\nwhether a picture of the design is, or is not, also a picture of the useful article. But\nthe question will avoid courts focusing primarily upon what I believe is an unhelpful\nfeature of the inquiry, namely, whether the design can be imagined as a \xe2\x80\x9ctwo- or\n476\n\n\x0cthree-dimensional work of art.\xe2\x80\x9d That is because virtually any industrial design can be\nthought of separately as a \xe2\x80\x9cwork of art\xe2\x80\x9d: Just imagine a frame surrounding the design,\nor its being placed in a gallery. Consider Marcel Duchamp\xe2\x80\x99s \xe2\x80\x9creadymades\xe2\x80\x9d series, the\nfunctional mass-produced objects he designated as art. See fig. 4, [picture of shovel].\nWhat design features could not be imaginatively reproduced on a painter\xe2\x80\x99s canvas?\nJustice Breyer\xe2\x80\x99s Figure 4\n\nThe conceptual approach that I have described reflects Congress\xe2\x80\x99 answer to a\nproblem that is primarily practical and economic. Years ago Lord Macaulay drew\nattention to the problem when he described copyright in books as a \xe2\x80\x9ctax on readers\nfor the purpose of giving a bounty to writers.\xe2\x80\x9d He called attention to the main\nbenefit of copyright protection, which is to provide an incentive to produce\ncopyrightable works and thereby \xe2\x80\x9cpromote the Progress of Science and useful Arts.\xe2\x80\x9d\nBut Macaulay also made clear that copyright protection imposes costs. Those costs\ninclude the higher prices that can accompany the grant of a copyright monopoly.\nThey also can include (for those wishing to display, sell, or perform a design, film,\nwork of art, or piece of music, for example) the costs of discovering whether there\nare previous copyrights, of contacting copyright holders, and of securing permission\nto copy. Sometimes, as Thomas Jefferson wrote to James Madison, costs can\noutweigh \xe2\x80\x9cthe benefit even of limited monopolies.\xe2\x80\x9d And that is particularly true in\nlight of the fact that Congress has extended the \xe2\x80\x9climited Times\xe2\x80\x9d of protection, from\nthe \xe2\x80\x9c14 years\xe2\x80\x9d of Jefferson\xe2\x80\x99s day to potentially more than a century today.\nThe Constitution grants Congress primary responsibility for assessing comparative\ncosts and benefits and drawing copyright\xe2\x80\x99s statutory lines. Courts must respect those\nlines and not grant copyright protection where Congress has decided not to do so.\nAnd it is clear that Congress has not extended broad copyright protection to the\nfashion design industry.\n\n477\n\n\x0cCongress\xe2\x80\x99 decision not to grant full copyright protection to the fashion industry has\nnot left the industry without protection. Patent design protection is available. A\nmaker of clothing can obtain trademark protection under the Lanham Act for\nsignature features of the clothing. And a designer who creates an original textile\ndesign can receive copyright protection for that pattern as placed, for example, on a\nbolt of cloth, or anything made with that cloth.\nThe fashion industry has thrived against this backdrop, and designers have\ncontributed immeasurably to artistic and personal self-expression through clothing.\nBut a decision by this Court to grant protection to the design of a garment would\ngrant the designer protection that Congress refused to provide. It would risk\nincreased prices and unforeseeable disruption in the clothing industry, which in the\nUnited States alone encompasses nearly $370 billion in annual spending and 1.8\nmillion jobs. That is why I believe it important to emphasize those parts of the\nCourt\xe2\x80\x99s opinion that limit the scope of its interpretation. That language, as I have\nsaid, makes clear that one may not \xe2\x80\x9cclaim a copyright in a useful article merely by\ncreating a replica of that article in some other medium,\xe2\x80\x9d which \xe2\x80\x9cwould not give rise\nto any rights in the useful article that inspired it.\xe2\x80\x9d\nIf we ask the \xe2\x80\x9cseparateness\xe2\x80\x9d question correctly, the answer here is not difficult to\nfind. The majority\xe2\x80\x99s opinion, in its appendix, depicts the cheerleader dress designs\nthat Varsity submitted to the Copyright Office. Can the design features in Varsity\xe2\x80\x99s\npictures exist separately from the utilitarian aspects of a dress? Can we extract those\nfeatures as copyrightable design works standing alone, without bringing along, via\npicture or design, the dresses of which they constitute a part?\nConsider designs 074, 078, and 0815. They certainly look like cheerleader uniforms.\nThat is to say, they look like pictures of cheerleader uniforms, just like Van Gogh\xe2\x80\x99s\nold shoes look like shoes. I do not see how one could see them otherwise. Designs\n299A and 2999B present slightly closer questions. They omit some of the dresslike\ncontext that the other designs possess. But the necklines, the sleeves, and the cut of\nthe skirt suggest that they too are pictures of dresses. Looking at all five of Varsity\xe2\x80\x99s\npictures, I do not see how one could conceptualize the design features in a way that\ndoes not picture, not just artistic designs, but dresses as well.\nWere I to accept the majority\xe2\x80\x99s invitation to \xe2\x80\x9cimaginatively remov[e]\xe2\x80\x9d the chevrons\nand stripes as they are arranged on the neckline, waistline, sleeves, and skirt of each\nuniform, and apply them on a \xe2\x80\x9cpainter\xe2\x80\x99s canvas,\xe2\x80\x9d that painting would be of a\ncheerleader\xe2\x80\x99s dress. The esthetic elements on which Varsity seeks protection exist\nonly as part of the uniform design\xe2\x80\x94there is nothing to separate out but for dressshaped lines that replicate the cut and style of the uniforms. Hence, each design is\nnot physically separate, nor is it conceptually separate, from the useful article it\ndepicts, namely, a cheerleader\xe2\x80\x99s dress. They cannot be copyrighted.\nVarsity, of course, could have sought a design patent for its designs. Or, it could\nhave sought a copyright on a textile design, even one with a similar theme of\nchevrons and lines.\nBut that is not the nature of Varsity\xe2\x80\x99s copyright claim. It has instead claimed\nownership of the particular \xe2\x80\x9c \xe2\x80\x98treatment and arrangement\xe2\x80\x99 \xe2\x80\x9c of the chevrons and\nlines of the design as they appear at the neckline, waist, skirt, sleeves, and overall cut\n478\n\n\x0cof each uniform. The majority imagines that Varsity submitted something\ndifferent\xe2\x80\x94that is, only the surface decorations of chevrons and stripes, as in a textile\ndesign. As the majority sees it, Varsity\xe2\x80\x99s copyright claim would be the same had it\nsubmitted a plain rectangular space depicting chevrons and stripes, like swaths from\na bolt of fabric. But considered on their own, the simple stripes are plainly unoriginal.\nVarsity, then, seeks to do indirectly what it cannot do directly: bring along the design\nand cut of the dresses by seeking to protect surface decorations whose \xe2\x80\x9ctreatment\nand arrangement\xe2\x80\x9d are coextensive with that design and cut. As Varsity would have it,\nit would prevent its competitors from making useful three-dimensional cheerleader\nuniforms by submitting plainly unoriginal chevrons and stripes as cut and arranged\non a useful article. But with that cut and arrangement, the resulting pictures on which\nVarsity seeks protection do not simply depict designs. They depict clothing. They\ndepict the useful articles of which the designs are inextricable parts. And Varsity\ncannot obtain copyright protection that would give them the power to prevent\nothers from making those useful uniforms, any more than Van Gogh can copyright\ncomfortable old shoes by painting their likeness.\nI fear that, in looking past the three-dimensional design inherent in Varsity\xe2\x80\x99s claim by\ntreating it as if it were no more than a design for a bolt of cloth, the majority has lost\nsight of its own important limiting principle. One may not \xe2\x80\x9cclaim a copyright in a\nuseful article merely by creating a replica of that article in some other medium,\xe2\x80\x9d such\nas in a picture. That is to say, one cannot obtain a copyright that would give its\nholder \xe2\x80\x9cany rights in the useful article that inspired it.\xe2\x80\x9d\nWith respect, I dissent.\nQuestions & Comments\n(1) In Star Athletica, L.L.C. v. Varsity Brands 137 S. Ct. 1002 (2017), the Supreme Court\nconsidered whether design elements on cheerleading uniforms (namely, the arrangement of\ncolors, stripes, and chevrons on the fabric) were eligible for copyright protection. The\nmajority found that such designs were copyrightable despite the fact that they were part of a\nuseful article. In reaching this conclusion, the majority invoked a two-part test to determine\nthe copyrightability of a useful article. Justice Thomas, writing for the Supreme Court\nmajority held (at 1014\xe2\x80\x9315) that\n\xe2\x80\xa6 a feature incorporated into the design of a useful article is eligible for copyright\nprotection only if the feature (1) can be perceived as a two or three-dimensional\nwork of art separate from the useful article and (2) would qualify as a protectable\npictorial, graphic, or sculptural work\xe2\x80\x94either on its own or fixed in some other\ntangible medium of expression\xe2\x80\x94if it were imagined separately from the useful article into\nwhich it is incorporated.\xe2\x80\x9d (emphasis added)\n\nIn addition to setting out the two-part test, Justice Thomas also explicitly abrogated a\nnumber of other tests, including the physical separability test and the designer\xe2\x80\x99s perspective\ntest.\nApplying its two-part test to the surface decorations on the cheerleading uniforms, the\nmajority found that the surface decorations had pictorial, graphic, or sculptural qualities and\nthus met the first prong. Moving on to the second prong, the Court found that if the\narrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading\n479\n\n\x0cuniforms were separated from the uniform and applied to another medium they would\nqualify as two-dimensional works of art. Moreover, removing the surface decorations and\napplying them to a different medium did not replicate the uniform itself. Consequently, the\nmajority found the decorations separable from the uniforms and eligible for copyright\nprotection.\n(2) Is it fair to say that Justice Breyer agreed with the majority\xe2\x80\x99s test, but not its application?\n(3) Other than shovels, what exactly is excluded under the majority\xe2\x80\x99s approach to the useful\narticle doctrine?\n(4) How should we apply Section 113(b) after Star Athletica? In DC Comics v. Towle, 802 F.3d\n1012 (9th Cir. 2015), the court ruled that copyright in the Batmobile as visually depicted in\nBatman comic books, television programs, and movies, was violated by a manufacturer of\nreplica kits that attached to actual automobiles to make them look like the Batmobile. The\ncourt did not consider whether the copyright in the depiction of a useful article like an\nautomobile could extend protection to the production of actual car parts. Should it have?\n(5) Is clothing on a doll protectable under copyright law? See Mattel, Inc. v. MGA\nEntertainment, Inc., 616 F.3d 904, 916 n.12 (9th Cir. 2010).\n(6) In Inhale, Inc. v. Starbuzz Tobacco, Inc., 2017 WL 4163990 (C.D. Cal. May 8, 2017), the\ndistrict court noted that plaintiff\xe2\x80\x99s \xe2\x80\x9cwater container at issue here is no Noguchi Table\xe2\x80\x9d and\nhelpfully included the following image.\nFigure 5 The Noguchi Table, Isamo Noguchi\n\nThe first version of what became the iconic Noguchi Table was designed by Isamo Noguchi in\n1939. The version of the table still current today was commissioned by the then president of\nthe Museum of Modern Art in New York City, the original remains in the museum\xe2\x80\x99s\npermanent collection. Is the Noguchi Table copyrightable under Star Athletica?\nNoguchi was born in Los Angeles to an American mother and a Japanese father in 1904. He\nwas placed in placed in an internment camp in Arizona during WWII.\n(7) We all know that judges in copyright cases are not supposed to rest their decisions on\ntheir personal views of aesthetic quality, does Star Athletica give courts or the Copyright\nOffice the analytical tools to do anything else?\n(8) Mala Chatterjee, proposes a different test:\n480\n\n\x0cMala Chatterjee, Conceptual Separability As Conceivability: A Philosophical\nAnalysis Of The Useful Articles Doctrine, 93 NYU LAW REVIEW (2018)\n\xe2\x80\x9cWhen you conceive of the article as lacking the design element in question, is the\narticle you imagine functionally identical to the actual article?\xe2\x80\x9d If the answer to this\nquestion is yes, then we can conclude that the design element is conceptually\nseparable from the article\xe2\x80\x99s utilitarian aspects; if not, then the element has failed the\ntest, and it is not entitled to copyright protection.\n\nIs this an improvement? Can Chatterjee\xe2\x80\x99s approach be reconciled with Justice Thomas\xe2\x80\x99\nmajority opinion (at 1013):\nThe focus of the separability inquiry is on the extracted feature and not on any aspects of the\nuseful article that remain after the imaginary extraction. The statute does not require the\ndecisionmaker to imagine a fully functioning useful article without the artistic feature.\n\nCopyright and design in the wake of Star Athletica, L.L.C. v. Varsity\nBrands\nHow does Star Athletica change the law? One view is that Star Athletica is a significant change\nto copyright law. For example, Christopher Buccafusco and Mark Lemley argue that the\nCourt\xe2\x80\x99s opinion \xe2\x80\x9celiminates the threshold Congress imposed between useful and non-useful\narticles, and it alters the treatment of dual-nature features, which are now potentially\nprotectable.\xe2\x80\x9d They also contend that as a result of the second prong of the Star Athletica test,\n\xe2\x80\x9c PGS features are protectable simply if they can be depicted in some medium other than\nthat of a useful article.\xe2\x80\x9d114\nChristopher Buccafusco & Mark A. Lemley, Functionality Screens, 103\nVirginia Law Review, 1293, 1334\xe2\x80\x9336 (2017)\nWhile much of the Court\xe2\x80\x99s opinion remains mysterious--including how to determine\nwhether a feature is functional or not, or even whether a court should engage in that\ninquiry at all--its variation from accepted doctrine is fairly clear. For example, the\nCourt rejected the notion that only \xe2\x80\x9csolely artistic features\xe2\x80\x9d of a useful article are\nprotectable. The Court explained that a feature could be considered separable \xe2\x80\x9ceven\nif it makes [the] article more useful.\xe2\x80\x9d Once the PGS features are imagined away\nfrom the useful article, there is no requirement, according to the opinion, that what\nis \xe2\x80\x9c\xe2\x80\x98left behind\xe2\x80\x99 ... be a fully functioning useful article at all, much less an equally\nuseful one.\xe2\x80\x9d\nBecause Star Athletica does not consider the language of Section 101 requiring\nprotection only for non-functional aspects of the design, it is possible that courts\nwill treat the new conceptual separability test only as a first step in the functionality\ninquiry. While virtually everything will be separable under the Court\xe2\x80\x99s new test,\ncourts may--indeed, should--nonetheless filter out the functional aspects of those\nworks in a next step, as the statute commands.\nThus, the most charitable reading of the Court\xe2\x80\x99s opinion is that it flips copyright\nlaw\xe2\x80\x99s treatment of dual-nature features of PGS works. Where previously only those\n\nChristopher Buccafusco & Mark A. Lemley, Functionality Screens, 103 Virginia Law Review, 1293, 1332\xe2\x80\x931334\n(2017).\n114\n\n481\n\n\x0cfeatures that were purely non-functional were protectable, after Star Athletica, only\nthose aspects that are purely functional will be filtered out.\n\xe2\x80\xa6 a second possibility for rationalizing Star Athletica with the rest of copyright law is\nthat while there won\xe2\x80\x99t be much, if any, filtering under the conceptual separability\nrubric, courts can and will filter out functional elements on other grounds, like the\nidea-expression dichotomy and the exclusion of \xe2\x80\x9cprocesses\xe2\x80\x9d and \xe2\x80\x9csystems\xe2\x80\x9d under\nSection 102(b).\n\nAnother view is that Star Athletica may not be such a radicle change because it really does not\nsay anything at all. Consider the following critique in a recent law review note:\nCopyright Act of 1976-Useful Articles-Star Athletica, L.L.C. v. V arsity\nBrands, Inc., 131 Harvard Law Review, 363, 370\xe2\x80\x9371 (2017):\nAdditionally, the Court may have invited various interpretations of the opinion by\nnot providing more guidance on how the text of \xc2\xa7 101 should be construed. The\nCourt\xe2\x80\x99s test does little more than restate the statute\xe2\x80\x99s language.\n\xe2\x80\x9cFeatures that can be identified separately\xe2\x80\x9d becomes \xe2\x80\x9cfeatures [that] can be\nperceived as a ... separate\xe2\x80\x9d work. \xe2\x80\x9cFeatures that ... are capable of existing\nindependently\xe2\x80\x9d becomes \xe2\x80\x9cfeatures ... [that] would qualify as a protectable ... work.\xe2\x80\x9d\nParaphrases are ordinarily helpful, as they provide other ways of thinking through a\nquestion. But the number of approaches developed by lower courts renders it\n\xe2\x80\x9cobvious\xe2\x80\x9d that there was no settled way to understand the statute\xe2\x80\x99s text, how it\nshould be applied, or under what standard. A gloss on the text will likely not resolve\nthose questions.\n\nYeezy Boost\nOn May 8, 2019 the Copyright Office overturned an examination decision refusing to\nregister \xe2\x80\x9c2-D artwork and sculpture claims\xe2\x80\x9d for two pairs of sneakers, the Yeezy Boost 350\nVersion 1 and Yeezy Boost 350 Version 2.\nIn Adidas\xe2\x80\x99 first request for reconsideration, the Copyright Office took the view that the\nworks were useful articles. Applying the useful article doctrine the Office argued that\nalthough the works contained separable designs, \xe2\x80\x9cthose designs did not meet the originality\nrequirement as they consisted of simple shapes arranged into common, expected patterns in\nvery simple color schemes.\xe2\x80\x9d However, after Adidas\xe2\x80\x99 second request, the Copyright Office\nReview Board applied the law as follows:\nRe: Second Request for Reconsideration for Refusal to Register Yeezy Boost\n350 Version 1, Yeezy Boost 350 Version 2\n\xe2\x80\xa6 As an initial matter, copyright does not protect useful articles as such. 17 U.S.C. \xc2\xa7\n101. Under the Copyright Act, a useful article is an \xe2\x80\x9carticle having an intrinsic\nutilitarian function that is not merely to portray the appearance of the article or to\nconvey information\xe2\x80\x9d and \xe2\x80\x9c[a]n article that is normally a part of a useful article is\n[also] considered a \xe2\x80\x98useful article.\xe2\x80\x99\xe2\x80\x9d Id. Importantly, however, an artistic feature\napplied on or incorporated into a useful article may be eligible for copyright\nprotection if it: \xe2\x80\x9c(1) can be perceived as a two- or three-dimensional work of art\nseparate from the useful article and (2) would qualify as a protectable pictorial,\ngraphic, or sculptural work\xe2\x80\x94either on its own or fixed in some other tangible\nmedium of expression\xe2\x80\x94if it were imagined separately from the useful article into\nwhich it is incorporated.\xe2\x80\x9d Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002,\n\n482\n\n\x0c1007 (2017); see also Mazer v. Stein, 347 U.S. 201 (1954) (holding ballet-dancershaped lamp base to be copyrightable).\nThe Board agrees that the Works can be perceived as two- or three-dimensional\nworks of art separate from the useful article, that is, the sneaker. Thus, the only\nremaining issue is whether the Works are protectable as original works of authorship\nif imagined separately from the sneaker.\nThe Board believes that the Works contain a sufficient amount of original and\ncreative two- and three-dimensional authorship for registration. Our decision to\nregister the Works is based on the low standard for copyrightability articulated in\nFeist Publications v. Rural Telephone Service Co., 499 U.S. 340 (1991). But the Board\xe2\x80\x99s\ndecision relates only to the Works as a whole, and does not extend individually to\nany of the standard and common elements depicted in the Works such as lines,\nstripes, or swirl designs. \xe2\x80\xa6 When reviewed as a whole, the Works reflect that the\ncommon constituent shapes were \xe2\x80\x9ccombined in a distinctive manner indicating\nsome ingenuity.\xe2\x80\x9d Atari Games Corp. v. Oman, 888 F.2d 878, 883 (D.C. Cir. 1989).\nThus, the Board believes that the Works contain a sufficient amount of original and\ncreative authorship.\nJoseph Petersen,\nMay 8, 2019 in the Copyright Office\xe2\x80\x99s\nFigure 18 Various Illustrations\nofEsq.\nthe Yeezy Boost 350 Version 1 Included\nKilpatrick Townsend & Stockton, LLP\nJoseph\nPetersen,\nEsq.\nMay\n8,\n2019\nLetter Granting Adidas\xe2\x80\x99 Second Request for Reconsideration\nKilpatrick Townsend & Stockton, LLP\n\nAppendix A\n\nAppendix A\n\nYeezy Boost 350 Version 1\n\nYeezy Boost 350 Version 1\n\nJoseph Petersen, Esq.\nKilpatrick Townsend & Stockton, LLP\n\nMay 8, 2019\n\n-4-\n\n-4-\n\n483\n-5-\n\n\x0cKilpatrick Townsend & Stockton, LLP\n\nJoseph Petersen, Esq.\nKilpatrick Townsend & Stockton, LLP\n\nMay 8, 2019\n\n-5-\n\nNotes and questions\n\n-6-\n\n(1) Would it be fair to say that if the shape of the Yeezy Boost can be perceived as two- or\nthree-dimensional works of art separate from the Yeezy qua useful article that the first limb\n-6of the Star Athletica has no screening function at all?\n(2) The Board says that, having passed the first limb of the Star Athletica test, \xe2\x80\x9cthe only\nremaining issue is whether the Works are protectable as original works of authorship if\nimagined separately from the sneaker.\xe2\x80\x9d But notice that the Board does not explain at all how\nor why the Yeezy Works can be \xe2\x80\x9cimagined separately from the sneaker\xe2\x80\x9d, instead it simply\nsays that they exhibit enough originality to get past the low threshold of creativity required\nunder Feist.\nRecent cases\n(1) In Silvertop Assocs. v. Kangaroo Manufacturing (August 1, 2019) the Third Circuit held under\nStar Athletica that a banana costume is (likely) copyrightable, i.e. original and non-utilitarian.\n\n484\n\n\x0cFigure 19 Appendix A from Silvertop v. Kangaroo\n\nAPPENDIX A\n\n16\n\n485\n\n\x0c14. COPYRIGHT IN COMPUTER SOFTWARE\nCopyright in Computer Programs under Berne and TRIPs\nThe Berne Convention does not address the copyrightability of software. However, by 1994\nseveral countries had included computer software within their concept of literary works\xe2\x80\x94\neither through judicial decisions recognizing software as yet another written form and thus a\ntype literature, or through an explicit amendment to the copyright law.\nArticle 10 of the TRIPs Agreement, which was strongly championed by the United States,\nrequires member nations to protect computer programs, whether in source code or object\ncode,115 as literary works under the Berne Convention.\nTRIPs Article 10(1)\nComputer programs, whether in source or object code, shall be protected as literary\nworks under the Berne Convention (1971).\n\nAn overview of copyright protection for computer software in the United\nStates\nCopyright protection for computer software makes sense for several reasons. First, source\ncode is clearly a form of writing and usually contains phrases and comments that would be\nrecognized as expressive\xe2\x80\x94although much of what is recognizably expressive is actually\nunnecessary for the program to run. Second, like many other types of copyrighted works,\ncomputer software can take enormous time and effort to create, but once created it is easily\ncopied. Third, at the time the TRIPs Agreement was being negotiated, the patentability of\ncomputer software was quite uncertain. In fact, although there is a general consensus that\nsoftware is to some extent patentable, the extent of patent protection for software remains\ncontroversial and uncertain\xe2\x80\x94at least in the United States.\nNonetheless, copyright protection for computer software raises some inherent\ncontradictions. Writing software obviously involves considerable human ingenuity, however,\nno one buys software to appreciate the expressive attributes of its source code. 116 The\ndifference between software and other forms of written communication can be\ndemonstrated by asking the question, \xe2\x80\x9cwhat makes it good?\xe2\x80\x9d For most works of authorship,\nthere really is no consensus. For example, many people would say the DaVinci Code was a\ngood book, and many would not. The two sides of that debate have very different ideas\nabout what makes something a good book. However, computer scientists and software\nengineers will inevitably respond that good code is simple, readable, efficient, and well\nstructured. No one says that software should be expressive, moving, that it should speak to\nThe computer code that programmers and software engineers write is called source code. Source code is\nhuman-readable by those familiar with the relevant programming language. However, source code does not\nactually do anything inside a computer. For a computer to do anything, instructions written in source code\nmust be translated into a series of ones and zeros called object code or machine code.\n115\n\nPamela Samuelson, et al., A Manifesto Concerning the Legal Protection of Computer Programs, 94 COLUM. L. REV.\n2308, 2317 (1994) (\xe2\x80\x9cNo one would want to buy a program that did not behave, i.e., that did nothing, no matter\nhow elegant the source code \xe2\x80\x98prose\xe2\x80\x99 expressing that nothing.\xe2\x80\x9d).\n116\n\n486\n\n\x0cthe human condition, or have emotional resonance. Software is primarily functional and\ngood software is good because it functions well and does things that people want done. This\ncreates a \xe2\x80\x9cparadox \xe2\x80\xa6 in that software\xe2\x80\x99s value is usually measured precisely by its\nfunctionality and efficiency, aspects expressly excluded from copyright protection. In light of\nthat disconnect, judges are faced with the prospect of having to fit a square peg into a round\nhole.\xe2\x80\x9d117\nThe importance of function in software raises some obvious questions with respect to\nSection 102(b) of the Copyright Act.\n17 U.S. Code \xc2\xa7 102(b)\nIn no case does copyright protection for an original work of authorship extend to\nany idea, procedure, process, system, method of operation, concept, principle, or\ndiscovery, regardless of the form in which it is described, explained, illustrated, or\nembodied in such work.\n\nSection 102(b) of the 1976 Copyright Act clearly states that copyright protection does not\nextend to any \xe2\x80\x9cprocess, system, [or] method of operation . . . .\xe2\x80\x9d Indeed, exclusive rights in\nprocesses and methods of operation are generally left to the patent system. And yet, thanks\nto an amendment made in 1980, the Copyright Act clearly extends copyright protection to\ncomputer programs, which are defined as \xe2\x80\x9ca set of statements or instructions to be used\ndirectly or indirectly in a computer in order to bring about a certain result.\xe2\x80\x9d\n17 U.S. Code \xc2\xa7 101\nComputer program ~ \xe2\x80\x9ca set of statements or instructions to be used directly or\nindirectly in a computer in order to bring about a certain result.\xe2\x80\x9d\n\nA \xe2\x80\x9cset of instructions\xe2\x80\x9d used \xe2\x80\x9cin order to bring about a certain result\xe2\x80\x9d appears to be the very\nessence of the \xe2\x80\x9cprocess, system, method of operation\xe2\x80\x9d exclusion under Section 102(b).\nHow should this contradiction be resolved? Copyright provides the software industry with a\nuseful set of exclusive rights and robust remedies against infringement. Copyright is\nextremely useful in taking action against blatant piracy where the entirety of a computer\nprogram is simply copied without authorization. 118 Given that most software is only\ndistributed in object code and that object code does not lend itself to partial reproduction,\nthis may be the most important aspect of copyright law for the computer industry.\nSoftware should not be denied copyright protection because it is functional\xe2\x80\x94that would\ncontradict Congress\xe2\x80\x99 clearly expressed legislative intent\xe2\x80\x94but the scope of copyright\nprotection for software must be carefully policed to ensure that it does not confer a patent\nlike exclusive right on particular functional features. The modern software industry has\nthrived on interoperability and open competition. Allowing copyright protection to confer\nexclusive rights on particular programming methods, functions, or conceptual elements such\n\nLothar Determann & David Nimmer, Software Copyright\xe2\x80\x99s Oracle from the Cloud, 30 BERKELEY TECH.\nL.J. 161, 169-70 (2015)\n117\n\nComputer Associates v. Altai, 982 F.2d at 702 (\xe2\x80\x9cIt is now well settled that the literal elements of computer\nprograms, i.e., their source and object codes, are the subject of copyright protection.\xe2\x80\x9d) See also Johnson\nControls, 886 F.2d at 1175 (source and object code have been \xe2\x80\x9cconsistently held protected by a copyright on\nthe program.\xe2\x80\x9d)\n118\n\n487\n\n\x0cas the trashcan or pull down menu in a graphical user interface would make the software\nindustry far less dynamic and competitive.\n\nThe history of software copyright litigation in the United States\nProfessor Peter Menell provides an excellent overview of the history of software copyright\nlitigation from the early 1980\xe2\x80\x99s up to and including the Federal Circuit\xe2\x80\x99s decision in Oracle v.\nGoogle.\nPeter S. Menell, API Copyrightability Bleak House: Unraveling and Repairing the\nOracle v. Google Jurisdictional Mess, 31 Berkeley Technology Law Journal, 1515\n(2016)\nExtracted and adapted with permission\n\nThe rapid growth of the microcomputer and consumer software industries fueled\nmore than a decade of litigation centered on the scope of copyright protection for\ncomputer software. These cases spanned Apple\xe2\x80\x99s litigation to bar clones of its\nbreakthrough Apple II computer, Apple\xe2\x80\x99s effort to block Microsoft Windows from\ncompeting with the Macintosh\xe2\x80\x99s graphical user interface, mobile phone companies\xe2\x80\x99\ncopyright claims to codes for cellular phone networks, Sega\xe2\x80\x99s effort to control access\nto its Genesis videogame console, and Lotus\xe2\x80\x99s effort to control the menu command\nhierarchy of the Lotus 1-2-3 spreadsheet program. These cases, and many other\nsoftware copyright battles, centered on the idea-expression dichotomy: to what\nextent could platform innovators protect application program interfaces through\ncopyright protection?\nThe early cases suggested a broad scope of copyright protection for computer\nsoftware and interoperable features. The first major software copyright cases pitted\nApple Computer Corporation, then a young, break-out microcomputer company,\nagainst brash competitors offering inexpensive \xe2\x80\x9cinteroperable\xe2\x80\x9d Apple II clones.119\nThe clone makers quickly entered the market by copying, bit by bit, Apple\xe2\x80\x99s\noperating system and application programs. The defendants argued that copyright\nprotection did not extend to non-human readable (object code) formats of computer\nsoftware and that the idea-expression doctrine barred copyright protection for\noperating system programs. They further argued that copyright protection should\nnot stand in the way of selling computers that can run programs written for the\nApple II.\nThe courts had little difficulty finding that copying the entirety of sophisticated\ncomputer programs constituted copyright infringement. In reaching these findings,\nhowever, the courts went overboard in their dicta. Addressing the defendant\xe2\x80\x99s\ninteroperability argument, the Third Circuit opined that \xe2\x80\x9ctotal compatibility with\nindependently developed application programs ... is a commercial and competitive\nobjective which does not enter into the somewhat metaphysical issue of whether\nSee Apple Comput., Inc. v. Franklin Comput. Corp., 545 F. Supp. 812 (E.D. Pa. 1982), rev\xe2\x80\x99d, 714 F.2d 1240\n(3d Cir. 1983); Apple Comput., Inc. v. Formula Int\xe2\x80\x99l, Inc., 562 F. Supp. 775 (C.D. Cal. 1983), aff\xe2\x80\x99d, 725 F.2d\n521 (9th Cir. 1984).\n119\n\n488\n\n\x0cparticular ideas and expressions have merged.\xe2\x80\x9d 120 Since two entirely different\nprograms can achieve the same \xe2\x80\x9ccertain result[s]\xe2\x80\x9d--for example, generate the same\nset of protocols needed for interoperability--the court was not justified in making\nsuch an expansive statement about the scope of copyright protection for computer\nprogram elements. Given the verbatim copying of millions of bits of object code,\nthere was no need to address the interoperability issue. The defendant offered no\nexplanation of which elements of the program were protectable and which were not.\nThe next major software copyright appellate decision also arose from the Third\nCircuit. In Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir.\n1986) a computer programmer sued the dental laboratory, for which it had\ndeveloped a computer program for managing its bookkeeping functions, for\ncopyright infringement after an officer of the laboratory set out to create a version of\nthe program that would run on other computer systems. The competing software did\nnot literally copy Whelan\xe2\x80\x99s code, but there were overall structural similarities between\nthe two programs. To distinguish protectable expression from unprotectable idea,\nthe court reasoned:\nThe purpose or function of a utilitarian work would be the work\xe2\x80\x99s idea, and\neverything that is not necessary to that purpose or function would be part of the\nexpression of the idea. Where there are many means of achieving the desired\npurpose, then the particular means chosen is not necessary to the purpose; hence,\nthere is expression, not idea.121\n\nIn applying this rule, the court defined the idea as \xe2\x80\x9cthe efficient management of a\ndental laboratory,\xe2\x80\x9d which could be expressed in countless ways. Drawing the ideaexpression dichotomy at such a high level of abstraction implies an expansive scope\nof copyright protection. Furthermore, the court\xe2\x80\x99s conflation of merger analysis and\nthe idea-expression dichotomy implicitly allows copyright protection of procedures,\nprocesses, systems, and methods of operation that \xc2\xa7 102(b) expressly excludes. \xe2\x80\xa6\nCommentators roundly criticized the Whelan test, and other courts began to refine\nthe scope of copyright protection to comport with the fundamental principles\n(including limitations) of copyright protection. A few months after the Whelan\ndecision, the Fifth Circuit confronted a similar claim of copyright infringement based\nupon structural similarities between two programs designed to provide cotton\ngrowers with information regarding cotton prices and availability, accounting services,\nand a means for conducting cotton transactions electronically. 122 In declining to\nfollow the Whelan approach, the court found that the similarities in the programs\nwere dictated largely by standard practices and forms in the cotton market--what the\ncourt called \xe2\x80\x9cexternalities\xe2\x80\x9d--which constitute unprotectable ideas.123\n\n120\n\nSee Apple Computer, Inc. v. Franklin Computer. Corp., 714 F.2d 1240, 1253 (3d Cir. 1983).\n\n121\n\nId. at 1236 (emphasis in original) (citations omitted).\n\n122\n\nPlains Cotton Coop. Ass\xe2\x80\x99n v. Goodpasture Computer Serv., Inc., 807 F.2d 1256 (5th Cir. 1987).\n\nId. at 1262 (finding the commonly used \xe2\x80\x9ccotton recap sheet,\xe2\x80\x9d for summarizing basic transaction information,\nto be unprotectable).\n123\n\n489\n\n\x0cIn 1992, the Second Circuit adapted Learned Hand\xe2\x80\x99s seminal abstraction-filtrationcomparison framework 124 to computer software analysis. 125 Computer Associates\n(CA), a leading mainframe software provider, had developed SCHEDULER, a jobscheduling program that worked with three IBM mainframe computers. Part of the\nsuccess of this program was that it had a subcomponent, called ADAPTER, which\nwould interoperate with any of the three IBM mainframes (DOS/VSE, MVS, and\nVM/CMS). As a result, the user did not need to customize its programs for each of\nthe IBM mainframes. ADAPTER ensured that programs written for SCHEDULER\nwould interoperate with any of the three IBM mainframes.\nIn developing a competing job scheduling computer program (ZEKE), which had its\nown code layer (OSCAR) for interoperating with the three IBM mainframes, Altai\nrelied on James Arney, a former CA programmer. Unbeknownst to Altai\xe2\x80\x99s\nmanagement, Arney improperly copied 30% of OSCAR from CA\xe2\x80\x99s ADAPTER\nprogram. When Altai\xe2\x80\x99s executives learned of the illicit copying, the company initiated\na clean-room rewrite of the program. Drawing on the Whelan decision, CA\nchallenged the revised version of ZEKE based on structural similarities. The district\ncourt criticized Whelan\xe2\x80\x99s \xe2\x80\x9csimplistic test\xe2\x80\x9d for determining similarity between\ncomputer programs, rejecting the notion that there is but one idea per program and\nthat as long as there were alternative ways of expressing that one idea, then any\nparticular version was protectable under copyright law. Focusing on the various\nlevels of the computer programs at issue, the court determined that the similarities\nbetween the programs were dictated by external factors--such as the interface\nspecifications of the IBM operating system and the demands of functionality-- and\nhence no protected code was infringed.\nThe Second Circuit decision fleshed out the analytical framework for determining\ncopyright infringement of computer program code:\nIn ascertaining substantial similarity ... a court would first break down the allegedly\ninfringed program into its constituent structural parts. Then, by examining each of\nthese parts for such things as incorporated ideas, expression that is necessarily\nincidental to those ideas, and elements that are taken from the public domain, a\ncourt would then be able to sift out all nonprotectable material. Left with a kernel,\nor perhaps kernels, of creative expression after following this process of elimination,\nthe court\xe2\x80\x99s last step would be to compare this material with the structure of an\nallegedly infringing program.126\n\nThe court\xe2\x80\x99s abstraction-filtration-comparison test recognized that an idea could exist\nat multiple levels of a computer program and not solely at the most abstract level.\nFurthermore, the ultimate comparison is not between the programs as a whole but\nrather between a program\xe2\x80\x99s protectable elements and those that allegedly copy them.\nOf most importance with regard to fostering interoperability, the court held\ncopyright protection did not extend to those program elements where the\nprogrammer\xe2\x80\x99s freedom to choose is:\n124\n\nNichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930).\n\n125\n\nSee Computer Assocs. Int\xe2\x80\x99l v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992).\n\n126\n\nAltai, 982 F.2d at 706.\n\n490\n\n\x0ccircumscribed by extrinsic considerations such as (1) mechanical specifications of\nthe computer on that a particular program is intended to run; (2) compatibility\nrequirements of other programs with which a program is designed to operate in\nconjunction; (3) computer manufacturers\xe2\x80\x99 design standards; (4) demands of the\nindustry being serviced; and (5) widely accepted programming practices within the\ncomputer industry.127\n\nDirectly rejecting the dictum in Apple v. Franklin, the Second Circuit recognized that\nexternal factors such as interface specifications, de facto industry standards, and\naccepted programming practices are not protectable under copyright law. The\nSecond Circuit test evaluates these external factors at the time of the allegedly\ninfringing activities (i.e., ex post), not at the time that the first program is written.\nCommentators warmly embraced the Altai decision, and courts have universally\nadopted the abstraction-filtration-comparison. The Ninth Circuit\xe2\x80\x99s decision in Sega\nEnterprises Ltd. v. Accolade128 expressly recognized the legitimacy of deciphering and\ncopying lockout codes for purposes of developing interoperable products. Sega\ndeveloped a successful video game platform (Genesis) for which it licensed access to\nvideo game developers. Accolade, a manufacturer of video games, wanted to\ndistribute versions of its games on the Genesis platform. It did not, however, want\nto limit distribution exclusively to Genesis, as Sega required. Rather than license\nSega\xe2\x80\x99s code, Accolade reverse engineered the access code through a painstaking\neffort that entailed making hundreds of intermediate copies of Sega\xe2\x80\x99s computer code.\nAccolade then incorporated only the code (approximately 25 bytes in games\ncontaining between 500,000 and 1.5 million bytes) necessary to achieve\ninteroperability with the Genesis platform.129\nSega sued Accolade for copyright infringement. Given the relatively small amount of\nSega code in the Accolade game cartridges, Sega focused its copyright claim on the\nmaking of intermediate copies of its full computer program made during the process\nof reverse engineering. The district court rejected Accolade\xe2\x80\x99s argument that such\nintermediate copies constituted fair use and granted a preliminary injunction.130\nThe Ninth Circuit reversed, holding that \xe2\x80\x9cthe functional requirements for\ncompatibility with the Genesis [video game console are] aspects of Sega\xe2\x80\x99s programs\nthat are not protected by copyright.\xe2\x80\x9d131 Building on that foundation, the court ruled\nthat \xe2\x80\x9cdisassembly of object code in order to gain an understanding of the ideas and\nfunctional concepts embodied in the code is a fair use that is privileged by section\n107 of the Act.\xe2\x80\x9d132 The court determined that policies underlying the Copyright Act\nId. at 709-10. The court observed that \xe2\x80\x9cwhile, hypothetically, there might be a myriad of ways in which a\nprogrammer may effectuate certain functions within a program-i.e., express the idea embodied in a given\nsubroutine-efficiency concerns may so narrow the practical range of choice as to make only one or two forms\nof expression workable operations.\xe2\x80\x9d Id. at 708.\n127\n\n128\n\n977 F.2d 1510 (9th Cir. 1992) [hereinafter Sega Enters. II].\n\n129\n\nId. at 1516.\n\nSee Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 1397-1400 (N.D. Cal. 1992), rev\xe2\x80\x99d, 977 F.2d 1510\n(9th Cir. 1992).\n130\n\n131\n\nSega Enters. II, 977 F.2d at 1522 (citing 17 U.S.C. \xc2\xa7 102(b) (2012)).\n\n132\n\nId. at 1517-18.\n\n491\n\n\x0cauthorize disassembly of copyrighted object code and the making of intermediate\ncopies to discover unprotectable elements of code. The Ninth Circuit reaffirmed and\nexpanded this doctrine in Sony Computer Entertainment, Inc. v. Connectix Corp.133\nThe Northern District of California and the Ninth Circuit applied the Altai\nframework to the graphical user interface features of a computer program in Apple\nComputer, Inc. v. Microsoft Corp.134 Apple Computer alleged that Microsoft\xe2\x80\x99s Windows\noperating system infringed Apple\xe2\x80\x99s copyrights in the desktop graphical user interface\nof its Macintosh computer system. A licensing agreement authorizing the defendants\xe2\x80\x99\nuse of aspects of Apple\xe2\x80\x99s graphical user interface muddied the copyright issue. The\ncourt determined, however, that the licensing agreement was not a complete defense\nto the copyright infringement claims and consequently analyzed the scope of\ncopyright protection for a range of audiovisual display elements.\nThe district court found that the unlicensed similarities between Apple\xe2\x80\x99s works and\nMicrosoft\xe2\x80\x99s Windows were either unprotectable or subject to at least one of\ncopyright law\xe2\x80\x99s limiting doctrines. In evaluating the compilation of these elements as\na whole, the court applied the \xe2\x80\x9cvirtual identity\xe2\x80\x9d standard and determined that no\ninfringement had occurred. On appeal, the Ninth Circuit affirmed the district court\xe2\x80\x99s\ndissection of Apple\xe2\x80\x99s graphical user interface to determine which elements are\nprotectable, filtering of unprotectable elements, and application of the \xe2\x80\x9cvirtual\nidentity\xe2\x80\x9d standard.\nThe copyrightability of command systems for computer software arose in litigation\nover spreadsheet technology. Building upon the success of the VisiCalc program\ndeveloped for the Apple II computer, Lotus Corporation marketed a spreadsheet\nprogram for the IBM PC platform--Lotus 1-2-3--which offered many of VisiCalc\xe2\x80\x99s\nfeatures and commands while integrating charting and database capabilities. Lotus 12-3 quickly became the market leader for spreadsheets running on IBM and IBMcompatible machines. As a result, knowledge of the program became especially\nvaluable for accountants and managers. The 1-2-3 command hierarchy provided a\nlogically structured menu of more than 200 commands and enabled users to develop\ncustomized programs (called macros) for their particular accounting and business\nplanning functions. These investments locked users into the 1-2-3 command\nstructure as their library of macros grew. By the late 1980s, software developers\nseeking to enter the spreadsheet market could not ignore the large premiums that\nmany consumers placed on transferring their investments in the 1-2-3 system to a\nnew spreadsheet environment, even where a new spreadsheet product offered\nsignificant technical improvements over the Lotus spreadsheet.\nAfter three years of intensive development efforts, Borland International, developer\nof several successful software products including Turbo Pascal and Sidekick,\nintroduced Quattro Pro, its entry into the spreadsheet market. Quattro Pro made\nsubstantial design and operational improvements and earned accolades in the\ncomputer product review magazines. Quattro Pro offered a new interface for its\nusers, which many purchasers of spreadsheets preferred over the 1-2-3 interface.\n133\n\n203 F.3d 596 (9th Cir. 2000)\n\n134\n\n799 F. Supp. 1006 (N.D. Cal. 1992), aff\xe2\x80\x99d in part, rev\xe2\x80\x99d in part, 35 F.3d 1435 (9th Cir. 1994).\n\n492\n\n\x0cNonetheless, because of the large number of users already familiar with the 1-2-3\ncommand structure and those who had made substantial investments in developing\nmacros to run on the 1-2-3 platform, Borland considered it essential to offer an\noperational mode based on the 1-2-3 command structure as well as macro\ncompatibility. Borland\xe2\x80\x99s visual representation of the 1-2-3 command mode\nsubstantially differed from the 1-2-3 screen displays.\nThe lower court held that a menu command structure was protectable if there were\nmany such structures available. 135 The court also found that Borland was not\npermitted to achieve macro compatibility with the 1-2-3 product, distinguishing the\ntreatment of external constraints noted in the Altai decision on the ground that such\nconstraints had to exist at the time that the first program was created. The First\nCircuit reversed, holding that the menu command hierarchy was a \xe2\x80\x9cmethod of\noperation\xe2\x80\x9d that fell within the copyright exclusion set forth in \xc2\xa7 102(b).136 The U.S.\nSupreme Court granted certiorari and affirmed without opinion by an equally divided\nvote.137\nSubsequent appellate decisions reached similar outcomes, although they have not\nfully subscribed to the First Circuit\xe2\x80\x99s reasoning.138 Thus, after an inauspicious start,\nthe federal courts implemented a balanced framework for both protecting computer\nsoftware against piracy and interpreting the idea-expression dichotomy in such a way\nto ensure that copyright law does not extend to functional features of computer\ntechnology. Following resolution of the first API copyright war, the software\nengineering community believed that copyright law did not protect high-level\nfunctions, labeling conventions, and APIs. Software copyright litigation subsided,\nand there were no new major API copyright judicial decisions until Oracle v. Google\nmore than a decade later.\n\nSee Lotus Dev. Corp. v. Borland Int\xe2\x80\x99l, Inc., 831 F. Supp. 202, 215 (D. Mass. 1993) (\xe2\x80\x9c[A]lthough functional\nconsiderations may have some effect on the design of a menu tree, they do not impose any practical limitation\non the possible forms of expression to a number far enough short of infinity that any way of expressing the\nnumber in English words has come into common usage\xe2\x80\x9d), rev\xe2\x80\x99d, 49 F.3d 807 (1st Cir. 1995), aff\xe2\x80\x99d without\nopinion by equally divided court, 516 U.S. 233 (1996).\n135\n\nLotus Dev. Corp. v. Borland Int\xe2\x80\x99l., Inc., 49 F.3d 807, 814-15 (1st Cir. 1995), aff\xe2\x80\x99d without opinion by equally\ndivided court, 516 U.S. 233 (1996).\n136\n\nLotus Dev. Corp. v. Borland Int\xe2\x80\x99l, Inc., 516 U.S. 233 (1996) (Justice Stevens recused himself from\nparticipation in consideration of the case). As a result, the First Circuit\xe2\x80\x99s Lotus decision remained the law in the\nFirst Circuit but did not bind other circuits.\n137\n\nSee Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1373-74 (10th Cir. 1997) (holding that a computer system for\nautomating the selection of telephone long-distance carrier and remotely activating optional\ntelecommunications features lacked the minimal degree of creativity to qualify for copyright protection and\nshould be denied copyright protection under the sc\xc3\xa8nes \xc3\xa0 faire doctrine because such systems are largely dictated\nby external factors including compatibility requirements and industry practices; but declining to hold that menu\ncommand hierarchies are categorically excluded from copyright protection); MiTek Holdings, Inc. v. ARCE\nEng\xe2\x80\x99g Co., 89 F.3d 1548, 1556-57 (11th Cir. 1996) (holding that the menu and submenu command structure of\na software program for designing wood trusses for the framing of building roofs was uncopyrightable under \xc2\xa7\n102(b) of the Copyright Act because it represents a process).\n138\n\n493\n\n\x0cThe Oracle v. Google Cases\nThe extent to which copyright should protect more abstract features of computer software\nwas thrown into doubt by the Federal Circuit\xe2\x80\x99s decision in Oracle America, Inc. v. Google Inc.,\n750 F.3d 1339 (Fed. Cir. 2014).\nThe case concerns Google\xe2\x80\x99s copying of the Java APIs (application protocol interfaces) that\nare part of the widely used Java programming language as part of its Android mobile phone\noperating system. When Google developed its android mobile phone operating system it\nrewrote almost all of the code necessary to make third party programs work on a mobile\nphone. However, to enable programmers familiar with Java to easily port their programs to\nthis new environment, Google used the same declarations \xe2\x80\x93 effectively the same names for\nvarious commands \xe2\x80\x93 as those contained in Java. The case is difficult because although\nGoogle appears to have only copied what was necessary to make its independently written\nsoftware work with applications written in Java, that turns out to be a very large amount of copying.\nIn 2012, the district court in Oracle America, Inc. v. Google Inc. ruled that the Java APIs (or\napplication protocol interfaces) that were part of the widely used Java programming language\nare not separately copyrightable.139 In 2014, the Federal Circuit reversed the district court\xe2\x80\x99s\nruling that the structure, sequence, and organization of the 37 Java APIs were not\ncopyrightable and remanded the issue of fair use for retrial with revised jury instructions.140\nThe Federal Circuit\xe2\x80\x99s conclusion that the declaring code in the individual Java APIs and the\nstructure, sequence, and organization of the APIs as a whole were copyrightable. Seemed\nlike a major departure from settled Ninth Circuit precedent. The court\xe2\x80\x99s views on merger are\nparticularly interesting. The Federal Circuit saw no place for the application of copyright\xe2\x80\x99s\nlimiting doctrines to negate or diminish that copyrightability. It held (at 1358) that merger\nand sc\xc3\xa8nes \xc3\xa0 faire are affirmative defenses to infringement, not limitations on copyrightability.\nIn the Ninth Circuit, while questions regarding originality are considered questions\nof copyrightability, concepts of merger and scenes a faire are affirmative defenses to\nclaims of infringement.\n\nMoreover, the Federal Circuit said (at 1361) that merger would not apply in this case because\n\xe2\x80\xa6 merger cannot bar copyright protection for any lines of declaring source code\nunless Sun/Oracle had only one way, or a limited number of ways, to write them.\n\nThe court was saying in effect that was not interested in Google\xe2\x80\x99s choices after the fact, only\nthe fact that there were choices available to Sun (Oracle\xe2\x80\x99s predecessor in interest) at the time\nthe code was first created. The Federal Circuit also held that the short phrases doctrine141 did\nnot bar copyright protection for compilations of words and short phrases as reflected in\ndeclaring code. The Federal Circuit argued that short phrases are copyrightable if they are\ncreative (!) and that an original combination of short phrases can be copyrightable.\nFurthermore, the Federal Circuit held that whether Google\xe2\x80\x99s software was \xe2\x80\x9cinteroperable\xe2\x80\x9d in\nsome sense with any aspect of the Java platform had no bearing on the threshold question of\n139\n\nOracle America, Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012).\n\n140\n\nOracle America, Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014)\n\nAs noted in a previous chapter, the Copyright Office has a long established practice of refusing registration\nto words and short phrases on this basis. See 37 C.F.R. \xc2\xa7 202.1(a) Material not subject to copyright.\n141\n\n494\n\n\x0cwhether Oracle\xe2\x80\x99s software was copyrightable. At 1367, the court of appeals explained that\nOracle\xe2\x80\x99s constraints at the time of writing are part of the copyrightability analysis, but\nGoogle\xe2\x80\x99s need to emulate Oracle is not.\nSection 102(b) does not, as Google seems to suggest, automatically deny copyright\nprotection to elements of a computer program that are functional. Instead, as noted,\nSection 102(b) codifies the idea/expression dichotomy and the legislative history\nconfirms that, among other things, Section 102(b) was \xe2\x80\x9cintended to make clear that\nthe expression adopted by the programmer is the copyrightable element in a\ncomputer program.\xe2\x80\x9d Therefore, even if an element directs a computer to perform\noperations, the court must nevertheless determine whether it contains any separable\nexpression entitled to protection.\n\nReally?\nThe Federal Circuit takes the position, that as long as the original authors made some\nchoices that were not entirely dictated by the program\xe2\x80\x99s functionality, those choices were\nentitled to copyright protection. As Professor Menell summarizes:\nThe Federal Circuit resurrected the flawed analysis in the Third Circuit\xe2\x80\x99s Apple and\nWhelan cases: analyzing copyrightability of computer software based on whether the\nhigh-level function(s) of the software could be implemented in multiple ways rather\nthan viewing a particularized set of software functions as an unprotectable \xe2\x80\x9cmethod\nof operation.142\n\nThe decision of Court of Appeals for the Federal Circuit in Oracle v. Google threatens to\nunsettle the law relating to computer software. Lothar Determann and David Nimmer\npredicted shortly after the decision:\nIf this precedent takes hold future defendants will have to prove fair use, merger, or\nsc\xc3\xa8nes \xc3\xa0 faire in order to vindicate copying of interfaces, lock-out codes, and other\ngateways to interoperability.143\n\nDo copyright cases belong at the Federal Circuit?\nOracle had initially alleged both patent and copyright infringement. Although the jury found\nthat Oracle\xe2\x80\x99s patents were not infringed, the patent issues in the case gave the Federal Circuit\njurisdiction to hear the appeal. The Federal Circuit is a specialized appellate court in the\nUnited States that was primarily created to hear patent cases. The Federal Circuit has very\nlittle experience with copyright law and its ruling struck many commentators as a remarkable\ndeparture from established Ninth Circuit precedent. Nevertheless, the Supreme Court\ndecided not to grant cert when Google appealed,144 although in light of the Federal Circuit\xe2\x80\x99s\n2018 decision there is a now new cert petition for the Court to consider.\nSubsequent jury trial\n\nPeter S. Menell, API Copyrightability Bleak House: Unraveling and Repairing the Oracle v. Google Jurisdictional Mess,\n31 BERKELEY TECH. L.J. 1515, 1557 (2016).\n142\n\nLothar Determann & David Nimmer, Software Copyright\xe2\x80\x99s Oracle from the Cloud, 30 Berkeley Tech. L.J. 161, 170\n(2015)\n143\n\nPetition for a Writ of Certiorari, Google, Inc. v. Oracle Am., Inc., 135 S. Ct. 2887 (2015), denying cert. to\n750 F.3d 1339 (Fed. Cir. 2014) (No. 14-410), 2014 WL 5319724.\n144\n\n495\n\n\x0cOn remand, the trial court put the question of whether Google\xe2\x80\x99s use of the Java declarations\nand the like constituted fair use to the jury. After an eight day trial and three days of\ndeliberation, the jury found that Google had \xe2\x80\x9cshown by a preponderance of the evidence\nthat its use in Android of the declaring lines of code and their structure, sequence, and\norganization from Java 2 Standard Edition Version 1.4 and Java 2 Standard Edition Version\n5.0 constitutes a \xe2\x80\x98fair use\xe2\x80\x99 under the Copyright Act.\xe2\x80\x9d145\nOracle America, Inc. v. Google LLC 886 F.3d 1179 (Fed. Cir. 2018)\nCircuit Judge O\xe2\x80\x99Malley\nThis copyright case returns to us after a second jury trial, this one focusing on the\ndefense of fair use. Oracle America, Inc. (\xe2\x80\x9cOracle\xe2\x80\x9d) filed suit against Google Inc.\n(\xe2\x80\x9cGoogle\xe2\x80\x9d) in the United States District Court for the Northern District of\nCalifornia, alleging that Google\xe2\x80\x99s unauthorized use of 37 packages of Oracle\xe2\x80\x99s Java\napplication programming interface (\xe2\x80\x9cAPI packages\xe2\x80\x9d) in its Android operating system\ninfringed Oracle\xe2\x80\x99s patents and copyrights.\nAt the first trial, the jury found that Google infringed Oracle\xe2\x80\x99s copyrights in the Java\nStandard Edition platform, but deadlocked on the question of whether Google\xe2\x80\x99s\ncopying was a fair use. After the verdict, however, the district court found that the\nAPI packages were not copyrightable as a matter of law and entered judgment for\nGoogle. Oracle Am., Inc. v. Google Inc., 872 F.Supp.2d 974 (N.D. Cal. 2012). Oracle\nappealed that determination to this court, and we reversed, finding that declaring\ncode and the structure, sequence, and organization (\xe2\x80\x9cSSO\xe2\x80\x9d) of the Java API\npackages are entitled to copyright protection. Oracle Am., Inc. v. Google Inc., 750 F.3d\n1339, 1348 (Fed. Cir. 2014). We remanded with instructions to reinstate the jury\xe2\x80\x99s\ninfringement verdict and for further proceedings on Google\xe2\x80\x99s fair use defense and, if\nappropriate, on damages.\nAt the second jury trial, Google prevailed on its fair use defense. After the jury\nverdict, the district court denied Oracle\xe2\x80\x99s motion for judgment as a matter of law\n(\xe2\x80\x9cJMOL\xe2\x80\x9d) and entered final judgment in favor of Google. Oracle filed a renewed\nmotion for JMOL and separately moved for a new trial. The district court denied\nboth motions in a single order. Consistent with these determinations, no damages\nverdict was rendered. Oracle now appeals from the district court\xe2\x80\x99s final judgment\nand its decisions denying Oracle\xe2\x80\x99s motions for JMOL and motion for a new trial.\nBecause we conclude that Google\xe2\x80\x99s use of the Java API packages was not fair as a\nmatter of law, we reverse the district court\xe2\x80\x99s decisions denying Oracle\xe2\x80\x99s motions for\nJMOL and remand for a trial on damages. We also dismiss Google\xe2\x80\x99s cross-appeal.\nI. BACKGROUND\nA. The Technology\nOracle\xe2\x80\x99s predecessor, Sun Microsystems, Inc. (\xe2\x80\x9cSun\xe2\x80\x9d), developed the Java platform\nfor computer programming in the 1990s, and Oracle purchased Sun in 2010. The\nJava platform is software used to write and run programs in the Java programming\nSee Special Verdict Form, Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 946 (N.D. Cal. 2012), rev\xe2\x80\x99d and\nremanded, 750 F.3d 1339 (Fed. Cir. 2014) (3:10-cv-03561-WHA) (filed May 7, 2012)\n145\n\n496\n\n\x0clanguage. It allows programmers to write programs that run on different types of\ncomputer hardware without having to rewrite them for each different type. With Java,\nprogrammers can \xe2\x80\x9cwrite once, run anywhere.\xe2\x80\x9d\nThe Java 2 Standard Edition (\xe2\x80\x9cJava SE\xe2\x80\x9d) of the platform includes, among other\nthings, the Java Virtual Machine and the Java Application Programming Interface\n(\xe2\x80\x9cAPI\xe2\x80\x9d). The Java API is a collection of pre-written Java source code programs for\ncommon and more advanced computer functions. These APIs allow programmers to\nuse the prewritten code to build certain functions into their own programs rather\nthan write their own code to perform those functions from scratch. They are\nshortcuts. The prewritten programs are organized into packages, classes, and\nmethods. Specifically, an API package is a collection of classes and each class\ncontains methods and other elements. Each method performs a specific function,\nsparing a programmer the need to write Java code from scratch to perform that\nfunction.\nTo include a particular function in a program, the programmer invokes the Java\n\xe2\x80\x9cdeclaring code.\xe2\x80\x9d As the district court explained, the declaring code is the line or\nlines of source code that \xe2\x80\x9cdeclares or defines (i) the method name and (ii) the\ninput(s) and their type as expected by the method and the type of any outputs.\xe2\x80\x9d After\nthe declaring code, each method includes \xe2\x80\x9cimplementing code,\xe2\x80\x9d which takes the\ninput(s) and gives the computer step-by-step instructions to carry out the declared\nfunction.\nBy 2008, Java SE included 166 API packages divided into 3,000 classes containing\nmore than 30,000 methods. At issue in this appeal are 37 API packages from Java SE\nVersion 1.4 and Version 5.0. We have already concluded that the declaring code and\nthe SSO of the 37 Java API packages at issue are entitled to copyright protection.\nThe Java programming language itself is free and available for use without\npermission. At this stage, it is undisputed that, to write in the Java programming\nlanguage, 62 classes (and some of their methods), spread across three packages\nwithin the Java API library, must be used. Otherwise the language itself will fail. It is\nalso undisputed that anyone using the Java programming language can write their\nown library of prewritten programs to carry out various functions.\nAlthough Oracle makes the Java platform freely available to programmers building\napplications (\xe2\x80\x9capps\xe2\x80\x9d), it devised a licensing scheme to attract programmers while\nsimultaneously commercializing the platform. In relevant part, Oracle charges a\nlicensing fee to those who want to use the APIs in a competing platform or embed\nthem in an electronic device. To preserve the \xe2\x80\x9cwrite once, run anywhere\xe2\x80\x9d philosophy,\nOracle imposes strict compatibility requirements on licensees. Oracle also made\navailable without charge under an open source license a version of Java called\n\xe2\x80\x9cOpenJDK.\xe2\x80\x9d Oracle maintains, however, that OpenJDK came with an important\ncatch: any company that improved on the packages in OpenJDK had to \xe2\x80\x9cgive away\nthose changes for free\xe2\x80\x9d to the Java community.\nThe evidence showed that Oracle licensed Java in 700 million PCs by 2005.\nAlthough Oracle never successfully developed its own smartphone platform using\nJava, it licensed Java SE for mobile devices. According to Oracle, the \xe2\x80\x9cmobile device\n\n497\n\n\x0cmarket was particularly lucrative,\xe2\x80\x9d and \xe2\x80\x9cJava quickly became the leading platform for\ndeveloping and running apps on mobile phones.\xe2\x80\x9d\nB. Google\xe2\x80\x99s Android Platform\nIn 2005, Google acquired Android, Inc. as part of a plan to develop a software\nplatform for mobile devices. That same year, Google and Sun began discussing the\npossibility of Google taking a license to use and adapt the Java platform for mobile\ndevices. The parties were unable to reach an agreement, in part because Google\nwanted device manufacturers to be able to use Oracle\xe2\x80\x99s APIs in Android for free\nwith no limits on modifying the code, which would jeopardize the \xe2\x80\x9cwrite once, run\nanywhere\xe2\x80\x9d philosophy.\nThe jury heard evidence that Google wanted to move quickly to develop a platform\nthat would attract Java developers to build apps for Android. The Android team had\nbeen working on creating its own APIs, but was unable to do so successfully. After\nnegotiations between the parties reached an impasse, Google elected to \xe2\x80\x9cdo Java\nanyway and defend its decision, perhaps making enemies along the way.\xe2\x80\x9d It is\nundisputed that Google copied verbatim the declaring code of the 37 Java API\npackages \xe2\x80\x94 11,500 lines of Oracle\xe2\x80\x99s copyrighted code. It also copied the SSO of the\nJava API packages. Google then wrote its own implementing code.\nGoogle announced its Android software platform for mobile devices in 2007, and\nthe first Android phones went on sale the following year. Google provides the\nAndroid platform free of charge to smartphone manufacturers and publishes the\nsource code for use without charge under an open source license. Although Google\ndoes not directly charge its users, Android has generated over $42 billion in revenue\nfrom advertising. Oracle explains that Android was \xe2\x80\x9cdevastating\xe2\x80\x9d to its licensing\nstrategy and that many of its customers switched to Android. Even customers who\nstayed with Oracle cited Android as a reason to demand discounts. The jury heard\nevidence that Amazon, which had entered into a license to use Java for its Kindle\ntablet device, switched to Android for the subsequently released Kindle Fire and\nthen used the existence of Android to leverage a steep discount from Oracle on the\nnext generation Kindle.\nC. Remand Proceedings\nIn the first appeal, we held that the declaring code and the SSO of the 37 API\npackages are entitled to copyright protection and ordered the district court to\nreinstate the jury\xe2\x80\x99s infringement finding. Oracle, 750 F.3d at 1381. We also considered\nOracle\xe2\x80\x99s argument that it was entitled to judgment as a matter of law on Google\xe2\x80\x99s fair\nuse defense. Although we found that Oracle\xe2\x80\x99s position was \xe2\x80\x9cnot without force,\xe2\x80\x9d and\nthat Google was overstating what could be fair use under the law, we found that the\nrecord evidence regarding the relevant fair use factors was insufficiently developed\nfor us to resolve the issue on appeal. Oracle, 750 F.3d at 1376. In doing so, we\npointed to sharp disputes between the parties, both legal and factual, including\nwhether Google\xe2\x80\x99s use was transformative, whether \xe2\x80\x9cfunctional aspects of the\npackage\xe2\x80\x9d and Google\xe2\x80\x99s \xe2\x80\x9cdesire to achieve commercial \xe2\x80\x98interoperability\xe2\x80\x99\xe2\x80\x9c weighed in\nfavor of the second and third factors, and whether Android caused market harm to\n\n498\n\n\x0cOracle. Id. at 1376-77. We concluded that \xe2\x80\x9cdue respect for the limit of our appellate\nfunction\xe2\x80\x9d required remand. Id. at 1376.\nDuring the pendency of the first appeal, Google\xe2\x80\x99s Android business expanded\nsignificantly.\nWhen the case returned to the district court, Oracle filed a supplemental complaint\nadding allegations of market harm and damages resulting from new versions of\nAndroid released since the original complaint.\nWhen the parties were unable to agree on the scope of the retrial, the district court\nlimited it to: (1) the two versions of Java SE that Oracle asserted in the first trial; and\n(2) released versions of Android used in smartphones and tablets \xe2\x80\x9cwhich Google ...\nagreed would be subject to the prior jury\xe2\x80\x99s adverse finding of infringement and\nwhich Oracle identified in its supplemental complaint.\xe2\x80\x9d The court explained that\nOracle retained the right to sue Google for infringement with respect to the other\nversions and implementations of Android in a separate trial or proceeding. The court\nalso granted Google\xe2\x80\x99s motion in limine to exclude all evidence of the new Android\nproducts.\nThe district court bifurcated the issue of fair use from willfulness and monetary\nremedies, and the trial on fair use began on May 10, 2016. After roughly one week of\nevidence and several days of deliberations, the jury found that Google\xe2\x80\x99s use of the\ndeclaring lines of code and the SSO of the 37 API packages constituted fair use.\nOracle moved for JMOL, which the district court denied. At the outset, the court\nnoted that Oracle stipulated before the jury \xe2\x80\x9cthat it was fair to use the 62 \xe2\x80\x98necessary\xe2\x80\x99\nclasses given that the Java programming language itself was free and open to use\nwithout a license.\xe2\x80\x9d \xe2\x80\x9cThat the 62 \xe2\x80\x98necessary\xe2\x80\x99 classes reside without any identification\nas such within the Java API library (rather than reside within the programming\nlanguage),\xe2\x80\x9d the court explained, \xe2\x80\x9csupports Google\xe2\x80\x99s contention that the Java API\nlibrary is simply an extension of the programming language itself and helps explain\nwhy some view the Java API declarations as free and open for use as the\nprogramming language itself.\xe2\x80\x9d Because Android and Java both \xe2\x80\x9cpresupposed the\nJava programming language in the first place,\xe2\x80\x9d the court noted that a jury reasonably\ncould have found that it \xe2\x80\x9cwas better for both to share the same SSO insofar as they\noffered the same functionalities, thus maintaining usage consistency across systems\nand avoiding cross-system confusion.\xe2\x80\x9d\nThe district court then considered each of the four statutory fair use factors. As to\nfactor one \xe2\x80\x94 the purpose and character of the use \xe2\x80\x94 the court concluded that a\nreasonable jury could have found that, although Google\xe2\x80\x99s use was commercial, it was\ntransformative because Google integrated only selected elements for mobile\nsmartphones and added its own implementing code. With respect to factor two \xe2\x80\x94\nthe nature of the copyrighted work \xe2\x80\x94 the district court found that a reasonable jury\ncould have concluded that, \xe2\x80\x9cwhile the declaring code and SSO were creative enough\nto qualify for copyright protection,\xe2\x80\x9d they were not \xe2\x80\x9chighly creative,\xe2\x80\x9d and that\n\xe2\x80\x9cfunctional considerations predominated in their design.\xe2\x80\x9d\nAs to factor three \xe2\x80\x94 the amount and substantiality of the portion used \xe2\x80\x94 the court\nconcluded that a reasonable jury could have found that \xe2\x80\x9cGoogle copied only so\n\n499\n\n\x0cmuch as was reasonably necessary for a transformative use,\xe2\x80\x9d and that the number of\nlines duplicated was minimal. Finally, as to factor four \xe2\x80\x94 market harm \xe2\x80\x94 the court\nconcluded that the jury \xe2\x80\x9ccould reasonably have found that use of the declaring lines\nof code (including their SSO) in Android caused no harm to the market for the\ncopyrighted works, which were for desktop and laptop computers.\xe2\x80\x9d The court\ndetermined that, on the record presented, the jury could have found for either side\nand that the jury was \xe2\x80\x9creasonably within the record in finding fair use.\xe2\x80\x9d\nOracle subsequently renewed its motion for JMOL and separately moved for a new\ntrial challenging several of the court\xe2\x80\x99s discretionary decisions at trial. The district\ncourt denied both motions in a single order. With respect to JMOL, the court simply\nstated that it denied Oracle\xe2\x80\x99s renewed motion for the same reasons it denied the\noriginal motion. With respect to the motion for a new trial, the court rejected\nOracle\xe2\x80\x99s argument that the court abused its discretion by limiting the evidence at trial\nto Google\xe2\x80\x99s use of Android in smartphones and tablets.\nThe court also rejected Oracle\xe2\x80\x99s allegation that Google engaged in discovery\nmisconduct [and] Oracle\xe2\x80\x99s argument that certain of the court\xe2\x80\x99s evidentiary rulings\nwere abuses of discretion.\nOn June 8, 2016, the district court entered final judgment in favor of Google and\nagainst Oracle. Oracle timely appealed from the district court\xe2\x80\x99s judgment against it,\nincluding the court\xe2\x80\x99s underlying decisions denying its motions for JMOL and for a\nnew trial. Google timely cross-appealed from all adverse orders and rulings\nunderlying that final judgment.\nThis court has exclusive jurisdiction over all appeals in actions involving patent\nclaims, including where, as here, an appeal raises only non-patent issues. 28 U.S.C. \xc2\xa7\n1295(a)(1). Because copyright law is not within this court\xe2\x80\x99s exclusive jurisdiction, we\napply the law of the regional circuit in which the district court sits; here, the Ninth\nCircuit. Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 837 (Fed. Cir. 1992).\nII. ORACLE\xe2\x80\x99S APPEAL\nA. Legal Framework\nIt is undisputed that Google copied Oracle\xe2\x80\x99s declaring code and SSO for the 37 API\npackages verbatim. The question is whether that copying was fair.\n[The court\xe2\x80\x99s boilerplate discussion of the fair use doctrine is omitted]\nBecause fair use is an affirmative defense to a claim of infringement, Google bears\nthe burden to prove that the statutory factors weigh in its favor. Not all of the four\nfactors must favor Google, however. See Wall Data Inc. v. L.A. Cty. Sheriff\xe2\x80\x99s Dep\xe2\x80\x99t, 447\nF.3d 769, 778 (9th Cir. 2006). Instead, \xe2\x80\x9cfair use is appropriate where a \xe2\x80\x98reasonable\ncopyright owner\xe2\x80\x99 would have consented to the use, i.e., where the \xe2\x80\x98custom or public\npolicy\xe2\x80\x99 at the time would have defined the use as reasonable.\xe2\x80\x9d Id. (citation omitted).\nOn appeal, Oracle argues that each of the four statutory factors weighs against a\nfinding of fair use. Specifically, it submits that: (1) the purpose and character of\nGoogle\xe2\x80\x99s use was purely for commercial purposes; (2) the nature of Oracle\xe2\x80\x99s work is\nhighly creative; (3) Google copied 11,330 more lines of code than necessary to write\nin a Java language-based program; and (4) Oracle\xe2\x80\x99s customers stopped licensing Java\n500\n\n\x0cSE and switched to Android because Google provided free access to it. In the\nalternative, Oracle argues that it is entitled to a new trial because the district court\nmade several errors that deprived it of a fair opportunity to present its case. Because,\nas explained below, we agree with Oracle that Google\xe2\x80\x99s copying was not fair use as a\nmatter of law, we need not address Oracle\xe2\x80\x99s alternative arguments for a new trial.\nB. Standards of Review\nBefore turning to a consideration of the four statutory factors and any relevant\nunderlying factual determinations, we first address the standard of review we are to\nemploy in that consideration. While this section of most appellate opinions presents\neasily resolvable questions, like much else in the fair use context, that is not\ncompletely the case here.\nThere are several components to this inquiry. First, which aspects of the fair use\ndetermination are legal in nature and which are factual? Particularly, is the ultimate\nquestion of fair use a legal inquiry which is to be reviewed de novo? Second, what\nfactual questions are involved in the fair use determination and under what standard\nare those determinations to be reviewed? Finally, though neither party addresses the\nquestion in detail, we consider what, if any, aspects of the fair use determination are\nfor the jury to decide.\nThe Supreme Court has said that fair use is a mixed question of law and fact. Harper\n& Row, 471 U.S. at 560. Merely characterizing an issue as a mixed question of law\nand fact does not dictate the applicable standard of review, however.\n[After an extensive discussion of a recent Supreme Court bankruptcy case that raised\nsimilar questions, U.S. Bank Nat\xe2\x80\x99l Ass\xe2\x80\x99n ex rel. CWCapital Asset Mgmt. LLC (2018), the\nfederal circuit concluded that whether the court applied the correct legal standard to\nthe fair use inquiry is a question of law subject to de novo review, whether the\nfindings relating to any relevant \xe2\x80\x9chistorical facts\xe2\x80\x9d were correct are questions of fact\nto be reviewed with deference, and whether the use at issue is ultimately a fair one is\nalso a question of law subject to review de novo.]\nIn the fair use context, historical facts include the \xe2\x80\x9corigin, history, content, and\ndefendant\xe2\x80\x99s use\xe2\x80\x9d of the copyrighted work. Fitzgerald v. CBS Broad., Inc., 491 F.Supp.2d\n177, 184 (D. Mass. 2007); see also Lotus Dev. Corp. v. Borland Int\xe2\x80\x99l, Inc., 788 F.Supp. 78,\n95 (D. Mass 1992) (defining historical facts to include \xe2\x80\x9cwho did what, where, and\nwhen\xe2\x80\x9d). When asked at oral argument to identify historical facts relevant to the fair\nuse inquiry, counsel for Oracle agreed that they are the \xe2\x80\x9cwho, what, where, when,\nhow, and how much.\xe2\x80\x9d Google did not dispute this characterization. This is, in part,\nbecause, in most fair use cases, defendants concede that they have used the\ncopyrighted work, and \xe2\x80\x9cthere is rarely dispute over the history, content, or origin of\nthe copyrighted work.\xe2\x80\x9d See Ned Snow, Judges Playing Jury: Constitutional Conflicts in\nDeciding Fair Use on Summary Judgment, 44 U.C. DAVIS L. REV. 483, 493 (2010).\nWhile some courts once treated the entire question of fair use as factual, and, thus, a\nquestion to be sent to the jury, that is not the modern view. Since Harper & Row, the\nNinth Circuit has described fair use as an \xe2\x80\x9cequitable defense.\xe2\x80\x9d Fisher v. Dees, 794 F.2d\n432, 435 (9th Cir. 1986) (\xe2\x80\x9cThe fair-use doctrine was initially developed by courts as\nan equitable defense to copyright infringement.\xe2\x80\x9d). Indeed, the Supreme Court\n\n501\n\n\x0creferred to fair use as \xe2\x80\x9can equitable rule of reason\xe2\x80\x9d in Harper & Row. 471 U.S. at 560.\nCongress did the same when it codified the doctrine of fair use in 1976. If fair use is\nequitable in nature, it would seem to be a question for the judge, not the jury, to\ndecide, even when there are factual disputes regarding its application. In that instance,\nit would be the judge\xe2\x80\x99s factual determinations that would receive a deferential review\n\xe2\x80\x94 being assessed for clear error on the record before the court.\nThat said, the Supreme Court has never clarified whether and to what extent the jury\nis to play a role in the fair use analysis. Harper & Row involved an appeal from a\nbench trial where the district court concluded that the use of the copyrighted\nmaterial was not a fair use. Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d\n195, 199 (2d Cir. 1983). The Court, thus, had no reason to discuss a jury\ndetermination of fair use and has not since taken an opportunity to do so.\nPerhaps because of this silence, even after Harper & Row, several courts \xe2\x80\x94 including\nthe Ninth Circuit \xe2\x80\x94 have continued to accept the fact that the question of fair use\nmay go to a jury, albeit without analysis of why it may. The Ninth Circuit has\nclarified, however, that the jury role in this context is limited to determining disputed\n\xe2\x80\x9chistorical facts,\xe2\x80\x9d not the inferences or conclusions to be drawn from those facts.\nSee Fisher, 794 F.2d at 436. In Fisher, for example, the court explained that \xe2\x80\x9cno\nmaterial historical facts are at issue in this case. The parties dispute only the ultimate\nconclusions to be drawn from the admitted facts. Because, under Harper & Row,\nthese judgments are legal in nature, we can make them without usurping the function\nof the jury.\xe2\x80\x9d Id.; see also Seltzer v. Green Day, Inc., 725 F.3d 1170, 1175 (9th Cir. 2013)\n(\xe2\x80\x9cAs in Fisher, \xe2\x80\x98[n]o material historical facts are at issue in this case. The parties\ndispute only the ultimate conclusion to be drawn from the admitted facts.\xe2\x80\x99\xe2\x80\x9c (citing\nFisher, 794 F.2d at 436)); Hustler Magazine, Inc. v. Moral Majority, Inc., 606 F.Supp. 1526,\n1532 (C.D. Cal. 1985) (noting that \xe2\x80\x9cfair use normally is a question of fact for the\njury,\xe2\x80\x9d but concluding that \xe2\x80\x9cthe issue of fair use, at least in the context of this case,\npresents primarily a question of law\xe2\x80\x9d). Accordingly, while inferences from the fourfactor analysis and the ultimate question of fair use are \xe2\x80\x9clegal in nature,\xe2\x80\x9d in the Ninth\nCircuit, disputed historical facts represent questions for the jury. Fisher, 794 F.2d at\n436. Where there are no disputed material historical facts, fair use can be decided by\nthe court alone. Id.\nDespite this case law, all aspects of Google\xe2\x80\x99s fair use defense went to the jury with\nneither party arguing that it should not. Thus, the jury was asked not just what the\nhistorical facts were, but what the implications of those facts were for the fair use\ndefense. During the first appeal, Google argued to this court that there were disputed\nissues of material historical fact relevant to its fair use defense. As discussed below,\nthe parties stipulated \xe2\x80\x94 or at least ceased to dispute \xe2\x80\x94 some of those facts, and\npresented the remaining disputed historical facts to the jury on remand. The jury\nreturned a verdict in favor of Google on its fair use defense. Because the verdict\nform \xe2\x80\x94 though captioned as a \xe2\x80\x9cspecial verdict\xe2\x80\x9d \xe2\x80\x94 did not ask the jury to articulate\nits fact findings in any detail, we must assume that the jury resolved all factual issues\nrelating to the historical facts in favor of the verdict. Despite the posture of the fair\nuse finding, we must break that finding into its constituent parts. We must then\nreview the subsidiary and controverted findings of historical fact for substantial\nevidence. See Seltzer, 725 F.3d at 1175; see also Brewer v. Hustler Magazine, Inc., 749\n\n502\n\n\x0cF.2d 527, 528 (9th Cir. 1984) (\xe2\x80\x9cWe may disturb a jury verdict only if the evidence\nwas insufficient as a matter of law.\xe2\x80\x9d).\nAll jury findings relating to fair use other than its implied findings of historical fact\nmust, under governing Supreme Court and Ninth Circuit case law, be viewed as\nadvisory only. Accordingly, while we might assess the jury\xe2\x80\x99s role in the assessment of\nfair use differently if not bound by Ninth Circuit law, we proceed on the assumption\nboth that: (1) it was not error to send the question to the jury, because the Ninth\nCircuit has at least implicitly endorsed doing so; and (2) we must assess all inferences\nto be drawn from the historical facts found by the jury and the ultimate question of\nfair use de novo, because the Ninth Circuit has explicitly said we must do so.\nThe parties have identified the following historical facts relating to Google\xe2\x80\x99s use of\nthe copyrighted work:\n\xe2\x80\xa2 the history and origin of the copyrighted work, including what declaring code is;\n\xe2\x80\xa2 how much of the copyrighted work was copied;\n\xe2\x80\xa2 whether there were other ways to write the API packages;\n\xe2\x80\xa2 whether the copied material was used for the same purpose as in the original work;\n\xe2\x80\xa2 whether the use was commercial in nature;\n\xe2\x80\xa2 whether Google acted in bad faith in copying the work;\n\xe2\x80\xa2 whether there are functional aspects to the copyrighted work that make it less\ndeserving of protection; and\n\xe2\x80\xa2 whether there was harm to the actual or potential markets for the copyrighted work.\nThe parties now agree on the resolution of the first four factual questions: (1) what\nthe declaring code is and what it does in Java SE and Android, and that the code at\nissue was a work created by Oracle; (2) how many lines of code were copied; (3) that\nthere were other ways for Google to write API packages; and (4) that Google used\nthe API packages in Android for the same purpose they were created for in Java.\nThe parties dispute, however, the remaining historical facts they identified. We\naddress those disputes in the context of our assessment of the statutory factors to\nwhich the respective historical fact is relevant.\nC. Applying the Fair Use Factors\nFactor 1: The Purpose and Character of the Use\nThe first factor in the fair use inquiry involves \xe2\x80\x9cthe purpose and character of the use,\nincluding whether such use is of a commercial nature or is for nonprofit educational\npurposes.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(1). This factor has two primary components: (1) whether\nthe use is commercial in nature, rather than for educational or public interest\npurposes; and (2) \xe2\x80\x9cwhether the new work is transformative or simply supplants the\noriginal.\xe2\x80\x9d Wall Data, 447 F.3d at 778 (citing Campbell, 510 U.S. at 579). As explained\nbelow, the first is a question of fact and the second is a question of law. As Oracle\npoints out, moreover, courts sometimes also consider whether the historical facts\nsupport the conclusion that the infringer acted in bad faith. See Harper & Row, 471\nU.S. at 562. We address each component in turn.\n\n503\n\n\x0ca. Commercial Use\nAnalysis of the first factor requires inquiry into the commercial nature of the use.\nUse of the copyrighted work that is commercial \xe2\x80\x9ctends to weigh against a finding of\nfair use.\xe2\x80\x9d Harper & Row, 471 U.S. at 562. Courts have recognized, however, that,\n\xe2\x80\x9c[s]ince many, if not most, secondary users seek at least some measure of\ncommercial gain from their use, unduly emphasizing the commercial motivation of a\ncopier will lead to an overly restrictive view of fair use.\xe2\x80\x9d Am. Geophysical Union v.\nTexaco, Inc., 60 F.3d 913, 921 (2d Cir. 1994); see also Infinity Broad. Corp. v. Kirkwood,\n150 F.3d 104, 109 (2d Cir. 1998) (\xe2\x80\x9cNotwithstanding its mention in the text of the\nstatute, commerciality has only limited usefulness to a fair use inquiry; most\nsecondary uses of copyrighted material, including nearly all of the uses listed in the\nstatutory preamble, are commercial.\xe2\x80\x9d). Accordingly, although the statute requires us\nto consider the \xe2\x80\x9ccommercial nature\xe2\x80\x9d of the work, \xe2\x80\x9cthe degree to which the new user\nexploits the copyright for commercial gain \xe2\x80\x94 as opposed to incidental use as part of\na commercial enterprise \xe2\x80\x94 affects the weight we afford commercial nature as a\nfactor.\xe2\x80\x9d Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 627 (9th Cir. 2003).\nIt is undisputed that Google\xe2\x80\x99s use of the declaring code and SSO from 37 Java API\npackages served commercial purposes. Although the jury was instructed that\ncommercial use weighed against fair use, the district court explained that the jury\n\xe2\x80\x9ccould reasonably have found that Google\xe2\x80\x99s decision to make Android available\nopen source and free for all to use had non-commercial purposes as well (such as the\ngeneral interest in sharing software innovation).\xe2\x80\x9d\nOn appeal, Oracle argues that Android is \xe2\x80\x9chugely profitable\xe2\x80\x9d and that \xe2\x80\x9cGoogle reaps\nbillions from exploiting Java in Android.\xe2\x80\x9d As such, Oracle maintains that no\nreasonable jury could have found Android anything but \xe2\x80\x9coverwhelmingly\ncommercial.\xe2\x80\x9d\nGoogle responds that: (1) because it gives Android away for free under an open\nsource license the jury could have concluded that Android has non-commercial\npurposes; and (2) the jury could have reasonably found that Google\xe2\x80\x99s revenue flows\nfrom the advertisements on its search engine which preexisted Android. Neither\nargument has merit.\nFirst, the fact that Android is free of charge does not make Google\xe2\x80\x99s use of the Java\nAPI packages noncommercial. Giving customers \xe2\x80\x9cfor free something they would\nordinarily have to buy\xe2\x80\x9d can constitute commercial use. A&M Records, Inc. v. Napster,\nInc., 239 F.3d 1004, 1015 (9th Cir. 2001) (finding that \xe2\x80\x9crepeated and exploitative\ncopying of copyrighted works, even if the copies are not offered for sale, may\nconstitute a commercial use\xe2\x80\x9d). That Google might also have non-commercial\nmotives is irrelevant as a matter of law. As the Supreme Court made clear when The\nNation magazine published excerpts from Harper & Row\xe2\x80\x99s book, partly for the\npurpose of providing the public newsworthy information, the question \xe2\x80\x9cis not\nwhether the sole motive of the use is monetary gain but whether the user stands to\nprofit from exploitation of the copyrighted material without paying the customary\nprice.\xe2\x80\x9d Harper & Row, 471 U.S. at 562. Second, although Google maintains that its\nrevenue flows from advertisements, not from Android, commerciality does not\ndepend on how Google earns its money. Indeed, \xe2\x80\x9c[d]irect economic benefit is not\n\n504\n\n\x0crequired to demonstrate a commercial use.\xe2\x80\x9d A&M Records, 239 F.3d at 1015. We find,\ntherefore, that, to the extent we must assume the jury found Google\xe2\x80\x99s use of the API\npackages to be anything other than overwhelmingly commercial, that conclusion\nfinds no substantial evidentiary support in the record. Accordingly, Google\xe2\x80\x99s\ncommercial use of the API packages weighs against a finding of fair use.\nb. Transformative Use\nAlthough the Copyright Act does not use the word \xe2\x80\x9ctransformative,\xe2\x80\x9d the Supreme\nCourt has stated that the \xe2\x80\x9ccentral purpose\xe2\x80\x9d of the first fair use factor is to determine\n\xe2\x80\x9cwhether and to what extent the new work is transformative.\xe2\x80\x9d Campbell, 510 U.S. at\n579. Transformative works \xe2\x80\x9clie at the heart of the fair use doctrine\xe2\x80\x99s guarantee of\nbreathing space within the confines of copyright, and the more transformative the\nnew work, the less will be the significance of other factors, like commercialism, that\nmay weigh against a finding of fair use.\xe2\x80\x9d Id. (internal citation omitted).\nA use is \xe2\x80\x9ctransformative\xe2\x80\x9d if it \xe2\x80\x9cadds something new, with a further purpose or\ndifferent character, altering the first with new expression, meaning or message.\xe2\x80\x9d Id.\nThe critical question is \xe2\x80\x9cwhether the new work merely supersede[s] the objects of the\noriginal creation ... or instead adds something new.\xe2\x80\x9d Id. (citations and internal\nquotation marks omitted). This inquiry \xe2\x80\x9cmay be guided by the examples given in the\npreamble to \xc2\xa7 107, looking to whether the use is for criticism, or comment, or news\nreporting, and the like.\xe2\x80\x9d Id. at 578-79. \xe2\x80\x9cThe Supreme Court has recognized that\nparodic works, like other works that comment and criticize, are by their nature often\nsufficiently transformative to fit clearly under the fair use exception.\xe2\x80\x9d Mattel, Inc. v.\nWalking Mountain Prods., 353 F.3d 792, 800 (9th Cir. 2003) (citing Campbell, 510 U.S.\nat 579).\n\xe2\x80\x9cAlthough transformation is a key factor in fair use, whether a work is\ntransformative is a often highly contentious topic.\xe2\x80\x9d Seltzer, 725 F.3d at 1176. Indeed,\na \xe2\x80\x9cleading treatise on this topic has lamented the frequent misuse of the\ntransformation test, complaining that it has become a conclusory label which is \xe2\x80\x98all\nthings to all people.\xe2\x80\x99\xe2\x80\x9d Id. (quoting Nimmer on Copyright).\nTo be transformative, a secondary work must either alter the original with new\nexpression, meaning, or message or serve a new purpose distinct from that of the\noriginal work. Campbell, 510 U.S. at 579; Elvis Presley Enters., 349 F.3d at 629. Where\nthe use \xe2\x80\x9cis for the same intrinsic purpose as [the copyright holder\xe2\x80\x99s] ... such use\nseriously weakens a claimed fair use.\xe2\x80\x9d Worldwide Church of God v. Philadelphia Church of\nGod, Inc., 227 F.3d 1110, 1117 (9th Cir. 2000) (quoting Weissmann v. Freeman, 868 F.2d\n1313, 1324 (2d Cir. 1989)).\nAlthough \xe2\x80\x9ctransformative use is not absolutely necessary for a finding of fair use, the\ngoal of copyright, to promote science and the arts, is generally furthered by the\ncreation of transformative works.\xe2\x80\x9d Campbell, 510 U.S. at 579. As such, \xe2\x80\x9cthe more\ntransformative the new work, the less will be the significance of other factors, like\ncommercialism, that may weigh against a finding of fair use.\xe2\x80\x9d Id. Importantly, in the\nNinth Circuit, whether a work is transformative is a question of law. See Mattel, 353\nF.3d at 801 (explaining that parody \xe2\x80\x94 a well-established species of transformative\nuse \xe2\x80\x94 \xe2\x80\x9cis a question of law, not a matter of public majority opinion\xe2\x80\x9d); see also Fox\nNews Network, LLC v. TVEyes, Inc., 883 F.3d 169, 175-77 (2d Cir. 2018) (reassessing\n505\n\n\x0cwhether the use in question was transformative and deciding it was as a matter of\nlaw).\nIn denying JMOL, the district court explained that \xe2\x80\x9cof course, the copied\ndeclarations serve the same function in both works, for by definition, declaring code\nin the Java programming language serves the [same] specific definitional purposes.\xe2\x80\x9d6\nFootnote 6: According to the district court, if this fact were sufficient to defeat fair use, \xe2\x80\x9cit would be impossible\never to duplicate declaring code as fair use and presumably the Federal Circuit would have disallowed this factor\non the first appeal rather than remanding for a jury trial.\xe2\x80\x9d Id. But in our prior decision, we remanded in part\nbecause Google represented to this court that there were disputes of fact regarding how Android was used and\nwhether the APIs Google copied served the same function in Android and Java. Oracle, 750 F.3d at 1376.\nWithout the benefit of briefs exploring the record on these issues, and Google\xe2\x80\x99s later agreement with respect to\nthese facts, we concluded that we could not say that there were no material facts in dispute. Id. As explained\npreviously, however, those facts are no longer in dispute. The only question that remains regarding\ntransformative use is whether, on the now undisputed facts, Google\xe2\x80\x99s use of the APIs was, in fact, transformative.\n\nThe court concluded, however, that the jury could reasonably have found that\nGoogle\xe2\x80\x99s selection of some, but not all, of the Java API packages \xe2\x80\x94 \xe2\x80\x9cwith new\nimplementing code adapted to the constrained operating environment of mobile\nsmartphone devices,\xe2\x80\x9d together with new \xe2\x80\x9cmethods, classes, and packages written by\nGoogle for the mobile smartphone platform\xe2\x80\x9d \xe2\x80\x94 constituted \xe2\x80\x9ca fresh context giving\nnew expression, meaning, or message to the duplicated code.\xe2\x80\x9d\nOn appeal, Oracle argues that Google\xe2\x80\x99s use was not transformative because it did\nnot alter the APIs with \xe2\x80\x9cnew expression, meaning, or message.\xe2\x80\x9d Because Google\nconcedes that it uses the API packages for the same purpose, Oracle maintains that it\nwas unreasonable for either the jury or the court to find that Google sufficiently\ntransformed the APIs to overcome its highly commercial use.\nGoogle responds that a reasonable jury could have concluded that Google used a\nsmall portion of the Java API packages to create a new work in a new context \xe2\x80\x94\n\xe2\x80\x9cAndroid, a platform for smartphones, not desktops and servers.\xe2\x80\x9d Google argues\nthat, although the declarations and SSO may perform the same functions in Android\nand Java, the jury could reasonably find that they have different purposes because\nthe \xe2\x80\x9cpoint of Android was to create a groundbreaking platform for smartphones.\xe2\x80\x9d\nGoogle\xe2\x80\x99s arguments are without merit. As explained below, Google\xe2\x80\x99s use of the API\npackages is not transformative as a matter of law because: (1) it does not fit within\nthe uses listed in the preamble to \xc2\xa7 107; (2) the purpose of the API packages in\nAndroid is the same as the purpose of the packages in the Java platform; (3) Google\nmade no alteration to the expressive content or message of the copyrighted material;\nand (4) smartphones were not a new context.\nFirst, though not dispositive, we turn to the examples given in the preamble to \xc2\xa7 107,\n\xe2\x80\x9clooking to whether the use is for criticism, or comment, or news reporting, and the\nlike.\xe2\x80\x9d Campbell, 510 U.S. at 578-79. Google\xe2\x80\x99s use of the Java API packages does not\nfit within the statutory categories, and Google does not suggest otherwise. Instead,\nGoogle cites Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F.3d 596 (9th Cir.\n2000), for the proposition that the \xe2\x80\x9cNinth Circuit has held other types of uses \xe2\x80\x94\nspecifically including uses of computer code \xe2\x80\x94 to be fair.\xe2\x80\x9d In Sony, the court found\nthat the defendant\xe2\x80\x99s reverse engineering and intermediate copying of Sony\xe2\x80\x99s\ncopyrighted software system \xe2\x80\x9cwas a fair use for the purpose of gaining access to the\nunprotected elements of Sony\xe2\x80\x99s software.\xe2\x80\x9d 203 F.3d at 602. The court explained that\n506\n\n\x0cSony\xe2\x80\x99s software program contained unprotected functional elements and that the\ndefendant could only access those elements through reverse engineering. Id. at 603.\nThe defendant used that information to create a software program that let\nconsumers play games designed for Sony\xe2\x80\x99s PlayStation console on their computers.\nThe court found that the defendant\xe2\x80\x99s use was only \xe2\x80\x9cmodestly transformative\xe2\x80\x9d where:\n(1) the defendant created \xe2\x80\x9ca wholly new product\xe2\x80\x9d with \xe2\x80\x9centirely new ... code,\xe2\x80\x9d and\n(2) the intermediate copying was performed to \xe2\x80\x9cproduce a product that would be\ncompatible.\xe2\x80\x9d Id. at 606-07. As Oracle points out, even the \xe2\x80\x9cmodest\xe2\x80\x9d level of\ntransformation at issue in Sony is more transformative than what Google did here:\ncopy code verbatim to attract programmers to Google\xe2\x80\x99s \xe2\x80\x9cnew and incompatible\nplatform.\xe2\x80\x9d\nIt is undisputed that the API packages serve the same function in both works. And,\nas Oracle explains, the historical facts relevant to transformative use are also\nundisputed: what declaring code is, what it does in Java and in Android, how the\naudience of computer developers perceives it, how much Google took and added,\nwhat the added code does, and why Google used the declaring code and SSO.\nIndeed, Google conceded that \xe2\x80\x9cincluding the declarations (and their associated SSO)\nwas for the benefit of developers, who \xe2\x80\x94 familiar with the Java programming\nlanguage \xe2\x80\x94 had certain expectations regarding the language\xe2\x80\x99s APIs.\xe2\x80\x9d The fact that\nGoogle created exact copies of the declaring code and SSO and used those copies\nfor the same purpose as the original material \xe2\x80\x9cseriously weakens [the] claimed fair\nuse.\xe2\x80\x9d See Wall Data, 447 F.3d at 778 (finding that, where the \xe2\x80\x9cSheriff\xe2\x80\x99s Department\ncreated exact copies of RUMBA\xe2\x80\x99s software ... [and] put those copies to the identical\npurpose as the original software,\xe2\x80\x9d the use was not transformative); see also Campbell,\n510 U.S. at 580 (noting that where the alleged infringer merely seeks \xe2\x80\x9cto avoid the\ndrudgery in working up something fresh,\xe2\x80\x9d any \xe2\x80\x9cclaim to fairness ... diminishes\naccordingly\xe2\x80\x9d).\nGoogle argues that Android is transformative because Google selectively used the\ndeclarations and SSO of only 37 of the 166 Java SE API packages and wrote its own\nimplementing code. But taking only select passages of a copyrighted work is, by itself,\nnot transformative. See L.A. News Serv. v. CBS Broad., Inc., 305 F.3d 924, 938-39 (9th\nCir. 2002) (\xe2\x80\x9cMerely plucking the most visually arresting excerpt from LANS\xe2\x80\x99s nine\nminutes of footage cannot be said to have added anything new.\xe2\x80\x9d). While, as\ndiscussed below, the volume of work copied is relevant to the fair use inquiry\ngenerally, thought must be given to the quality and importance of the copied material,\nnot just to its relative quantity vis-\xc3\xa0-vis the overall work. See Campbell, 510 U.S. at\n586-87. To hold otherwise would mean that verbatim copying could qualify as fair\nuse as long as the plagiarist stops short of taking the entire work. That approach is\ninconsistent with settled law and is particularly troubling where, as here, the portion\ncopied is qualitatively significant. See Harper & Row, 471 U.S. at 569 (finding that\nverbatim copying of 300 words from a manuscript of more than 200,000 words was\nnot a fair use); see also Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D. Mass 1841) (Story,\nJ.) (\xe2\x80\x9cThere must be real, substantial condensation of the materials, and intellectual\nlabor and judgment bestowed thereon; and not merely the facile use of the scissors;\nor extracts of the essential parts, constituting the chief value of the original work.\xe2\x80\x9d).\n\n507\n\n\x0cThat Google wrote its own implementing code is irrelevant to the question of\nwhether use of the APIs was transformative. As we noted in the prior appeal, \xe2\x80\x9cno\nplagiarist can excuse the wrong by showing how much of his work he did not pirate.\xe2\x80\x9d\nOracle, 750 F.3d at 1375 (quoting Harper & Row, 471 U.S. at 565). The relevant\nquestion is whether Google altered \xe2\x80\x9cthe expressive content or message of the\noriginal work\xe2\x80\x9d that it copied \xe2\x80\x94 not whether it rewrote the portions it did not copy.\nSee Seltzer, 725 F.3d at 1177 (explaining that a work is not transformative where the\nuser \xe2\x80\x9cmakes no alteration to the expressive content or message of the original\nwork\xe2\x80\x9d). That said, even where the allegedly infringing work \xe2\x80\x9cmakes few physical\nchanges to the original or fails to comment on the original,\xe2\x80\x9d it will \xe2\x80\x9ctypically [be]\nviewed as transformative as long as new expressive content or message is apparent.\xe2\x80\x9d\nId. Here, however, there is no suggestion that the new implementing code somehow\nchanged the expression or message of the declaring code. While Google\xe2\x80\x99s use could\nhave been transformative if it had copied the APIs for some other purpose \xe2\x80\x94 such\nas teaching how to design an API \xe2\x80\x94 merely copying the material and moving it from\none platform to another without alteration is not transformative.\nGoogle\xe2\x80\x99s primary argument on appeal is that Android is transformative because\nGoogle incorporated the declarations and SSO of the 37 API packages into a new\ncontext \xe2\x80\x94 smartphones. But the record showed that Java SE APIs were in\nsmartphones before Android entered the market. Specifically, Oracle presented\nevidence that Java SE was in SavaJe mobile phones and that Oracle licensed Java SE\nto other smartphone manufacturers, including Danger and Nokia. Because the Java\nSE was already being used in smartphones, Google did not \xe2\x80\x9ctransform\xe2\x80\x9d the\ncopyrighted material into a new context and no reasonable jury could conclude\notherwise.\nIn any event, moving material to a new context is not transformative in and of itself\n\xe2\x80\x94 even if it is a \xe2\x80\x9csharply different context.\xe2\x80\x9d TCA Television Corp. v. McCollum, 839\nF.3d 168, 181-83 (2d Cir. 2016) (finding that use \xe2\x80\x9cat some length, almost verbatim,\xe2\x80\x9d\nof the copyrighted comedy routine \xe2\x80\x9cWho\xe2\x80\x99s on First?\xe2\x80\x9d in a dramatic play was not\ntransformative where the play neither \xe2\x80\x9cimbued the Routine with any new expression,\nmeaning, or message,\xe2\x80\x9d nor added \xe2\x80\x9cany new dramatic purpose\xe2\x80\x9d). As previously\nexplained, a use becomes transformative only if it serves a different purpose or alters\nthe \xe2\x80\x9cexpression, meaning, or message\xe2\x80\x9d of the original work. Kelly, 336 F.3d at 818.\nAs such, \xe2\x80\x9ccourts have been reluctant to find fair use when an original work is merely\nretransmitted in a different medium.\xe2\x80\x9d A&M Records, 239 F.3d at 1015. Accordingly,\nalthough a change of format may be \xe2\x80\x9cuseful,\xe2\x80\x9d it \xe2\x80\x9cis not technically a transformation.\xe2\x80\x9d\nInfinity Broad., 150 F.3d at 108 n.2 (finding that retransmitting copyrighted radio\ntransmissions over telephone lines was not transformative because there was no new\nexpression, meaning, or message).\nThe Ninth Circuit has stated that \xe2\x80\x9c[a] use is considered transformative only where a\ndefendant changes a plaintiff\xe2\x80\x99s copyrighted work or uses the plaintiff\xe2\x80\x99s copyrighted\nwork in a different context such that the plaintiff\xe2\x80\x99s work is transformed into a new\ncreation.\xe2\x80\x9d Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007)\n(quoting Wall Data, 447 F.3d at 778). In Perfect 10, for example, the court found\nGoogle\xe2\x80\x99s use of thumbnail versions of copyrighted images \xe2\x80\x9chighly transformative\xe2\x80\x9d\nbecause, \xe2\x80\x9calthough an image may have been created originally to serve an\n\n508\n\n\x0centertainment, aesthetic, or informative function, a search engine transforms the\nimage into a pointer directing a user to a source of information.\xe2\x80\x9d Id. Although the\ncourt discussed the change in context (moving the copyrighted images into the\nelectronic reference tool), it emphasized that Google used the images \xe2\x80\x9cin a new\ncontext to serve a different purpose.\xe2\x80\x9d In reaching this conclusion, the court\nreiterated that \xe2\x80\x9ceven making an exact copy of a work may be transformative so long\nas the copy serves a different function than the original work.\xe2\x80\x9d (citing Kelly, 336 F.3d\nat 818-19). It is clear, therefore, that the change in context alone was not dispositive\nin Perfect 10; rather, the change in context facilitated the change in purpose, which\nmade the use transformative.\nTo some extent, any use of copyrighted work takes place in a slightly different\ncontext than the original. And of course, there is no bright line identifying when a\nuse becomes transformative. But where, as here, the copying is verbatim, for an\nidentical function and purpose, and there are no changes to the expressive content or\nmessage, a mere change in format (e.g., from desktop and laptop computers to\nsmartphones and tablets) is insufficient as a matter of law to qualify as a\ntransformative use.8\nFootnote 8: As some amici note, to hold otherwise could encroach upon the copyright holder\xe2\x80\x99s right to \xe2\x80\x9cprepare\nderivative works based upon the copyrighted work.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 106(2); see Br. of Amicus Curiae N.Y. Intell.\nProp. L. Ass\xe2\x80\x99n at 17-20.\n\nc. Bad faith\nIn evaluating the \xe2\x80\x9cpurpose and character\xe2\x80\x9d factor, the Ninth Circuit applies \xe2\x80\x9cthe\ngeneral rule that a party claiming fair use must act in a manner generally compatible\nwith principles of good faith and fair dealing.\xe2\x80\x9d Perfect 10, 508 F.3d at 1164 n.8 (citing\nHarper & Row, 471 U.S. at 562-63). In part, this is based on the fact that, in Harper\n& Row, the Supreme Court expressly stated that \xe2\x80\x9c[f]air use presupposes \xe2\x80\x98good faith\xe2\x80\x99\nand \xe2\x80\x98fair dealing.\xe2\x80\x99\xe2\x80\x9c 471 U.S. at 562 (citation omitted). It is also in part true because, as\nthe Ninth Circuit has said, one who acts in bad faith should be barred from invoking\nthe equitable defense of fair use. Fisher, 794 F.2d at 436 (calling the principle of\nconsidering the alleged infringer\xe2\x80\x99s \xe2\x80\x9cbad conduct\xe2\x80\x9d as a \xe2\x80\x9cbar [to] his use of the\nequitable defense of fair use\xe2\x80\x9d a sound one).9\nFootnote 9: As the district court recognized, there is some debate about whether good or bad faith should remain\nrelevant to the factor one inquiry. Order Denying JMOL, 2016 WL 3181206, at *2 (\xe2\x80\x9c[T]here is a respectable view\nthat good or bad faith should no longer be a consideration after the Supreme Court\xe2\x80\x99s decision in Campbell.\xe2\x80\x9d); see\nalso Hon. Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1128 (1990) (\xe2\x80\x9cWhether the\nsecondary use is within the protection of the [fair use] doctrine depends on factors pertinent to the objectives of\nthe copyright law and not on the morality or motives of either the secondary user or the copyright-owning\nplaintiff.\xe2\x80\x9d). In Campbell, the Supreme Court expressed skepticism about \xe2\x80\x9cthe weight one might place on the\nalleged infringer\xe2\x80\x99s state of mind.\xe2\x80\x9d Campbell, 510 U.S. at 585 n.18, 114 S.Ct. 1164. But the Ninth Circuit has not\nrepudiated its view that \xe2\x80\x9c\xe2\x80\x98the propriety of the defendant\xe2\x80\x99s conduct\xe2\x80\x99 is relevant to the character of the use at least\nto the extent that it may knowingly have exploited a purloined work for free that could have been obtained for a\nfee.\xe2\x80\x9d L.A. News Serv. v. KCAL-TV Channel 9, 108 F.3d 1119, 1122 (9th Cir. 1997) (quoting Harper & Row, 471 U.S.\nat 562). For that reason, and because we conclude in any event that the jury must have found that Google did not\nact in bad faith, we address that question and the parties\xe2\x80\x99 arguments relating thereto.\n\nConsistent with this authority, and at Oracle\xe2\x80\x99s request, the district court instructed\nthe jury that it could consider whether Google acted in bad faith (or not) as part of\nits assessment of the first fair use factor. And, because Oracle was permitted to\nintroduce evidence that Google acted in bad faith, the court permitted Google to try\nto prove its good faith.\n509\n\n\x0cAt trial, Oracle introduced evidence suggesting that \xe2\x80\x9cGoogle felt it needed to copy\nthe Java API as an accelerant to bring Android to the market quicker\xe2\x80\x9d and knew that\nit needed a license to use Java. For its part, Google presented evidence that it\nbelieved that the declaring code and SSO were \xe2\x80\x9cfree to use and reimplement, both as\na matter of developer practice and because the availability of independent\nimplementations of the Java API enhanced the popularity of the Java programming\nlanguage, which Sun promoted as free for all to use.\xe2\x80\x9d Given this conflicting evidence,\nthe district court found that the jury could reasonably have concluded that \xe2\x80\x9cGoogle\xe2\x80\x99s\nuse of parts of the Java API as an accelerant was undertaken based on a good faith\nbelief that at least the declaring code and SSO were free to use (which it did use),\nwhile a license was necessary for the implementing code (which it did not use).\xe2\x80\x9d\nOn appeal, Oracle argues that there was ample evidence that Google intentionally\ncopied Oracle\xe2\x80\x99s copyrighted work and knew that it needed a license to use Java.\nGoogle responds that the jury heard sufficient evidence of Google\xe2\x80\x99s good faith based\non industry custom and was entitled to credit that evidence.\nBut, while bad faith may weigh against fair use, a copyist\xe2\x80\x99s good faith cannot weigh\nin favor of fair use. Indeed, the Ninth Circuit has expressly recognized that \xe2\x80\x9cthe\ninnocent intent of the defendant constitutes no defense to liability.\xe2\x80\x9d Monge, 688 F.3d\nat 1170). If it were clear, accordingly, that the jury found fair use solely or even\nlargely because it approved of Google\xe2\x80\x99s motives even if they were in bad faith, we\nwould find such a conclusion improper. Because evidence of Google\xe2\x80\x99s good faith\nwas relevant to rebut evidence of its bad faith, however, and there is no objection to\nthe instructions to the jury on this or any other point, we must assume that the jury\nsimply did not find the evidence of Google\xe2\x80\x99s bad faith persuasive.10\nFootnote 10: The jury was instructed that, \xe2\x80\x9cin evaluating the extent to which Google acted in good faith or not,\nyou may take into account, together with all other circumstances, the extent to which Google relied upon or\ncontravened any recognized practices in the industry concerning reimplementation of API libraries.\xe2\x80\x9d Oracle has\nnot challenged this instruction on appeal.\n\nWe note, moreover, that merely \xe2\x80\x9cbeing denied permission to use a work does not\nweigh against a finding of fair use.\xe2\x80\x9d Campbell, 510 U.S. at 585 n.18 (\xe2\x80\x9cIf the use is\notherwise fair, then no permission need be sought or granted.\xe2\x80\x9d).\nUltimately, we find that, even assuming the jury was unpersuaded that Google acted\nin bad faith, the highly commercial and non-transformative nature of the use strongly\nsupport the conclusion that the first factor weighs against a finding of fair use.\nFactor 2: Nature of the Copyrighted Work\nThe second factor \xe2\x80\x94 the nature of the copyrighted work \xe2\x80\x94 \xe2\x80\x9ccalls for recognition\nthat some works are closer to the core of intended copyright protection than others,\nwith the consequence that fair use is more difficult to establish when the former\nworks are copied.\xe2\x80\x9d Campbell, 510 U.S. at 586. This factor \xe2\x80\x9cturns on whether the work\nis informational or creative.\xe2\x80\x9d Worldwide Church of God, 227 F.3d at 1118; see also\nHarper & Row, 471 U.S. at 563 (\xe2\x80\x9cThe law generally recognizes a greater need to\ndisseminate factual works than works of fiction or fantasy.\xe2\x80\x9d). Creative expression\n\xe2\x80\x9cfalls within the core of the copyright\xe2\x80\x99s protective purposes.\xe2\x80\x9d Campbell, 510 U.S. at\n586. Although \xe2\x80\x9csoftware products are not purely creative works,\xe2\x80\x9d it is well\nestablished that copyright law protects computer software. Wall Data, 447 F.3d at\n\n510\n\n\x0c780 (citing Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1519 (9th Cir. 1992) (\xe2\x80\x9cThe\n1980 amendments to the Copyright Act unambiguously extended copyright\nprotection to computer programs.\xe2\x80\x9d)).\nHere, the district court found that the jury could have concluded that the process of\ndesigning APIs was \xe2\x80\x9chighly creative\xe2\x80\x9d and \xe2\x80\x9cthus at the core of copyright\xe2\x80\x99s protection\xe2\x80\x9d\nor it could \xe2\x80\x9creasonably have gone the other way and concluded that the declaring\ncode was not highly creative.\xe2\x80\x9d While the jury heard testimony from Google\xe2\x80\x99s own\nexpert that API design is \xe2\x80\x9can art, not a science,\xe2\x80\x9d other witnesses emphasized the\nfunctional role of the declaring code and the SSO and minimized the creative aspects.\nAccordingly, the district court concluded that the \xe2\x80\x9cjury could reasonably have found\nthat, while the declaring code and SSO were creative enough to qualify for copyright\nprotection, functional considerations predominated in their design.\xe2\x80\x9d\nOn appeal, Oracle emphasizes that designing the APIs was a highly creative process\nand that the organization of the packages was not mandated by function. Indeed, this\ncourt has already held that the declaring code and the SSO of the 37 API packages at\nissue were sufficiently creative and original to qualify for copyright protection. Oracle,\n750 F.3d at 1356. According to Oracle, the district court erred in assuming that,\nbecause the APIs have a \xe2\x80\x9cfunctional role,\xe2\x80\x9d they cannot be creative.\nAs Google points out, however, all we found in the first appeal was that the\ndeclarations and SSO were sufficiently creative to provide the \xe2\x80\x9cminimal degree of\ncreativity,\xe2\x80\x9d Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991), that is\nrequired for copyrightability. We also recognized that a reasonable jury could find\nthat \xe2\x80\x9cthe functional aspects of the packages\xe2\x80\x9d are \xe2\x80\x9crelevant to Google\xe2\x80\x99s fair use\ndefense.\xe2\x80\x9d Oracle, 750 F.3d at 1369, 1376-77. On remand, Oracle stipulated that some\nof the declarations were necessary to use the Java language and presented no\nevidence explaining how the jury could distinguish the functionality and creativity of\nthose declarations from the others. Google maintains that it presented evidence that\nthe declarations and SSO were functional and the jury was entitled to credit that\nevidence.\nAlthough it is clear that the 37 API packages at issue involved some level of\ncreativity \xe2\x80\x94 and no reasonable juror could disagree with that conclusion \xe2\x80\x94\nreasonable jurors could have concluded that functional considerations were both\nsubstantial and important. Based on that assumed factual finding, we conclude that\nfactor two favors a finding of fair use.\nThe Ninth Circuit has recognized, however, that this second factor \xe2\x80\x9ctypically has not\nbeen terribly significant in the overall fair use balancing.\xe2\x80\x9d Dr. Seuss Enters., L.P. v.\nPenguin Books USA, Inc., 109 F.3d 1394, 1402 (9th Cir. 1997) (finding that the\n\xe2\x80\x9ccreativity, imagination and originality embodied in The Cat in the Hat and its central\ncharacter tilts the scale against fair use\xe2\x80\x9d); Mattel, 353 F.3d at 803 (similar). Other\ncircuits agree. Fox News Network, 883 F.3d at 178 (\xe2\x80\x9cThis factor \xe2\x80\x98has rarely played a\nsignificant role in the determination of a fair use dispute,\xe2\x80\x99 and it plays no significant\nrole here.\xe2\x80\x9d (quoting Authors Guild v. Google, Inc., 804 F.3d 202, 220 (2d Cir. 2015))).\nWe note, moreover, that allowing this one factor to dictate a conclusion of fair use in\nall cases involving copying of software could effectively negate Congress\xe2\x80\x99s express\ndeclaration \xe2\x80\x94 continuing unchanged for some forty years \xe2\x80\x94 that software is\n\n511\n\n\x0ccopyrightable. Accordingly, though the jury\xe2\x80\x99s assumed view of the nature of the\ncopyrighted work weighs in favor of finding fair use, it has less significance to the\noverall analysis.\nFactor 3: Amount and Substantiality of the Portion Used\nThe third factor focuses on the \xe2\x80\x9camount and substantiality of the portion used in ...\nthe context of the copyrighted work, not the infringing work.\xe2\x80\x9d Oracle, 750 F.3d at\n1375. Indeed, the statutory language makes clear that \xe2\x80\x9ca taking may not be excused\nmerely because it is insubstantial with respect to the infringing work.\xe2\x80\x9d Harper & Row,\n471 U.S. at 565. \xe2\x80\x9c[T]he fact that a substantial portion of the infringing work was\ncopied verbatim [from the original work] is evidence of the qualitative value of the\ncopied material, both to the originator and to the plagiarist who seeks to profit from\nmarketing someone else\xe2\x80\x99s copyrighted expression.\xe2\x80\x9d Id. Thus, while \xe2\x80\x9cwhole-sale\ncopying does not preclude fair use per se, copying an entire work militates against a\nfinding of fair use.\xe2\x80\x9d Worldwide Church of God, 227 F.3d at 1118 (citation and quotation\nmarks omitted). But, there is no relevance to the opposite \xe2\x80\x94 i.e., adding substantial\ncontent to the copyrighted work is not evidence that what was copied was\ninsubstantial or unimportant.\nThe inquiry under this third factor \xe2\x80\x9cis a flexible one, rather than a simple\ndetermination of the percentage of the copyrighted work used.\xe2\x80\x9d Monge, 688 F.3d at\n1179. The Ninth Circuit has explained that this third factor looks to the quantitative\namount and qualitative value of the original work used in relation to the justification\nfor its use. Seltzer, 725 F.3d at 1178. The percentage of work copied is not dispositive\nwhere the portion copied was qualitatively significant. Harper & Row, 471 U.S. at 566\n(\xe2\x80\x9cIn view of the expressive value of the excerpts and their key role in the infringing\nwork, we cannot agree with the Second Circuit that the magazine took a meager,\nindeed an infinitesimal amount of Ford\xe2\x80\x99s original language.\xe2\x80\x9d) Google is correct that\nthe Ninth Circuit has said that, \xe2\x80\x9cthis factor will not weigh against an alleged infringer,\neven when he copies the whole work, if he takes no more than is necessary for his\nintended use.\xe2\x80\x9d Id. (citing Kelly v. Arriba Soft Corp., 336 F.3d 811, 820-21 (9th Cir.\n2003)). But the Ninth Circuit has only said that is true where the intended use was a\ntransformative one, because the \xe2\x80\x9cextent of permissible copying varies with the\npurpose and character of the use.\xe2\x80\x9d Id. (quoting Campbell, 510 U.S. at 586-87). Here,\nwe have found that Google\xe2\x80\x99s use was not transformative and Google has conceded\nboth that it could have written its own APIs and that the purpose of its copying was\nto make Android attractive to programmers. \xe2\x80\x9cNecessary\xe2\x80\x9d in the context of the cases\nupon which Google relies does not simply mean easier.\nIn assessing factor three, the district court explained that the \xe2\x80\x9cjury could reasonably\nhave found that Google duplicated the bare minimum of the 37 API packages, just\nenough to preserve inter-system consistency in usage, namely the declarations and\ntheir SSO only, and did not copy any of the implementing code,\xe2\x80\x9d such that Google\n\xe2\x80\x9ccopied only so much as was reasonably necessary.\xe2\x80\x9d In reaching this conclusion, the\ncourt noted that the jury could have found that the number of lines of code Google\nduplicated was a \xe2\x80\x9ctiny fraction of one percent of the copyrighted works (and even\nless of Android, for that matter).\xe2\x80\x9d We disagree that such a conclusion would have\nbeen reasonable or sufficient on this record.\n\n512\n\n\x0cOn remand, the parties stipulated that only 170 lines of code were necessary to write\nin the Java language. It is undisputed, however, that Google copied 11,500 lines of\ncode \xe2\x80\x94 11,330 more lines than necessary to write in Java. That Google copied more\nthan necessary weighs against fair use. See Monge, 688 F.3d at 1179 (finding that,\nwhere the copyist \xe2\x80\x9cused far more than was necessary\xe2\x80\x9d of the original work, \xe2\x80\x9cthis\nfactor weighs against fair use\xe2\x80\x9d). And, although Google emphasizes that it used a\nsmall percentage of Java (11,500 lines of declarations out of roughly 2.86 million\nlines of code in the Java SE libraries), it copied the SSO for the 37 API packages in\nits entirety.\nThe district court emphasized Google\xe2\x80\x99s desire to \xe2\x80\x9cpreserve inter-system consistency\xe2\x80\x9d\nto \xe2\x80\x9cavoid confusion among Java programmers as between the Java system and the\nAndroid system.\xe2\x80\x9d As we noted in the prior appeal, however, Google did not seek to\nfoster any \xe2\x80\x9cinter-system consistency\xe2\x80\x9d between its platform and Oracle\xe2\x80\x99s Java\nplatform. Oracle, 750 F.3d at 1371. And Google does not rely on any interoperability\narguments in this appeal.11\nFootnote 11: In the prior appeal, we noted that \xe2\x80\x9cGoogle\xe2\x80\x99s competitive desire to achieve commercial\n\xe2\x80\x98interoperability\xe2\x80\x99 ... may be relevant to a fair use analysis.\xe2\x80\x9d Oracle, 750 F.3d at 1376-77. But, although several amici\nin this appeal discuss interoperability concerns, Google has abandoned the arguments it once made about\ninteroperability. This change in course is not surprising given the unrebutted evidence that Google specifically\ndesigned Android to be incompatible with the Java platform and not allow for interoperability with Java\nprograms. Id. at 1371.\n\nGoogle sought \xe2\x80\x9cto capitalize on the fact that software developers were already\ntrained and experienced in using the Java API packages at issue.\xe2\x80\x9d Id. But there is no\ninherent right to copy in order to capitalize on the popularity of the copyrighted\nwork or to meet the expectations of intended customers. Taking those aspects of the\ncopyrighted material that were familiar to software developers to create a similar\nwork designed to be popular with those same developers is not fair use. See Dr. Seuss\nEnters., 109 F.3d at 1401 (copying the most famous and well recognized aspects of a\nwork \xe2\x80\x9cto get attention\xe2\x80\x9d or \xe2\x80\x9cto avoid the drudgery in working up something fresh\xe2\x80\x9d is\nnot a fair use (quoting Campbell, 510 U.S. at 580)).\nEven assuming the jury accepted Google\xe2\x80\x99s argument that it copied only a small\nportion of Java, no reasonable jury could conclude that what was copied was\nqualitatively insignificant, particularly when the material copied was important to the\ncreation of the Android platform. Google conceded as much when it explained to\nthe jury the importance of the APIs to the developers it wished to attract. Indeed,\nGoogle\xe2\x80\x99s own expert conceded that \xe2\x80\x9cit was a sound business practice for Google to\nleverage the existing community of developers, minimizing the amount of new\nmaterial and maximizing existing knowledge,\xe2\x80\x9d even though Google also conceded\nthat it could have written the APIs differently to achieve the same functions. For\nthese reasons, we find that the third factor is, at best, neutral in the fair use inquiry,\nand arguably weighs against such a finding.\nFactor 4: Effect Upon the Potential Market\nThe fourth and final factor focuses on \xe2\x80\x9cthe effect of the use upon the potential\nmarket for or value of the copyrighted work.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107(4). This factor reflects\nthe idea that fair use \xe2\x80\x9cis limited to copying by others which does not materially\nimpair the marketability of the work which is copied.\xe2\x80\x9d Harper & Row, 471 U.S. at\n\n513\n\n\x0c566-67. It requires that courts \xe2\x80\x9cconsider not only the extent of market harm caused\nby the particular actions of the alleged infringer, but also whether unrestricted and\nwidespread conduct of the sort engaged in by the defendant... would result in a\nsubstantially adverse impact on the potential market for the original.\xe2\x80\x9d Campbell, 510\nU.S. at 590 (citation and quotation marks omitted).\nThe Supreme Court once said that factor four is \xe2\x80\x9cundoubtedly the single most\nimportant element of fair use.\xe2\x80\x9d Harper & Row, 471 U.S. at 566. In its subsequent\nopinion in Campbell, however, the Court emphasized that none of the four factors\ncan be viewed in isolation and that \xe2\x80\x9c[a]ll are to be explored, and the results weighed\ntogether, in light of the purposes of copyright.\xe2\x80\x9d 510 U.S. at 578; see also Infinity\nBroad., 150 F.3d at 110 (\xe2\x80\x9cHistorically, the fourth factor has been seen as central to\nfair use analysis, although the Supreme Court appears to have backed away from this\nposition.\xe2\x80\x9d). The Court has also explained that \xe2\x80\x9cmarket harm is a matter of degree,\nand the importance of this factor will vary, not only with the amount of harm, but\nalso with the relative strength of the showing on the other factors.\xe2\x80\x9d Campbell, 510\nU.S. at 590 n.21.\nThe Ninth Circuit recently indicated that likely market harm can be presumed where\na use is \xe2\x80\x9ccommercial and not transformative.\xe2\x80\x9d Disney Enters., Inc. v. VidAngel, Inc., 869\nF.3d 848, 861 (9th Cir. 2017) (citing Leadsinger, 512 F.3d at 531, for the proposition\nthat, where a use \xe2\x80\x9cwas commercial and not transformative, it was not error to\npresume likely market harm\xe2\x80\x9d). That presumption allegedly traces back to Sony Corp. of\nAmerica v. University City Studios, Inc., 464 U.S. 417, 451(1984), where the Supreme\nCourt stated that, \xe2\x80\x9cif the intended use is for commercial gain, that likelihood [of\nfuture harm] may be presumed. But if it is for a noncommercial purpose, the\nlikelihood must be demonstrated.\xe2\x80\x9d The Supreme Court has since clarified that\nmarket impact, \xe2\x80\x9cno less than the other three [factors], may be addressed only\nthrough a \xe2\x80\x98sensitive balancing of interests\xe2\x80\x99\xe2\x80\x9c and that earlier interpretations of Sony to\nthe contrary were incorrect. Campbell, 510 U.S. at 590 n.21 (quoting Sony, 464 U.S. at\n455 n.40);12 see also Monge, 688 F.3d at 1181 (cautioning against overemphasis on a\npresumption of market harm after Campbell).\nFootnote 12: The Court noted, however, that \xe2\x80\x9cwhat Sony said simply makes common sense: when a commercial\nuse amounts to mere duplication of the entirety of an original, it clearly \xe2\x80\x98supersede[s] the objects,\xe2\x80\x99 of the original\nand serves as a market replacement for it, making it likely that cognizable market harm to the original will occur.\xe2\x80\x9d\nId. at 591, 114 S.Ct. 1164.\n\nOn this point, we must apply clear Supreme Court precedent rather than the more\nrecent Ninth Circuit\xe2\x80\x99s statements to the contrary.\nIn evaluating the fourth factor, courts consider not only harm to the actual or\npotential market for the copyrighted work, but also harm to the \xe2\x80\x9cmarket for\npotential derivative uses,\xe2\x80\x9d including \xe2\x80\x9cthose that creators of original works would in\ngeneral develop or license others to develop.\xe2\x80\x9d Campbell, 510 U.S. at 592; see also\nA&M Records, 239 F.3d at 1017 (\xe2\x80\x9cLack of harm to an established market cannot\ndeprive the copyright holder of the right to develop alternative markets for the\nworks.\xe2\x80\x9d). A court can therefore consider the challenged use\xe2\x80\x99s \xe2\x80\x9cimpact on potential\nlicensing revenues for traditional, reasonable, or likely to be developed markets.\xe2\x80\x9d\nSwatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 91 (2d Cir. 2014) (citation\n\n514\n\n\x0comitted); see also Seltzer, 725 F.3d at 1179 (\xe2\x80\x9cThis factor also considers any impact on\n\xe2\x80\x98traditional, reasonable, or likely to be developed markets.\xe2\x80\x99\xe2\x80\x9d).\nAlso relevant to the inquiry is the fact that a copyright holder has the exclusive right\nto determine \xe2\x80\x9cwhen, \xe2\x80\x98whether and in what form to release\xe2\x80\x99\xe2\x80\x9c the copyrighted work\ninto new markets, whether on its own or via a licensing agreement. Monge, 688 F.3d\nat 1182 (quoting Harper & Row, 471 U.S. at 553). Indeed, the Ninth Circuit has\nrecognized that \xe2\x80\x9ceven an author who had disavowed any intention to publish his\nwork during his lifetime\xe2\x80\x9d was entitled to copyright protection because: (1) \xe2\x80\x9cthe\nrelevant consideration was the \xe2\x80\x98potential market\xe2\x80\x99\xe2\x80\x9c and (2) \xe2\x80\x9che has the right to change\nhis mind.\xe2\x80\x9d Worldwide Church, 227 F.3d at 1119 (citing Salinger v. Random House, Inc.,\n811 F.2d 90, 99 (2d Cir. 1987)); see also Micro Star v. Formgen Inc., 154 F.3d 1107,\n1113 (9th Cir. 1998) (noting that only the copyright holder \xe2\x80\x9chas the right to enter\nthat market; whether it chooses to do so is entirely its business\xe2\x80\x9d).\nHere, the district court concluded that the jury \xe2\x80\x9ccould reasonably have found that\nuse of the declaring lines of code (including their SSO) in Android caused no harm\nto the market for the copyrighted works, which were for desktop and laptop\ncomputers.\xe2\x80\x9d In reaching this conclusion, the district court noted that, before\nAndroid was released, Sun made all of the Java API packages available for free and\nopen source under the name OpenJDK, subject only to the terms of a general public\nlicense. According to the district court, the jury could have concluded that\n\xe2\x80\x9cAndroid\xe2\x80\x99s impact on the market for the copyrighted works paralleled what Sun\nalready expected via its OpenJDK.\xe2\x80\x9d\nOn appeal, Oracle argues that the evidence of actual and potential harm stemming\nfrom Google\xe2\x80\x99s copying was \xe2\x80\x9coverwhelming,\xe2\x80\x9d and that the district court erred as a\nmatter of law in concluding otherwise. We agree.\nFirst, with respect to actual market harm, the evidence showed that Java SE had been\nused for years in mobile devices, including early smartphones, prior to Android\xe2\x80\x99s\nrelease. Specifically, the jury heard testimony that Java SE was already in\nsmartphones, including Blackberry, SavaJe, Danger, and Nokia. That Android\ncompeted directly with Java SE in the market for mobile devices is sufficient to\nundercut Google\xe2\x80\x99s market harm arguments. With respect to tablets, the evidence\nshowed that Oracle licensed Java SE for the Amazon Kindle. After Android\xe2\x80\x99s release,\nhowever, Amazon was faced with two competing options \xe2\x80\x94 Java SE and Android\n\xe2\x80\x94 and selected Android.13\nFootnote 13: Google submits that the jury could have discounted this evidence because the Java SE APIs were\navailable for free through OpenJDK. But Amazon moved from Java to Android \xe2\x80\x94 not to OpenJDK. And the\nevidence of record makes clear that device manufacturers did not view OpenJDK as a commercially viable\nalternative to using Java SE because any improvement to the packages in OpenJDK had to be given away for free\nto the Java community.\n\nThe jury also heard evidence that Amazon later used the fact that Android was free\nto negotiate a steep discount to use Java SE in its newer e-reader. In other words, the\nrecord contained substantial evidence that Android was used as a substitute for Java\nSE and had a direct market impact. Given this evidence of actual market harm, no\nreasonable jury could have concluded that there was no market harm to Oracle from\nGoogle\xe2\x80\x99s copying.\n\n515\n\n\x0cEven if there were a dispute about whether Oracle was licensing Java SE in\nsmartphones at the time Android launched, moreover, \xe2\x80\x9cfair use focuses on potential,\nnot just actual, market harm.\xe2\x80\x9d Monge, 688 F.3d at 1181. Accordingly, although the\ndistrict court focused exclusively on the market it found that Oracle had already\nentered \xe2\x80\x94 desktops and laptops \xe2\x80\x94 it should have considered how Google\xe2\x80\x99s copying\naffected potential markets Oracle might enter or derivative works it might create or\nlicense others to create. See Campbell, 510 U.S. at 590. Licensing Java SE for\nsmartphones with increased processing capabilities was one such potential new\nmarket. And the fact that Oracle and Google engaged in lengthy licensing\nnegotiations demonstrates that Oracle was attempting to license its work for mobile\ndevices, including smartphones.14\nFootnote 14: Of course, the fact that those negotiations were not successful does not factor into the analysis.\nCampbell, 510 U.S. at 585 n.18 (\xe2\x80\x9cIf the use is otherwise fair, then no permission need be sought or granted. Thus,\nbeing denied permission to use a work does not weigh against a finding of fair use.\xe2\x80\x9d). Such evidence was only\nrelevant to show Oracle\xe2\x80\x99s interest in the potential market for smartphones.\n\nSmartphones were, therefore, a \xe2\x80\x9ctraditional, reasonable, or likely to be developed\nmarket.\xe2\x80\x9d See Swatch Grp., 756 F.3d at 91; see also Seltzer, 725 F.3d at 1179.\nGoogle argues that a reasonable jury could have concluded that Java SE and Android\ndid not compete in the same market because Oracle: (1) was not a device maker; and\n(2) had not yet built its own smartphone platform. Neither argument has merit. That\nOracle never built a smartphone device is irrelevant because potential markets\ninclude licensing others to develop derivative works. See Campbell, 510 U.S. at 592.\nThe fact that Oracle had not yet developed a smartphone platform is likewise\nirrelevant as a matter of law because, as Oracle submits, a market is a potential\nmarket even where the copyright owner has no immediate plans to enter it or is\nunsuccessful in doing so. See Worldwide Church, 227 F.3d at 1119; Micro Star, 154 F.3d\nat 1113. Even assuming a reasonable jury could have found no current market harm,\nthe undisputed evidence showed, at a minimum, that Oracle intended to license Java\nSE in smartphones; there was no evidence in the record to support any contrary\nconclusion. Because the law recognizes and protects a copyright owner\xe2\x80\x99s right to\nenter a \xe2\x80\x9cpotential market,\xe2\x80\x9d this fact alone is sufficient to establish market impact.\nGiven the record evidence of actual and potential harm, we conclude that\n\xe2\x80\x9cunrestricted and widespread conduct of the sort engaged in by\xe2\x80\x9d Google would\nresult in \xe2\x80\x9ca substantially adverse impact on the potential market for the original\xe2\x80\x9d and\nits derivatives. See Campbell, 510 U.S. at 590 (citation and quotation marks omitted).\nAccordingly, the fourth factor weighs heavily in favor of Oracle.\nBalancing the Four Factors\nHaving undertaken a case-specific analysis of all four factors, we must weigh the\nfactors together \xe2\x80\x9cin light of the purposes of copyright.\xe2\x80\x9d Campbell, 510 U.S. at 578.\nWe conclude that allowing Google to commercially exploit Oracle\xe2\x80\x99s work will not\nadvance the purposes of copyright in this case. Although Google could have\nfurthered copyright\xe2\x80\x99s goals of promoting creative expression and innovation by\ndeveloping its own APIs, or by licensing Oracle\xe2\x80\x99s APIs for use in developing a new\nplatform, it chose to copy Oracle\xe2\x80\x99s creative efforts instead. There is nothing fair\nabout taking a copyrighted work verbatim and using it for the same purpose and\nfunction as the original in a competing platform.\n516\n\n\x0cEven if we ignore the record evidence and assume that Oracle was not already\nlicensing Java SE in the smartphone context, smartphones were undoubtedly a\npotential market. Android\xe2\x80\x99s release effectively replaced Java SE as the supplier of\nOracle\xe2\x80\x99s copyrighted works and prevented Oracle from participating in developing\nmarkets. This superseding use is inherently unfair.\nOn this record, factors one and four weigh heavily against a finding of fair use, while\nfactor two weighs in favor of such a finding and factor three is, at best, neutral.\nWeighing these factors together, we conclude that Google\xe2\x80\x99s use of the declaring code\nand SSO of the 37 API packages was not fair as a matter of law.\nWe do not conclude that a fair use defense could never be sustained in an action\ninvolving the copying of computer code. Indeed, the Ninth Circuit has made it clear\nthat some such uses can be fair. See Sony, 203 F.3d at 608; Sega, 977 F.2d at 1527-28.\nWe hold that, given the facts relating to the copying at issue here \xe2\x80\x94 which differ\nmaterially from those at issue in Sony and Sega \xe2\x80\x94 Google\xe2\x80\x99s copying and use of this\nparticular code was not fair as a matter of law.\nIV. CONCLUSION\nFor the foregoing reasons, we conclude that Google\xe2\x80\x99s use of the 37 Java API\npackages was not fair as a matter of law. We therefore reverse the district court\xe2\x80\x99s\ndecisions denying Oracle\xe2\x80\x99s motions for JMOL and remand for a trial on damages.\nThe district court may determine the appropriate vehicle for consideration of\ninfringement allegations regarding additional uses of Android.\nREVERSED AND REMANDED\nNotes and questions\n(1) In Oracle America, Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018) the court of appeals\nfor the Federal Circuit overturned a jury verdict that Google\xe2\x80\x99s unauthorized use of 37\npackages of the Java application programming interface in its Android operating system was\nfair use. The Federal Circuit held that Google\xe2\x80\x99s use of the Java API packages was not fair as\na matter of law.\n(2) The timing of the Federal Circuit\xe2\x80\x99s decision is curious. If Google\xe2\x80\x99s fair use defense was\nreally unsustainable as a matter of law in 2018, why wasn\xe2\x80\x99t it also unsustainable in 2014 when\nthe Federal Circuit reversed the district court\xe2\x80\x99s finding that the API packages were not\ncopyrightable as a matter of law and remanded with instructions to reinstate the jury\xe2\x80\x99s\ninfringement verdict and for further proceedings on Google\xe2\x80\x99s fair use defense. See, Oracle\nAmerica, Inc. v. Google Inc., 750 F.3d 1339, 1348 (Fed. Cir. 2014).\n(3) How does the court justify overturning the jury? The Federal Circuit, applying the law of\nthe Ninth Circuit, held (at 1195) that the role of the jury in fair use cases \xe2\x80\x9cis limited to\ndetermining disputed \xe2\x80\x98historical facts,\xe2\x80\x99 not the inferences or conclusions to be drawn from\nthose facts.\xe2\x80\x9d The court cites a string of Ninth Circuit authority for this position beginning\nwith Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986). The Federal Circuit even hints that perhaps\nthe case should not have been sent to a jury at all (at 1196):\nAccordingly, while we might assess the jury\xe2\x80\x99s role in the assessment of fair use\ndifferently if not bound by Ninth Circuit law, we proceed on the assumption both\n\n517\n\n\x0cthat: (1) it was not error to send the question to the jury, because the Ninth Circuit\nhas at least implicitly endorsed doing so; \xe2\x80\xa6\n\n(4) How much of the Federal Circuit\xe2\x80\x99s application of the fair use doctrine follows from its\nassessment that Google\xe2\x80\x99s use of the API packages is not transformative as a matter of law?\nWhy did the Federal Circuit conclude that Google\xe2\x80\x99s use of the API packages was not\ntransformative? Was this an issue of law, of fact, or something in between? Did the Federal\nCircuit correctly apply Ninth Circuit precedent to this question?\n[Placeholder for additional notes on Sega Enterprises Ltd. v. Accolade 977 F.2d 1510 (9th Cir.\n1992) and Sony Computer Entertainment, Inc. v. Connectix Corp. 203 F.3d 596 (9th Cir. 2000)]\n(5) The Federal Circuit reasoned through the fair use factors as follows:\nOn the first factor, it found that (i) Google\xe2\x80\x99s use of the API packages must be considered\ncommercial and as such it weighed against a finding of fair use and (ii) Google\xe2\x80\x99s use of the\nAPI packages is not transformative as a matter of law, primarily because the copied APIs\nperform the same function in Android as they did in the Java platform. The Federal Circuit\nheld that the fact that Google wrote its own implementing code for a new operating\nenvironment (smart phones) was irrelevant to the question of whether use of the APIs was\ntransformative because in so doing it did not alter the expressive content or message of the\noriginal work that it copied.\nOn the second factor, the district court held on remand that while the declaring code of the\nAPIs and entire structure sequence and organization of the APIs were creative enough to\nqualify for copyright protection, functional considerations predominated in their design. The\nFederal Circuit agreed that reasonable jurors could have concluded that functional\nconsiderations in the APIs were both substantial and important and thus that the second\nfactor favored a finding of fair use. However, the Federal Circuit was quick to point out that\nthis second factor typically has not been terribly significant in the overall fair use balancing\nand (at 1205):\nWe note, moreover, that allowing this one factor to dictate a conclusion of fair use\nin all cases involving copying of software could effectively negate Congress\xe2\x80\x99s express\ndeclaration \xe2\x80\x94 continuing unchanged for some forty years \xe2\x80\x94 that software is\ncopyrightable. Accordingly, though the jury\xe2\x80\x99s assumed view of the nature of the\ncopyrighted work weighs in favor of finding fair use, it has less significance to the\noverall analysis.\n\nThe Federal Circuit found that the third fair use factor, \xe2\x80\x9cthe amount and substantiality of the\nportion used\xe2\x80\x9d, was \xe2\x80\x9cat best, neutral in the fair use inquiry, and arguably weighs against such a\nfinding.\xe2\x80\x9d The court discounted the fact that the copied APIs represented only a tiny fraction\nof the original copyrighted work and also of Google\xe2\x80\x99s Android operating system and noted\nthat only 170 of the 11,500 lines of code Google copied were strictly necessary to write in\nthe Java language. The Federal Circuit did not accept that copying APIs to make it easier for\nprogrammers familiar with Java to write to Android was necessary and (at 1207) dismissed\nthe core of Google\xe2\x80\x99s interoperability argument as analogous \xe2\x80\x9cto copying the most famous\nand well recognized aspects of a work \xe2\x80\x98to get attention\xe2\x80\x99 or \xe2\x80\x98to avoid the drudgery in working\nup something fresh\xe2\x80\x99\xe2\x80\x9d (quoting the Ninth Circuit decision in Dr. Seuss Enters., 109 F.3d at\n1401, which itself was quoting Campbell, 510 U.S. at 580).\nOn the fourth fair use factor, Oracle argued that Android competed with Java SE in the\nmarket for mobile devices and that Android had displaced Java SE on the Amazon Kindle.\n518\n\n\x0cThe Federal Circuit agreed with Oracle that the evidence of actual and potential harm\nstemming from Google\xe2\x80\x99s copying was \xe2\x80\x9coverwhelming\xe2\x80\x9d and that the district court erred as a\nmatter of law in holding otherwise. Its analysis relied heavily on Oracle\xe2\x80\x99s intention to license\nJava SE in smartphones in the future and the \xe2\x80\x9ccopyright owner\xe2\x80\x99s right to enter a \xe2\x80\x98potential\nmarket,\xe2\x80\x99\xe2\x80\x9d as sufficient to establish market impact.\n(6) There is no academic consensus as to whether the Federal Circuit was correct in Oracle v.\nGoogle, but the overwhelming weight of opinion is against.\nOne way to look at this is that although the court was fundamentally wrong in its 2014\ndecision, if we accept that decision for the sake of argument, the 2018 fair use decision\nseems to follow. The fair use decision follows from the copyrightability decision because it is\nhard to frame an argument for transformative fair use that doesn\xe2\x80\x99t simply contradict the\ncourt\xe2\x80\x99s erroneous ruling that the Java declaring code is protectable expression and that the\nStructure Sequence and Organization of the entire Java system is also protected by copyright.\nIf we accept that the function of the declaring code should be protected, then Google\xe2\x80\x99s use\nof that code to perform the same function is not transformative.\n\n519\n\n\x0c15. DISTRIBUTION & FIRST SALE\nInternational framework\nIn theory, an exclusive right of distribution would give the copyright owner the right to\ncontrol any use of the copyrighted work that involved a reproduction of the work changing\nhands. This is a useful addition to the reproduction right because it regulates downstream\nconduct by people who might not be liable for infringing the reproduction right. For\nexample, if A makes 100 unauthorized copies and sells them to B, B can be sued for\nviolating the distribution right even if she was not responsible for A\xe2\x80\x99s initial violation. Of\ncourse, giving the sort of ongoing control over particular physical copies to the copyright\nowner could cause a host of practical problems. The transaction costs and information costs\ninvolved in checking back with rightsholders for every transfer of a copy of the work would\nmake it impossible for individuals to know what to do with old books, movies, and CDs\nthey no longer have any use for.\nEvery copyright jurisdiction around the world limits the exclusive right of distribution (or its\nequivalent) in some way. Most commonly, the distribution right is deemed to have been\n\xe2\x80\x9cexhausted\xe2\x80\x9d by the first sale of any particular physical embodiment of the work. In some\njurisdictions, the distribution right is exhausted by a sale anywhere in the world; in others, a\nsale in that particular jurisdiction is required. The European Union takes a regional approach\nto exhaustion. The sale of the work in one member nation exhausts the distribution right for\nthe whole European Union. Books sold in Belgium can be imported into France without the\napproval of the copyright owner, but books sold in Bolivia cannot.\nThese different approaches to exhaustion partly explain why the Berne Convention does not\ninclude a general right of distribution. But note that Berne does recognize a right of\ndistribution for cinematographic adaptations under Article 14(1). Likewise, the TRIPs\nAgreement expressly leaves the issue of exhaustion as a matter for individual member states.\nHowever, the TRIPs Agreement does recognize, in Article 11, a rental rights for authors of\ncomputer programs and cinematographic works, subject to certain limitations.\nBerne Convention, Article 14\n(1) Authors of literary or artistic works shall have the exclusive right of authorizing:\n(i) the cinematographic adaptation and reproduction of these works, and the\ndistribution of the works thus adapted or reproduced;\n(ii) the public performance and communication to the public by wire of the works\nthus adapted or reproduced.\n(2) The adaptation into any other artistic form of a cinematographic production\nderived from literary or artistic works shall, without prejudice to the authorization of\nthe author of the cinematographic production, remain subject to the authorization\nof the authors of the original works.\nTRIPs Article 6 (Exhaustion)\nFor the purposes of dispute settlement under this Agreement \xe2\x80\xa6 nothing in this\nAgreement shall be used to address the issue of the exhaustion of intellectual\nproperty rights.\nTRIPs Article 11 (Rental Rights)\n\n520\n\n\x0cIn respect of at least computer programs and cinematographic works, a Member\nshall provide authors and their successors in title the right to authorize or to\nprohibit the commercial rental to the public of originals or copies of their copyright\nworks. A Member shall be excepted from this obligation in respect of\ncinematographic works unless such rental has led to widespread copying of such\nworks which is materially impairing the exclusive right of reproduction conferred in\nthat Member on authors and their successors in title. In respect of computer\nprograms, this obligation does not apply to rentals where the program itself is not\nthe essential object of the rental.\n\nThe Distribution Right in the United States\nThe Copyright Act of 1909 expressly protected the right to \xe2\x80\x9cpublish\xe2\x80\x9d and \xe2\x80\x9cvend;\xe2\x80\x9d the 1976\nAct, in contrast, contains a right to \xe2\x80\x9cdistribute copies or phonorecords of the copyrighted\nwork to the public by sale or other transfer of ownership, or by rental, lease, or lending.\xe2\x80\x9d\n17 U.S. Code \xc2\xa7 106\nSubject to sections 107 through 122, the owner of copyright under this title has the\nexclusive rights to do and to authorize any of the following: \xe2\x80\xa6\n(3) to distribute copies or phonorecords of the copyrighted work to the public by\nsale or other transfer of ownership, or by rental, lease, or lending;\n\nIn a simpler technological age, the concept of distributing copies of works to the public was\nnot complicated, however, digitization and the Internet have made the metaphysics of the\ndistribution right a bit more interesting. The distribution right is entirely intuitive for what\nwe tend to think of as \xe2\x80\x9cphysical books\xe2\x80\x9d, i.e., books printed on paper. In the words of the\nstatute, one distributes a physical book through a transfer of title\xe2\x80\x94\xe2\x80\x9csale or other transfer of\nownership\xe2\x80\x9d\xe2\x80\x94or a transfer of possession\xe2\x80\x94\xe2\x80\x9cby rental, lease, or lending.\xe2\x80\x9d Arguably,\nabandonment falls outside the terms of the statute, but that does not seem to have lead to\nmuch litigation. Moving from the physical to the digital, it is not immediately obvious\nwhether a digital transmission, such as downloading an MP3 music file or a piece of software\nfrom an online store, should be thought of as a distribution even though it certainly would\nhave come within the concept of vending under the 1909 Act.\nDistribution by digital transmission?\nIf we take the words of the Copyright Act at face value, it might seem that digital\ntransmissions do not implicate the exclusive right to distribute the copyrighted work in\n\xe2\x80\x9ccopies or phonorecords.\xe2\x80\x9d But in copyright law, logic and first impressions from the text\noften take a backseat to more policy focused and less literal methods of interpretation.\nSection 106(3) speaks to the distribution of \xe2\x80\x9ccopies or phonorecords,\xe2\x80\x9d which are defined in\nSection 101 as \xe2\x80\x9cmaterial objects . . . in which a work is fixed by any method now known or\nlater developed, and from which the [work/sounds] can be perceived, reproduced, or\notherwise communicated, either directly or with the aid of a machine or device.\xe2\x80\x9d\n17 U.S. Code \xc2\xa7 101 \xe2\x80\x93 Definitions\n\xe2\x80\x9cCopies\xe2\x80\x9d are material objects, other than phonorecords, in which a work is fixed by\nany method now known or later developed, and from which the work can be\nperceived, reproduced, or otherwise communicated, either directly or with the aid of\n\n521\n\n\x0ca machine or device. The term \xe2\x80\x9ccopies\xe2\x80\x9d includes the material object, other than a\nphonorecord, in which the work is first fixed.\n\nThe transmission of bits over the Internet does not involve the distribution of a material\nobject. After all, can you really say that something has been distributed if it still exists at its\npoint of origin? Furthermore, note that Section 106(3) limits the scope of the right to\ndistributions made \xe2\x80\x9cby sale or other transfer of ownership, or by rental, lease, or lending,\xe2\x80\x9d all\nof which seem to require a change in ownership or possession of a material object. They all\nseem to indicate that something moves from transferor to transferee. This does not happen\nin digital transmissions. A digital transmission does not divest the sender of her copy of the\nrelevant file; it merely creates a duplicate at the recipient\xe2\x80\x99s location\xe2\x80\x94there is a reproduction,\nbut not a change of ownership or possession as these terms are usually understood.\nCourts have considered the argument that downloads are not distributions summarized\nabove and rejected it.146 A sufficient number of courts have held that digital transmissions do\nin fact implicate the exclusive right to distribute the copyrighted work that the proposition\nshould probably be regarded as settled.147 This view is given further weight by the fact that in\nNew York Times Co. v. Tasini, 533 U.S. 483, 498 (2001) the Court indicated that selling copies\nof news articles for download was a violation of the plaintiff\xe2\x80\x99s distribution right.\nWhy do courts think that file transmission implicates the distribution right?\nThe opinion in London-Sire Records, Inc. v. Doe 1, 542 F. Supp. 2d 153 (D. Mass. 2008) explains\nthe logic of this broader interpretation of the distribution right. In London-Sire, the court\nnotes that electronic files are \xe2\x80\x9cmaterial objects\xe2\x80\x9d within the meaning of the Copyright Act,\nexplaining that \xe2\x80\x9cany object in which a sound recording can be fixed\xe2\x80\x9d\xe2\x80\x94including \xe2\x80\x9cthe\nappropriate segment of [a] hard disk\xe2\x80\x9d\xe2\x80\x94qualifies as such. The court holds that electronic file\ntransfers are \xe2\x80\x9cdistributions\xe2\x80\x9d under Section 106(3) because the purpose of the distribution right\nis to \xe2\x80\x9callow the author to control the rate and terms at which copies or phonorecords of the\nwork become available to the public.\xe2\x80\x9d Thus, \xe2\x80\x9cwhile the statute requires that distribution be\nof \xe2\x80\x98material objects,\xe2\x80\x99 there is no reason to limit \xe2\x80\x98distribution\xe2\x80\x99 to processes in which a material\nobject exists throughout the entire transaction\xe2\x80\x94as opposed to a transaction in which a\nmaterial object is created elsewhere at its finish.\xe2\x80\x9d In other words, the court concluded that it\nis enough that the action creates a new possessor of a material object encoding the work, there is no\nneed that the distributor be dispossessed or that a material object literally passes between\nperson A and person B.148\n\nSee e.g. Atlantic Recording Corp. v. Serrano, 2007 WL 4612921, at *3 (S.D. Cal. Dec. 28, 2007) (rejecting the\nargument as \xe2\x80\x9cunsupported by law and \xe2\x80\xa6 contrary to the policies underlying the application of copyright law to\ninternet communications.\xe2\x80\x9d)\n146\n\nSee BMG Rights Mgmt. (US) LLC v. Cox Commc\xe2\x80\x99ns, Inc., 2015 WL 7756130, at *26 (E.D. Va. Dec. 1,\n2015) (\xe2\x80\x9cNot only can electronic files be \xe2\x80\x98material objects,\xe2\x80\x99 but transferring files using a BitTorrent protocol\nsatisfies the transactional element of distribution.\xe2\x80\x9d); Capitol Records, LLC v. ReDigi Inc., 934 F. Supp. 2d 640,\n651 (S.D.N.Y. 2013) (\xe2\x80\x9cReDigi\xe2\x80\x9d) (\xe2\x80\x9c[T]he sale of digital music files on ReDigi\xe2\x80\x99s website infringes Capitol\xe2\x80\x99s\nexclusive right of distribution.\xe2\x80\x9d); Arista Records LLC v. Usenet.com, Inc., 633 F. Supp. 2d 124, 147 (S.D.N.Y.\n2009) (\xe2\x80\x9cUsenet.com\xe2\x80\x9d) (\xe2\x80\x9c[T]he delivery of articles and/or content to download at the request of subscribers can\nbe the basis of direct infringement of the distribution right.\xe2\x80\x9d)\n147\n\nThis is probably right. At common law symbolic delivery requires the passing of an object between A and B\nsuch that A \xe2\x80\x98feels the wrench of dispossession\xe2\x80\x99 but there is no reason why this is required to determine whether\nan act infringes on the copyright owner\xe2\x80\x99s distribution right which is rightly \xe2\x80\x9cconcerned with the ability of a\n148\n\n522\n\n\x0cIn addition to this recipient focused view of distribution, the argument is also supported by\nSection 115 of the Act. That provision establishes a compulsory license for making and\ndistributing phonorecords of nondramatic musical works, repeatedly refers to distribution \xe2\x80\xa6\n\xe2\x80\x9cby means of a digital phonorecord delivery.\xe2\x80\x9d\n17 U.S. Code \xc2\xa7 115. Scope of exclusive rights in nondramatic musical works:\nCompulsory license for making and distributing phonorecords\nIn the case of nondramatic musical works, the exclusive rights provided by clauses\n(1) and (3) of section 106, to make and to distribute phonorecords of such works,\nare subject to compulsory licensing under the conditions specified by this section.\n(a) (1) (A) Conditions for compulsory license.\xe2\x80\x94A person may by complying with\nthe provisions of this section obtain a compulsory license to make and distribute\nphonorecords of a nondramatic musical work, including by means of digital phonorecord\ndelivery. \xe2\x80\xa6 (emphasis added)\n\xe2\x80\xa6\n(e) (10) Digital phonorecord delivery.\xe2\x80\x94\nThe term \xe2\x80\x9cdigital phonorecord delivery\xe2\x80\x9d means each individual delivery of a\nphonorecord by digital transmission of a sound recording that results in a specifically\nidentifiable reproduction by or for any transmission recipient of a phonorecord of that\nsound recording, regardless of whether the digital transmission is also a public\nperformance of the sound recording or any musical work embodied therein, and\nincludes a permanent download, a limited download, or an interactive stream. \xe2\x80\xa6\n(emphasis added)\n\nDistribution versus \xe2\x80\x9cMaking Available\xe2\x80\x9d\nWhether, to what extent, and how United States law recognizes a \xe2\x80\x9cmaking available right\xe2\x80\x9d\nhas been the source of ongoing confusion. The confusion stems from the apparent\ncontradiction between, the treaty obligations the United States has undertaken on the one\nhand and the language of the distribution right expressed in the Copyright Act on the other\nhand.\nIn the mid-1990s the World Intellectual Property Organization (\xe2\x80\x9cWIPO\xe2\x80\x9d) and its member\nstates (including the United States) began discussions on the appropriate protection of\ncopyrighted works in the newly emerging online environment. These discussions culminated\nin the WIPO Internet Treaties\xe2\x80\x94the WIPO Copyright Treaty (\xe2\x80\x9cWCT\xe2\x80\x9d) and the WIPO\nPerformances and Phonograms Treaty (\xe2\x80\x9cWPPT\xe2\x80\x9d).\nAmong other obligations, the WCT and WPPT both require that authors and performers\nrespectively are to \xe2\x80\x9cenjoy the exclusive right of authorizing any communication to the public\nof their works, \xe2\x80\xa6 including the making available to the public of their works[.]\xe2\x80\x9d The\ncomplete text of relevant provision of the WCT follows, but the WPPT provision is virtually\nidentical:\nWIPO Copyright Treaty, Article 8 Right of Communication to the Public\ntransferor to create ownership in someone else\xe2\x80\x94not the transferor\xe2\x80\x99s ability simultaneously to retain his own\nownership.\xe2\x80\x9d London\xe2\x80\x90Sire Records, Inc. v. Doe 1 542 F. Supp. 2d 153 (D. Mass. 2008)\n\n523\n\n\x0cWithout prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii),\n11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and\nartistic works shall enjoy the exclusive right of authorizing any communication to\nthe public of their works, by wire or wireless means, including the making available to\nthe public of their works in such a way that members of the public may access these\nworks from a place and at a time individually chosen by them. (emphasis added)\n\nRegardless of what the United States has agreed under the WIPO Internet Treaties, it has\nnot chosen to implement the language of these treaties directly. There is no \xe2\x80\x9cMaking\nAvailable\xe2\x80\x9d under United States law as such. Rather, copyright owners in the United States\nhave exclusive rights relating to reproduction, distribution, performance and display\xe2\x80\x94these\nrights implement the primary substance of the United States\xe2\x80\x99 obligations under the WIPO\nInternet Treaties.\nThe language in the WIPO Internet Treaties is deliberately imprecise and is frequently\nreferred to as an \xe2\x80\x9cumbrella solution\xe2\x80\x9d that gives treaty members flexibility in implementation.\nOn this reading, it is little more than a matter of preference that in the European Union the\nrights of authors with respect to digital transmissions are protected by a broad right of\n\xe2\x80\x9ccommunication to the public\xe2\x80\x9d while in the United States digital transmissions implicate the\nreproduction right, the distribution right, and the performance and rights, depending on the\ncircumstances. Moreover, various doctrines of secondary liability for copyright infringement\nprobably fill any gap between the exclusive rights in Section 106 and the United States\xe2\x80\x99\ninternational treaty obligations.\nExtended Discussion: The Copyright Office\xe2\x80\x99s 2016 Making Available Report\nDespite the clear text of Section 106(3), the U.S. Copyright Office and some commentators\ncontinue to argue that a making available right is actually an unwritten part of the\ndistribution right. This issue has particular salience in the context of illegal Internet\nfilesharing.\nAs noted above, an unauthorized download is a distribution to the public (and a\nreproduction) and thus violates Section 106(3) (and Section 106(1)) of the Copyright Act.\nBut what if no illegal download has been proven? Does the source of potential illegal\ndownloads \xe2\x80\x9cdistribute\xe2\x80\x9d them by simply making them available?\nThere is no Supreme Court authority on this issue. A number of district courts have\nassumed, without analysis, that placing copyrighted music files in a share folder on a peer-topeer network violates the copyright owner\xe2\x80\x99s exclusive right of distribution.149 However, the\nbetter-reasoned decisions have found exactly the opposite.150 A number of these cases have\nSee e.g. Atlantic Recording Corp. v. Anderson, No. H\xe2\x80\x9006\xe2\x80\x903578, 2008 WL 2316551, at *7\xe2\x80\x938 (S.D. Tex. Mar.\n12, 2008); Motown Record Co. v. DePietro, No. 04\xe2\x80\x90CV\xe2\x80\x902246, 2007 WL 576284, at *3 (E.D. Pa. Feb. 16, 2007)\n149\n\nBMG Rights Mgmt. (US) LLC v. Cox Commc\xe2\x80\x99ns, Inc., No. 1:14\xe2\x80\x90CV\xe2\x80\x901611, 2015 WL 7756130, at *27 (E.D.\nVa. Dec. 1, 2015) (\xe2\x80\x9cTo establish a direct infringement of its distribution right, BMG must show an actual\ndissemination of a copyrighted work.\xe2\x80\x9d); Atlantic Recording Corp. v. Howell, 554 F. Supp. 2d 976, 981 (D. Ariz.\n2008) (\xe2\x80\x9cThe general rule, supported by the great weight of authority, is that \xe2\x80\x98infringement of [the distribution\nright] requires an actual dissemination of either copies or phonorecords.\xe2\x80\x9d) (alteration in original); Capitol\nRecords Inc. v. Thomas, 579 F. Supp. 2d 1210, 1218\xe2\x80\x9319 (D. Minn. 2008) (\xe2\x80\x9cThe plain meaning of the term\n\xe2\x80\x98distribution\xe2\x80\x99 does not include making available and, instead, requires actual dissemination.\xe2\x80\x9d), vacated on other\ngrounds, 692 F.3d 899 (8th Cir. 2012). See also, London\xe2\x80\x90Sire Records, Inc. v. Doe 1, 542 F. Supp. 2d 153, 169\n(D. Mass. 2008)\n150\n\n524\n\n\x0cheld that although a transfer is required, plaintiffs are not required to offer direct proof of a\ndownload to establish distribution, but may do so through circumstantial or investigator\nevidence from which it reasonably can be inferred that a download took place.151\nThe Copyright Office argued in its 2016 report on the making available right that Section\n106(3) is properly construed to cover the making available of copies of works to the public\nin the form of downloads, regardless of whether the plaintiff proves that an actual download\noccurred. In other words, the Copyright Office would treat an offer to distribute as a\ndistribution.\nCopyright Office M aking Available Report 2016 at 36\n\xe2\x80\xa6 the Copyright Office concludes that a person who has \xe2\x80\x98completed all the steps\nnecessary for distribution to the public,\xe2\x80\x99 such that members of the public may access\ndownloadable copies of a work on demand, has engaged in a \xe2\x80\x9cdistribution\xe2\x80\x9d within\nthe meaning of Section 106(3).\xe2\x80\x9d\n\nThe Copyright Office relies on two rather strange cases as precedent to support its view:\nDiversey v. Schmidly and Hotaling v. Church of Jesus Christ of Latter-Day Saints, but the report\nadmits (at 25) that neither decision \xe2\x80\x9cprovides a detailed analysis of the statutory text.\xe2\x80\x9d This is\na deft understatement.\nIn Hotaling v. Jesus Christ of Latter-Day Saints, 118 F.3d 199 (4th Cir. 1997), the defendant\xe2\x80\x99s\nlibrary maintained an unauthorized copy of the copyright owner\xe2\x80\x99s work on microfiche. The\nHotaling case arose from the plaintiff copyright owners\xe2\x80\x99 claim that a library operated by the\nLatter-Day Saints Church made unauthorized copies of copyrighted genealogical materials\nand distributed those materials to its branch libraries. The library did not record public use\nof microfiche and therefore the plaintiff had no evidence as to whether the library ever\nloaned the microfiche to members of the public.\nThe Fourth Circuit held that:\nwhen a public library adds a work to its collection, lists the work in its index or\ncatalog system, and makes the work available to the borrowing or browsing public,\nit has completed all the steps necessary for distribution to the public. At that point, members\nof the public can visit the library and use the work. (emphasis added)\n\nThe court reasoned that\nWere this not to be considered distribution within the meaning of section 106(3), a\ncopyright owner would be prejudiced by a library that does not keep records of\npublic use, and the library would unjustly profit by its own omission.\nThat the library might be advantaged by its lack of records might allow in inference\nthat distribution had in fact taken place, but it provides no basis for reading a\nmaking available right into Section 106(3).\n\nThe Copyright Office\xe2\x80\x99s reliance on Hoteling is unconvincing because Hoteling is not\nconvincing. Indeed, other courts confronted with the rationale in Hoteling have simply recast\nthe decision into something else. The better way to read Hoteling is shown by the district\ncourt in In re Napster, Inc. Copyright Litigation, 377 F.Supp. 2d 796, 803 (N.D. Cal. 2005). In\nthis case, the district court rejected the plaintiff\xe2\x80\x99s theory that Napster directly infringed the\nBMG Rights Mgmt., 2015 WL 7756130, at *21, *27; Thomas, 579 F. Supp. 2d at 1225; London-Sire Records,\n542 F. Supp. 2d at 169, 176\xe2\x80\x9377; Howell, 554 F. Supp. 2d at 983\xe2\x80\x9384.\n151\n\n525\n\n\x0cdistribution right by maintaining a centralized indexing system listing the file names of all\nMP3-formatted music files available on the Napster network. The court cited various\nauthorities to the effect that for the distribution right under Section 106(3) to be infringed,\nan actual transfer must take place. The court recast Hoteling as a case where distribution\ncould be inferred from potential distribution\xe2\x80\x94there was not much doubt that the\ngenealogical materials at issue in Hotaling were copied and distributed to the church\xe2\x80\x99s branch\nlibraries, it was simply that the library did not maintain the records that would be required to\nprove it.\nDiversey v. Schmidly, 738 F.3d 1196 (10th Cir. 2013) is similar to Hotaling. The case concerned\nan infringing copy on which the statute of limitations had run with respect to the\nreproduction right. The Tenth Circuit held that simply listing a copy of the work in the\nlibrary\xe2\x80\x99s catalog amounted to a distribution and that there could be infringement if a patron\nvisited and used the work, stating, \xe2\x80\x9cthis is the essence of a violation of the copyright owner\xe2\x80\x99s\nright to distribute his work via lending.\xe2\x80\x9d\nThis is absurd.\nThe court of appeals in Diversey v. Schmidly takes the words \xe2\x80\x9cto distribute copies or phonorecords of\nthe copyrighted work to the public\xe2\x80\x9d in Section 106(3) and effectively adds \xe2\x80\x9cor offer to\ndistribute.\xe2\x80\x9d If Congress meant to add those terms, it easily could have. The words \xe2\x80\x9cto\ndistribute copies or phonorecords of the copyrighted work to the public\xe2\x80\x9d in 106(3) are clear. There\nis no ambiguity that could justify the heroic reading of the legislative history that the\nCopyright Office relies upon to inject the concept of making available into the distribution\nright.\nAs the Copyright Office notes in its 2016 report, courts have for years relied on the Nimmer\non Copyright treatise and its analysis that \xe2\x80\x9cinfringement of [the distribution right] requires an\nactual dissemination of either copies or phonorecords in support of their conclusion that the\nstatute does not cover offers of access.\xe2\x80\x9d152\nDavid Nimmer has changed his view in the latest version of the Nimmer treatise. Nimmer\nnow adopts the analysis of an article by Professor Peter Menell published in 2011. The nub\nof Menell\xe2\x80\x99s argument is that, based on a deep dive into the legislative history, \xe2\x80\x9cthe\ndistribution right was intended to broaden the scope of the exclusive rights to \xe2\x80\x9cpublish\xe2\x80\x9d and\nto \xe2\x80\x9cvend\xe2\x80\x9d provided under the Copyright Act of 1909, which had long been understood to\nencompass offers to distribute copies to the public.\xe2\x80\x9d153 With due respect to Professor Menell,\nit is very hard to see how this deep reading of the legislative history can overcome the clear\nstatutory language. Arguably the policy shortcomings of the clear expression \xe2\x80\x9cdistribute\ncopies \xe2\x80\xa6 by sale or other transfer of ownership, or by rental, lease, or lending\xe2\x80\x9d were not\nappreciated at the time the 1976 Act was being drafted, but can that policy argument really\njustify rewriting some of the clearest words in the entire Copyright Act? It seems unlikely.\n\nSee e.g., Shannon\xe2\x80\x99s Rainbow LLC v. Supernova Media, Inc., No. 2:08-CV-880 TS, 2011 WL 320905, *4 n.34\n(D. Utah Jan. 31, 2011) (citing Nimmer On Copyright \xc2\xa7 8.11[A] (2007)); Howell, 554 F. Supp. 2d at 981 (same);\nLeadbetter, 2007 WL 1217705, at *3 (citing 2 Nimmer On Copyright \xc2\xa7 8.11[A] (2005); Perfect 10 v. Google,\nInc., 416 F. Supp. 2d 828, 841, 844 (C.D. Cal. 2006) (same).\n152\n\nCopyright Office Report on Making Available Right 2016 at 30. See Peter S. Menell, In Search of Copyright\xe2\x80\x99s\nLost Ark: Interpreting the Right to Distribute in the Internet Age, 59 J. COPYRIGHT SOC\xe2\x80\x99Y U.S.A. 201 (2011).\n153\n\n526\n\n\x0cIn light of the above, one might wonder why the Copyright Office continues to insist that\nthere is a \xe2\x80\x9cmaking available\xe2\x80\x9d under United States copyright law? The most likely answers are\nthat the Copyright Office feels that such an interpretation is the only way to comply with the\nWIPO Internet Treaties and/or that Copyright Office simply believes that a making\navailable right would be a better policy outcome. Neither of these reasons seems sufficient.\n\nThe First Sale Doctrine in the United States\nFor almost as long as there have been mass-produced books there have been publishers\ntrying to guarantee that their books won\xe2\x80\x99t be resold at a discount (this is called \xe2\x80\x9cresale price\nmaintenance\xe2\x80\x9d in the antitrust and competition law world). In 1908, the particular object of\nthe publishers\xe2\x80\x99 ire was the Macy\xe2\x80\x99s department store. This dispute ultimate led to the Supreme\nCourt case of Bobbs-Merrill Co. v. Straus.\nBobbs-Merrill Co. v. Straus 210 U.S. 339 (1908)\nJustice Day delivered the opinion of the court.\nThe complainant in the Circuit Court, appellant here, the Bobbs-Merrill Company,\nbrought suit against the respondents, appellees here, Isidor Straus and Nathan Straus,\npartners trading as R.H. Macy & Company, in the Circuit Court of the United States\nfor the Southern District of New York, to restrain the sale of a copyrighted novel,\nentitled \xe2\x80\x9cThe Castaway,\xe2\x80\x9d at retail at less than one dollar for each copy. The Circuit\nCourt dismissed the bill on final hearing. The decree of the Circuit Court was\naffirmed on appeal by the Circuit Court of Appeals.\nThe appellant is the owner of the copyright upon \xe2\x80\x9cThe Castaway,\xe2\x80\x9d obtained on the\neighteenth day of May, 1904, in conformity to the copyright statutes of the United\nStates. Printed immediately below the copyright notice on the page in the book\nfollowing the title page is inserted the following notice:\nThe price of this book at retail is one dollar net. No dealer is licensed to sell it at a\nless price, and a sale at a less price will be treated as an infringement of the copyright.\nTHE BOBBS-MERRILL COMPANY.\n\nMacy & Company, before the commencement of the action purchased copies of the\nbook for the purpose of selling the same at retail. Ninety per cent of such copies\nwere purchased by them at wholesale at a price below the retail price by about forty\nper cent, and ten per cent of the books purchased by them were purchased at retail,\nand the full price paid therefor.\nIt is stipulated in the record:\nDefendants, at the time of their purchase of copies of the book, knew that it was a\ncopyrighted book and were familiar with the terms of the notice printed in each\ncopy thereof, as above set forth, and knew that this notice was printed in every copy\nof the book purchased by them.\n\nThe wholesale dealers, from whom defendants purchased copies of the book,\nobtained the same either directly from the complainant or from other wholesale\ndealers at a discount from the net retail price, and at the time of their purchase knew\n\n527\n\n\x0cthat the book was a copyrighted book and were familiar with the terms of the notice\nprinted in each copy thereof, as described above, and such knowledge was in all\nwholesale dealers through whom the books passed from the complainants to\ndefendants. But the wholesale dealers were under no agreement or obligation to\nenforce the observance of the terms of the notice by retail dealers or to restrict their\nsales to retail dealers who would agree to observe the terms stated in the notice.\nThe defendants have sold copies of the book at retail at the uniform price of eightynine cents a copy, and are still selling, exposing for sale and offering copies of the\nbook at retail at the price of eighty-nine cents per copy, without the consent of the\ncomplainant.\n[After discussing and distinguishing analogous patent law cases, the Court disclaimed\nany intention to indicate its \xe2\x80\x9cviews as to what would be the rights of parties in\ncircumstances similar to the present case under the patent laws, that there are\ndifferences between the patent and copyright statutes in the extent of the protection\ngranted by them.\xe2\x80\x9d]\nWe therefore approach the consideration of this question as a new one in this court,\nand one that involves the extent of the protection which is given by the copyright\nstatutes of the United States to the owner of a copyright under the facts disclosed in\nthis record. Recent cases in this court have affirmed the proposition that copyright\nproperty under the Federal law is wholly statutory, and depends upon the right\ncreated under the acts of Congress passed in pursuance of the authority conferred\nunder Article I, \xc2\xa7 8, of the Federal Constitution: \xe2\x80\x9cTo promote the progress of\nscience and useful arts, by securing for limited times to authors and inventors the\nexclusive right to their respective writings and discoveries.\xe2\x80\x9d American Tobacco Co. v.\nWerckmeister, 207 U.S. 284; White-Smith Music Co. v. Apollo Co., 209 U.S. 1; following\nthe previous cases of Wheaton v. Peters, 8 Pet. 590; Bank v. Manchester, 128 U.S. 244253; Thompson v. Hubbard, 131 U.S. 123-151.\nThe learned counsel for the appellant in this case in the argument at bar disclaims\nrelief because of any contract, and relies solely upon the copyright statutes, and rights\ntherein conferred. The copyright statutes ought to be reasonably construed with a\nview to effecting the purposes intended by Congress. They ought not to be unduly\nextended by judicial construction to include privileges not intended to be conferred,\nnor so narrowly construed as to deprive those entitled to their benefit of the rights\nCongress intended to grant.\nAt common law an author had a property in his manuscript and might have redress\nagainst any one who undertook to realize a profit from its publication without\nauthority of the author. Wheaton v. Peters, 8 Pet. 591, 659.\nWhile the nature of the property and the protection intended to be given the\ninventor or author as the reward of genius or intellect in the production of his book\nor work of art is to be considered in construing the act of Congress, it is evident that\nto secure the author the right to multiply copies of his work may be said to have\nbeen the main purpose of the copyright statutes.\nIn order to secure this right it was provided in that statute, as it has been in\nsubsequent ones, that the authors of books, their executors, administrators, or\n\n528\n\n\x0cassigns, shall have the \xe2\x80\x9csole right and liberty of printing, reprinting, publishing, and\nvending\xe2\x80\x9d such book for a term of years, upon complying with the statutory\nconditions set forth in the act as essential to the acquiring of a valid copyright. Each\nand all of these statutory rights should be given such protection as the act of\nCongress requires, in order to secure the rights conferred upon authors and others\nentitled to the benefit of the act.\nThe precise question, therefore, in this case is, does the sole right to vend (named in\n\xc2\xa7 4952) secure to the owner of the copyright the right, after a sale of the book to a\npurchaser, to restrict future sales of the book at retail, to the right to sell it at a\ncertain price per copy, because of a notice in the book that a sale at a different price\nwill be treated as an infringement, which notice has been brought home to one\nundertaking to sell for less than the named sum? We do not think the statute can be\ngiven such a construction, and it is to be remembered that this is purely a question of\nstatutory construction. There is no claim in this case of contract limitation, nor\nlicense agreement controlling the subsequent sales of the book.\nIn our view the copyright statutes, while protecting the owner of the copyright in his\nright to multiply and sell his production, do not create the right to impose, by notice,\nsuch as is disclosed in this case, a limitation at which the book shall be sold at retail\nby future purchasers, with whom there is no privity of contract. This conclusion is\nreached in view of the language of the statute, read in the light of its main purpose to\nsecure the right of multiplying copies of the work, a right which is the special\ncreation of the statute. True, the statute also secures, to make this right of\nmultiplication effectual, the sole right to vend copies of the book, the production of\nthe author\xe2\x80\x99s thought and conception. The owner of the copyright in this case did sell\ncopies of the book in quantities and at a price satisfactory to it. It has exercised the\nright to vend. What the complainant contends for embraces not only the right to sell\nthe copies, but to qualify the title of a future purchaser by the reservation of the right\nto have the remedies of the statute against an infringer because of the printed notice\nof its purpose so to do unless the purchaser sells at a price fixed in the notice. To\nadd to the right of exclusive sale the authority to control all future retail sales, by a\nnotice that such sales must be made at a fixed sum, would give a right not included\nin the terms of the statute, and, in our view, extend its operation, by construction,\nbeyond its meaning, when interpreted with a view to ascertaining the legislative\nintent in its enactment.\nThis conclusion renders it unnecessary to discuss other questions noticed in the\nopinion in the Circuit Court of Appeals, or to examine into the validity of the\npublisher\xe2\x80\x99s agreements, alleged to be in violation of the acts to restrain combinations\ncreating a monopoly or directly tending to the restraint of trade.\nThe decree of the Circuit Court of Appeals is\nAffirmed.\nNotes and questions\n(1) In Bobbs-Merrill, the Supreme Court held that such restrictions found no support in\nCopyright law and that the copyright owner\xe2\x80\x99s exclusive right to \xe2\x80\x9cvend\xe2\x80\x9d the work did not\ncreate a right to limit or place conditions upon resale.\n529\n\n\x0c(2) The Bobbs-Merrill Court did not hold that contractual terms restricting resale were invalid,\nit simply held that violation of those terms was not a copyright violation. The department\nstore was not bound by the contract terms for a much simpler reason, it was not a party to\nthem.\nStatutory recognition of distribution right and first sale doctrine\nCongress codified the Bobbs-Merrill decision in the text of the Copyright Act of 1909 and that\nsame principle, the first sale doctrine, is now embodied in Section 109 of the Copyright Act\nof 1976. At first glance, the Copyright Act gives the copyright owner and incredibly broad\nexclusive right \xe2\x80\x9cto distribute copies of the work to the public by sale or other transfer of\nownership, or by rental, lease or lending.\xe2\x80\x9d However, the distribution right is counterbalanced\nby the first sale doctrine\xe2\x80\x94and some would argue, an even a broader concept of copyright\nexhaustion.154\n17 U.S. Code \xc2\xa7 106 - Exclusive rights in copyrighted works\nSubject to sections 107 through 122, the owner of copyright under this title has the\nexclusive rights to do and to authorize any of the following: \xe2\x80\xa6 (3) to distribute\ncopies or phonorecords of the copyrighted work to the public by sale or other\ntransfer of ownership, or by rental, lease, or lending;\n17 U.S. Code \xc2\xa7 109 - Limitations on exclusive rights: Effect of transfer of\nparticular copy or phonorecord\n(a) Notwithstanding the provisions of section 106 (3), the owner of a particular copy\nor phonorecord lawfully made under this title, or any person authorized by such\nowner, is entitled, without the authority of the copyright owner, to sell or otherwise\ndispose of the possession of that copy or phonorecord. \xe2\x80\xa6\n\nWhat is the point of the distribution right if it is negated by the first sale doctrine?\nThe distribution right could be violated when the defendant merely distributes copies\nillegally made by a third party. It could also be infringed by a defendant who made copies\nunder the terms of a license agreement but then distributed those copies beyond the scope\nof what was allowed under the agreement. In both of these examples, the defendant would\nnot be liable (at least not directly) under any of the other rights of the copyright owner under\nSection 106.\nCopyright Exhaustion and Parallel Importation\nKirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013)\nJustice BREYER delivered the opinion of the Court.\nSection 106 of the Copyright Act grants \xe2\x80\x9cthe owner of copyright under this title\xe2\x80\x9d\ncertain \xe2\x80\x9cexclusive rights,\xe2\x80\x9d including the right \xe2\x80\x9cto distribute copies ... of the\ncopyrighted work to the public by sale or other transfer of ownership.\xe2\x80\x9d 17 U.S.C. \xc2\xa7\n106(3). These rights are qualified, however, by the application of various limitations\nset forth in the next several sections of the Act, \xc2\xa7\xc2\xa7 107 through 122. Those sections,\ntypically entitled \xe2\x80\x9cLimitations on exclusive rights,\xe2\x80\x9d include, for example, the principle\n154\n\nSee Aaron Perzanowski & Jason Schultz, Digital Exhaustion, 58 UCLA L. REV. 889 (2011).\n\n530\n\n\x0cof \xe2\x80\x9cfair use\xe2\x80\x9d (\xc2\xa7 107), permission for limited library archival reproduction, (\xc2\xa7 108),\nand the doctrine at issue here, the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine (\xc2\xa7 109).\nSection 109(a) sets forth the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine as follows:\n\xe2\x80\x9cNotwithstanding the provisions of section 106(3) [the section that grants the\nowner exclusive distribution rights], the owner of a particular copy or\nphonorecord lawfully made under this title ... is entitled, without the authority of the\ncopyright owner, to sell or otherwise dispose of the possession of that copy or\nphonorecord.\xe2\x80\x9d (Emphasis added.)\n\nThus, even though \xc2\xa7 106(3) forbids distribution of a copy of, say, the copyrighted\nnovel Herzog without the copyright owner\xe2\x80\x99s permission, \xc2\xa7 109(a) adds that, once a\ncopy of Herzog has been lawfully sold (or its ownership otherwise lawfully\ntransferred), the buyer of that copy and subsequent owners are free to dispose of it as\nthey wish. In copyright jargon, the \xe2\x80\x9cfirst sale\xe2\x80\x9d has \xe2\x80\x9cexhausted\xe2\x80\x9d the copyright owner\xe2\x80\x99s\n\xc2\xa7 106(3) exclusive distribution right.\nWhat, however, if the copy of Herzog was printed abroad and then initially sold with\nthe copyright owner\xe2\x80\x99s permission? Does the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine still apply? Is the\nbuyer, like the buyer of a domestically manufactured copy, free to bring the copy into\nthe United States and dispose of it as he or she wishes?\nTo put the matter technically, an \xe2\x80\x9cimportation\xe2\x80\x9d provision, \xc2\xa7 602(a)(1), says that\n\xe2\x80\x9cimportation into the United States, without the authority of the owner of copyright\nunder this title, of copies ... of a work that have been acquired outside the United\nStates is an infringement of the exclusive right to distribute copies ... under section\n106....\xe2\x80\x9d 17 U.S.C. \xc2\xa7 602(a)(1) (emphasis added).\n\nThus \xc2\xa7 602(a)(1) makes clear that importing a copy without permission violates the\nowner\xe2\x80\x99s exclusive distribution right. But in doing so, \xc2\xa7 602(a)(1) refers explicitly to\nthe \xc2\xa7 106(3) exclusive distribution right. As we have just said, \xc2\xa7 106 is by its terms\n\xe2\x80\x9csubject to\xe2\x80\x9d the various doctrines and principles contained in \xc2\xa7\xc2\xa7 107 through 122,\nincluding \xc2\xa7 109(a)\xe2\x80\x99s \xe2\x80\x9cfirst sale\xe2\x80\x9d limitation. Do those same modifications apply \xe2\x80\x94 in\nparticular, does the \xe2\x80\x9cfirst sale\xe2\x80\x9d modification apply \xe2\x80\x94 when considering whether \xc2\xa7\n602(a)(1) prohibits importing a copy?\nIn Quality King Distributors, Inc. v. L\xe2\x80\x99anza Research Int\xe2\x80\x99l, Inc., 523 U.S. 135, 145\n(1998), we held that \xc2\xa7 602(a)(1)\xe2\x80\x99s reference to \xc2\xa7 106(3)\xe2\x80\x99s exclusive distribution right\nincorporates the later subsections\xe2\x80\x99 limitations, including, in particular, the \xe2\x80\x9cfirst sale\xe2\x80\x9d\ndoctrine of \xc2\xa7 109. Thus, it might seem that, \xc2\xa7 602(a)(1) notwithstanding, one who\nbuys a copy abroad can freely import that copy into the United States and dispose of\nit, just as he could had he bought the copy in the United States.\nBut Quality King considered an instance in which the copy, though purchased abroad,\nwas initially manufactured in the United States (and then sent abroad and sold). This\ncase is like Quality King but for one important fact. The copies at issue here were\nmanufactured abroad. That fact is important because \xc2\xa7 109(a) says that the \xe2\x80\x9cfirst sale\xe2\x80\x9d\ndoctrine applies to \xe2\x80\x9ca particular copy or phonorecord lawfully made under this\ntitle.\xe2\x80\x9d And we must decide here whether the five words, \xe2\x80\x9clawfully made under this\ntitle,\xe2\x80\x9d make a critical legal difference.\n\n531\n\n\x0cPutting section numbers to the side, we ask whether the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine applies\nto protect a buyer or other lawful owner of a copy (of a copyrighted work) lawfully\nmanufactured abroad. Can that buyer bring that copy into the United States (and sell\nit or give it away) without obtaining permission to do so from the copyright owner?\nCan, for example, someone who purchases, say at a used bookstore, a book printed\nabroad subsequently resell it without the copyright owner\xe2\x80\x99s permission?\nIn our view, the answers to these questions are, yes. We hold that the \xe2\x80\x9cfirst sale\xe2\x80\x9d\ndoctrine applies to copies of a copyrighted work lawfully made abroad.\nI\nA\nRespondent, John Wiley & Sons, Inc., publishes academic textbooks. Wiley obtains\nfrom its authors various foreign and domestic copyright assignments, licenses and\npermissions \xe2\x80\x94 to the point that we can, for present purposes, refer to Wiley as the\nrelevant American copyright owner. Wiley often assigns to its wholly owned foreign\nsubsidiary, John Wiley & Sons (Asia) Pte Ltd., rights to publish, print, and sell\nWiley\xe2\x80\x99s English language textbooks abroad. Each copy of a Wiley Asia foreign\nedition will likely contain language making clear that the copy is to be sold only in a\nparticular country or geographical region outside the United States. 654 F.3d, at 213.\nFor example, a copy of Wiley\xe2\x80\x99s American edition says, \xe2\x80\x9cCopyright \xc2\xa9 2008 John\nWiley & Sons, Inc. All rights reserved.... Printed in the United States of America.\xe2\x80\x9d J.\nWalker, Fundamentals of Physics, p. vi (8th ed. 2008). A copy of Wiley Asia\xe2\x80\x99s Asian\nedition of that book says:\n\xe2\x80\x9cCopyright \xc2\xa9 2008 John Wiley & Sons (Asia) Pte Ltd[.] All rights reserved. This\nbook is authorized for sale in Europe, Asia, Africa, and the Middle East only and\nmay be not exported out of these territories. Exportation from or importation of\nthis book to another region without the Publisher\xe2\x80\x99s authorization is illegal and is a\nviolation of the Publisher\xe2\x80\x99s rights. The Publisher may take legal action to enforce its\nrights.... Printed in Asia.\xe2\x80\x9d J. Walker, Fundamentals of Physics, p. vi (8th ed. 2008\nWiley Int\xe2\x80\x99l Student ed.).\n\nBoth the foreign and the American copies say:\n\xe2\x80\x9cNo part of this publication may be reproduced, stored in a retrieval system, or\ntransmitted in any form or by any means ... except as permitted under Sections 107\nor 108 of the 1976 United States Copyright Act.\xe2\x80\x9d Compare, e.g., ibid. (Int\xe2\x80\x99l ed.), with\nWalker, supra, at vi (American ed.).\n\nThe upshot is that there are two essentially equivalent versions of a Wiley textbook,\neach version manufactured and sold with Wiley\xe2\x80\x99s permission: (1) an American\nversion printed and sold in the United States, and (2) a foreign version manufactured\nand sold abroad. And Wiley makes certain that copies of the second version state\nthat they are not to be taken (without permission) into the United States.\nPetitioner, Supap Kirtsaeng, a citizen of Thailand, moved to the United States in\n1997 to study mathematics at Cornell University. He paid for his education with the\nhelp of a Thai Government scholarship which required him to teach in Thailand for\n10 years on his return. Kirtsaeng successfully completed his undergraduate courses at\nCornell, successfully completed a Ph.D. program in mathematics at the University of\n532\n\n\x0cSouthern California, and then, as promised, returned to Thailand to teach. While he\nwas studying in the United States, Kirtsaeng asked his friends and family in Thailand\nto buy copies of foreign edition English-language textbooks at Thai book shops,\nwhere they sold at low prices, and mail them to him in the United States. Kirtsaeng\nwould then sell them, reimburse his family and friends, and keep the profit.\nB\nIn 2008 Wiley brought this federal lawsuit against Kirtsaeng for copyright\ninfringement. Wiley claimed that Kirtsaeng\xe2\x80\x99s unauthorized importation of its books\nand his later resale of those books amounted to an infringement of Wiley\xe2\x80\x99s \xc2\xa7 106(3)\nexclusive right to distribute as well as \xc2\xa7 602\xe2\x80\x99s related import prohibition. Kirtsaeng\nreplied that the books he had acquired were \xe2\x80\x9c\xe2\x80\x98lawfully made\xe2\x80\x99\xe2\x80\x9d and that he had\nacquired them legitimately. Thus, in his view, \xc2\xa7 109(a)\xe2\x80\x99s \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine\npermitted him to resell or otherwise dispose of the books without the copyright\nowner\xe2\x80\x99s further permission.\nThe District Court held that Kirtsaeng could not assert the \xe2\x80\x9cfirst sale\xe2\x80\x9d defense\nbecause, in its view, that doctrine does not apply to \xe2\x80\x9cforeign-manufactured goods\xe2\x80\x9d\n(even if made abroad with the copyright owner\xe2\x80\x99s permission). The jury then found\nthat Kirtsaeng had willfully infringed Wiley\xe2\x80\x99s American copyrights by selling and\nimporting without authorization copies of eight of Wiley\xe2\x80\x99s copyrighted titles. And it\nassessed statutory damages of $600,000 ($75,000 per work).\nOn appeal, a split panel of the Second Circuit agreed with the District Court. It\npointed out that \xc2\xa7 109(a)\xe2\x80\x99s \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine applies only to \xe2\x80\x9cthe owner of a\nparticular copy ... lawfully made under this title.\xe2\x80\x9d And, in the majority\xe2\x80\x99s view, this\nlanguage means that the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine does not apply to copies of American\ncopyrighted works manufactured abroad. A dissenting judge thought that the words\n\xe2\x80\x9clawfully made under this title\xe2\x80\x9d do not refer \xe2\x80\x9cto a place of manufacture\xe2\x80\x9d but rather\n\xe2\x80\x9cfocus on whether a particular copy was manufactured lawfully under\xe2\x80\x9d America\xe2\x80\x99s\ncopyright statute, and that \xe2\x80\x9cthe lawfulness of the manufacture of a particular copy\nshould be judged by U.S. copyright law.\xe2\x80\x9d\nWe granted Kirtsaeng\xe2\x80\x99s petition for certiorari to consider this question in light of\ndifferent views among the Circuits.\nII\nWe must decide whether the words \xe2\x80\x9clawfully made under this title\xe2\x80\x9d restrict the scope\nof \xc2\xa7 109(a)\xe2\x80\x99s \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine geographically. The Second Circuit, the Ninth\nCircuit, Wiley, and the Solicitor General (as amicus) all read those words as imposing\na form of geographical limitation. The Second Circuit held that they limit the \xe2\x80\x9cfirst sale\xe2\x80\x9d\ndoctrine to particular copies \xe2\x80\x9cmade in territories in which the Copyright Act is\nlaw,\xe2\x80\x9d which (the Circuit says) are copies \xe2\x80\x9cmanufactured domestically,\xe2\x80\x9d not \xe2\x80\x9coutside\nof the United States.\xe2\x80\x9d Wiley agrees that those five words limit the \xe2\x80\x9cfirst sale\xe2\x80\x9d\ndoctrine \xe2\x80\x9cto copies made in conformance with the [United States] Copyright\nAct where the Copyright Act is applicable,\xe2\x80\x9d which (Wiley says) means it does not apply to\ncopies made \xe2\x80\x9coutside the United States\xe2\x80\x9d and at least not to \xe2\x80\x9cforeign production of a\ncopy for distribution exclusively abroad.\xe2\x80\x9d Similarly, the Solicitor General says that\nthose five words limit the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine\xe2\x80\x99s applicability to copies \xe2\x80\x9d\xe2\x80\x99made subject\n\n533\n\n\x0cto and in compliance with [the Copyright Act],\xe2\x80\x99\xe2\x80\x9d which (the Solicitor General says)\nare copies \xe2\x80\x9cmade in the United States.\xe2\x80\x9d\nUnder any of these geographical interpretations, \xc2\xa7 109(a)\xe2\x80\x99s \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine would\nnot apply to the Wiley Asia books at issue here. And, despite an American copyright\nowner\xe2\x80\x99s permission to make copies abroad, one who buys a copy of any such book or\nother copyrighted work \xe2\x80\x94 whether at a retail store, over the Internet, or at a library\nsale \xe2\x80\x94 could not resell (or otherwise dispose of) that particular copy without further\npermission.\nKirtsaeng, however, reads the words \xe2\x80\x9clawfully made under this title\xe2\x80\x9d as imposing\na non-geographical limitation. He says that they mean made \xe2\x80\x9cin accordance with\xe2\x80\x9d or\n\xe2\x80\x9cin compliance with\xe2\x80\x9d the Copyright Act. In that case, \xc2\xa7 109(a)\xe2\x80\x99s \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine\nwould apply to copyrighted works as long as their manufacture met the requirements\nof American copyright law. In particular, the doctrine would apply where, as here,\ncopies are manufactured abroad with the permission of the copyright owner. See \xc2\xa7\n106 (referring to the owner\xe2\x80\x99s right to authorize).\nIn our view, \xc2\xa7 109(a)\xe2\x80\x99s language, its context, and the common-law history of the\n\xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine, taken together, favor a non-geographical interpretation. We also\ndoubt that Congress would have intended to create the practical copyright-related\nharms with which a geographical interpretation would threaten ordinary scholarly,\nartistic, commercial, and consumer activities. We consequently conclude that\nKirtsaeng\xe2\x80\x99s nongeographical reading is the better reading of the Act.\nA\nThe language of \xc2\xa7 109(a) read literally favors Kirtsaeng\xe2\x80\x99s nongeographical\ninterpretation, namely, that \xe2\x80\x9clawfully made under this title\xe2\x80\x9d means made \xe2\x80\x9cin\naccordance with\xe2\x80\x9d or \xe2\x80\x9cin compliance with\xe2\x80\x9d the Copyright Act. The language of \xc2\xa7\n109(a) says nothing about geography. The word \xe2\x80\x9cunder\xe2\x80\x9d can mean \xe2\x80\x9cin accordance\nwith.\xe2\x80\x9d 18 Oxford English Dictionary 950 (2d ed.1989). See also Black\xe2\x80\x99s Law\nDictionary 1525 (6th ed. 1990) (\xe2\x80\x9caccording to\xe2\x80\x9d). And a nongeographical\ninterpretation provides each word of the five-word phrase with a distinct purpose.\nThe first two words of the phrase, \xe2\x80\x9clawfully made,\xe2\x80\x9d suggest an effort to distinguish\nthose copies that were made lawfully from those that were not, and the last three\nwords, \xe2\x80\x9cunder this title,\xe2\x80\x9d set forth the standard of \xe2\x80\x9clawful[ness].\xe2\x80\x9d Thus, the\nnongeographical reading is simple, it promotes a traditional copyright objective\n(combatting piracy), and it makes word-by-word linguistic sense.\nThe geographical interpretation, however, bristles with linguistic difficulties. It gives\nthe word \xe2\x80\x9clawfully\xe2\x80\x9d little, if any, linguistic work to do. (How could a book be un\nlawfully \xe2\x80\x9cmade under this title\xe2\x80\x9d?) It imports geography into a statutory provision that\nsays nothing explicitly about it. And it is far more complex than may at first appear.\nTo read the clause geographically, Wiley, like the Second Circuit and the Solicitor\nGeneral, must first emphasize the word \xe2\x80\x9cunder.\xe2\x80\x9d Indeed, Wiley reads \xe2\x80\x9cunder this\ntitle\xe2\x80\x9d to mean \xe2\x80\x9cin conformance with the Copyright Act where the Copyright Act is\napplicable.\xe2\x80\x9d Wiley must then take a second step, arguing that the Act \xe2\x80\x9cis applicable\xe2\x80\x9d\nonly in the United States.\n\n534\n\n\x0cOne difficulty is that neither \xe2\x80\x9cunder\xe2\x80\x9d nor any other word in the phrase means\n\xe2\x80\x9cwhere.\xe2\x80\x9d It might mean \xe2\x80\x9csubject to,\xe2\x80\x9d but as this Court has repeatedly acknowledged,\nthe word evades a uniform, consistent meaning.\nA far more serious difficulty arises out of the uncertainty and complexity\nsurrounding the second step\xe2\x80\x99s effort to read the necessary geographical limitation\ninto the word \xe2\x80\x9capplicable\xe2\x80\x9d (or the equivalent). Where, precisely, is the Copyright Act\n\xe2\x80\x9capplicable\xe2\x80\x9d? The Act does not instantly protect an American copyright holder from\nunauthorized piracy taking place abroad. But that fact does not mean the Act\nis inapplicable to copies made abroad. As a matter of ordinary English, one can say\nthat a statute imposing, say, a tariff upon \xe2\x80\x9cany rhododendron grown in Nepal\xe2\x80\x9d\napplies to all Nepalese rhododendrons. And, similarly, one can say that the American\nCopyright Act is applicable to all pirated copies, including those printed overseas.\nIndeed, the Act itself makes clear that (in the Solicitor General\xe2\x80\x99s language) foreignprinted pirated copies are \xe2\x80\x9csubject to\xe2\x80\x9d the Act.\nThe appropriateness of this linguistic usage is underscored by the fact that \xc2\xa7 104 of\nthe Act itself says that works \xe2\x80\x9dsubject to protection under this title\xe2\x80\x9d include unpublished\nworks \xe2\x80\x9cwithout regard to the nationality or domicile of the author,\xe2\x80\x9d and works \xe2\x80\x9cfirst\npublished\xe2\x80\x9d in any one of the nearly 180 nations that have signed a copyright treaty\nwith the United States. Thus, ordinary English permits us to say that the Act \xe2\x80\x9capplies\xe2\x80\x9d\nto an Irish manuscript lying in its author\xe2\x80\x99s Dublin desk drawer as well as to an\noriginal recording of a ballet performance first made in Japan and now on display in\na Kyoto art gallery.\n\xe2\x80\xa6 In sum, we believe that geographical interpretations create more linguistic\nproblems than they resolve. And considerations of simplicity and coherence tip the\npurely linguistic balance in Kirtsaeng\xe2\x80\x99s, nongeographical, favor.\nB\nBoth historical and contemporary statutory context indicate that Congress, when\nwriting the present version of \xc2\xa7 109(a), did not have geography in mind. [Discussion\nomitted.]\nC\nA relevant canon of statutory interpretation favors a nongeographical reading.\n\xe2\x80\x9cWhen a statute covers an issue previously governed by the common law,\xe2\x80\x9d we must\npresume that \xe2\x80\x9cCongress intended to retain the substance of the common\nlaw.\xe2\x80\x9d Samantar v. Yousuf, 130 S.Ct. 2278, 2289-2290, n. 13 (2010). See also Isbrandtsen\nCo. v. Johnson, 343 U.S. 779, 783 (1952) (\xe2\x80\x9cStatutes which invade the common law...\nare to be read with a presumption favoring the retention of long-established and\nfamiliar principles, except when a statutory purpose to the contrary is evident\xe2\x80\x9d).\nThe \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine is a common-law doctrine with an impeccable historic\npedigree. In the early 17th century Lord Coke explained the common law\xe2\x80\x99s refusal to\npermit restraints on the alienation of chattels. Referring to Littleton, who wrote in\nthe 15th century, Gray, Two Contributions to Coke Studies, 72 U. CHI. L.REV. 1127, 1135\n(2005), Lord Coke wrote:\n\xe2\x80\x9cIf a man be possessed of ... a horse, or of any other chattell ... and give or sell his\nwhole interest ... therein upon condition that the Donee or Vendee shall not alienate\n\n535\n\n\x0cthe same, the condition is void, because his whole interest ... is out of him, so as he\nhath no possibility of a Reverter, and it is against Trade and Traffic, and bargaining\nand contracting between man and man: and it is within the reason of our Author\nthat it should ouster him of all power given to him.\xe2\x80\x9d 1 E. Coke, Institutes of the\nLaws of England \xc2\xa7 360, p. 223 (1628).\n\nA law that permits a copyright holder to control the resale or other disposition of a\nchattel once sold is similarly \xe2\x80\x9cagainst Trade and Traffic, and bargaining and\ncontracting.\xe2\x80\x9d Ibid.\nWith these last few words, Coke emphasizes the importance of leaving buyers of\ngoods free to compete with each other when reselling or otherwise disposing of\nthose goods. American law too has generally thought that competition, including\nfreedom to resell, can work to the advantage of the consumer. See, e.g., Leegin Creative\nLeather Products, Inc. v. PSKS, Inc., 551 U.S. 877, 886 (2007)(restraints with \xe2\x80\x9cmanifestly\nanticompetitive effects\xe2\x80\x9d are per se illegal; others are subject to the rule of reason).\nThe \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine also frees courts from the administrative burden of trying to\nenforce restrictions upon difficult-to-trace, readily movable goods. And it avoids the\nselective enforcement inherent in any such effort. Thus, it is not surprising that for at\nleast a century the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine has played an important role in American\ncopyright law.\nThe common-law doctrine makes no geographical distinctions; nor can we find any\nin Bobbs-Merrill (where this Court first applied the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine) or in \xc2\xa7\n109(a)\xe2\x80\x99s predecessor provision, which Congress enacted a year later. See supra, at\n1360. Rather, as the Solicitor General acknowledges, \xe2\x80\x9ca straightforward application\nof Bobbs-Merrill\xe2\x80\x9d would not preclude the \xe2\x80\x9cfirst sale\xe2\x80\x9d defense from applying to\nauthorized copies made overseas. And we can find no language, context, purpose, or\nhistory that would rebut a \xe2\x80\x9cstraightforward application\xe2\x80\x9d of that doctrine here.\nD\nAssociations of libraries, used-book dealers, technology companies, consumer-goods\nretailers, and museums point to various ways in which a geographical interpretation\nwould fail to further basic constitutional copyright objectives, in particular\npromoting the Progress of Science and useful Arts. U.S. Constitution, Art. I, \xc2\xa7 8, cl. 8.\nThe American Library Association tells us that library collections contain at least 200\nmillion books published abroad (presumably, many were first published in one of the\nnearly 180 copyright-treaty nations and enjoy American copyright protection under\n17 U.S.C. \xc2\xa7 104, see supra, at 1359); that many others were first published in the\nUnited States but printed abroad because of lower costs; and that a geographical\ninterpretation will likely require the libraries to obtain permission (or at least create\nsignificant uncertainty) before circulating or otherwise distributing these books.\nHow, the American Library Association asks, are the libraries to obtain permission to\ndistribute these millions of books? How can they find, say, the copyright owner of a\nforeign book, perhaps written decades ago? They may not know the copyright\nholder\xe2\x80\x99s present address. Brief for American Library Association 15 (many books\nlack indication of place of manufacture; \xe2\x80\x9cno practical way to learn where [a] book\nwas printed\xe2\x80\x9d). And, even where addresses can be found, the costs of finding them,\n\n536\n\n\x0ccontacting owners, and negotiating may be high indeed. Are the libraries to stop\ncirculating or distributing or displaying the millions of books in their collections that\nwere printed abroad?\nUsed-book dealers tell us that, from the time when Benjamin Franklin and\nThomas Jefferson built commercial and personal libraries of foreign books,\nAmerican readers have bought used books published and printed abroad. Brief for\nPowell\xe2\x80\x99s Books Inc. et al. as Amici Curiae (citing M. Stern, Antiquarian Bookselling in\nthe United States (1985)). The dealers say that they have operated for centuries under\nthe assumption that the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine applies. But under a geographical\ninterpretation a contemporary tourist who buys, say, at Shakespeare and Co. (in\nParis), a dozen copies of a foreign book for American friends might find that she\nhad violated the copyright law. The used-book dealers cannot easily predict what the\nforeign copyright holder may think about a reader\xe2\x80\x99s effort to sell a used copy of a\nnovel. And they believe that a geographical interpretation will injure a large portion\nof the used-book business.\nTechnology companies tell us that \xe2\x80\x9cautomobiles, microwaves, calculators, mobile\nphones, tablets, and personal computers\xe2\x80\x9d contain copyrightable software programs\nor packaging. Many of these items are made abroad with the American copyright\nholder\xe2\x80\x99s permission and then sold and imported (with that permission) to the United\nStates. A geographical interpretation would prevent the resale of, say, a car, without\nthe permission of the holder of each copyright on each piece of copyrighted\nautomobile software. Yet there is no reason to believe that foreign auto\nmanufacturers regularly obtain this kind of permission from their software\ncomponent suppliers, and Wiley did not indicate to the contrary when asked.\nWithout that permission a foreign car owner could not sell his or her used car.\nRetailers tell us that over $2.3 trillion worth of foreign goods were imported in 2011.\nBrief for Retail Litigation Center 8. American retailers buy many of these goods after\na first sale abroad. And, many of these items bear, carry, or contain copyrighted\n\xe2\x80\x9cpackaging, logos, labels, and product inserts and instructions for [the use of]\neveryday packaged goods from floor cleaners and health and beauty products to\nbreakfast cereals.\xe2\x80\x9d The retailers add that American sales of more traditional\ncopyrighted works, \xe2\x80\x9csuch as books, recorded music, motion pictures, and magazines\xe2\x80\x9d\nlikely amount to over $220 billion. See also id., at 10 (electronic game industry is $16\nbillion). A geographical interpretation would subject many, if not all, of them to the\ndisruptive impact of the threat of infringement suits.\nArt museum directors ask us to consider their efforts to display foreign-produced\nworks by, say, Cy Twombly, Rene Magritte, Henri Matisse, Pablo Picasso, and others.\nA geographical interpretation, they say, would require the museums to obtain\npermission from the copyright owners before they could display the work,\xe2\x80\x94 even if\nthe copyright owner has already sold or donated the work to a foreign museum.\nWhat are the museums to do, they ask, if the artist retained the copyright, if the artist\ncannot be found, or if a group of heirs is arguing about who owns which copyright?\nThese examples, and others previously mentioned, help explain why Lord Coke\nconsidered the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine necessary to protect \xe2\x80\x9cTrade and Traffic, and\n\n537\n\n\x0cbargaining and contracting,\xe2\x80\x9d and they help explain why American copyright law has\nlong applied that doctrine.\nNeither Wiley nor any of its many amici deny that a geographical interpretation could\nbring about these \xe2\x80\x9chorribles\xe2\x80\x9d \xe2\x80\x94 at least in principle. Rather, Wiley essentially says\nthat the list is artificially invented. It points out that a federal court first adopted a\ngeographical interpretation more than 30 years ago. Yet, it adds, these problems have\nnot occurred. Why not? Because, says Wiley, the problems and threats are purely\ntheoretical; they are unlikely to reflect reality.\nWe are less sanguine. For one thing, the law has not been settled for long in Wiley\xe2\x80\x99s\nfavor. The Second Circuit, in its decision below, is the first Court of Appeals to\nadopt a purely geographical interpretation. The Third Circuit has favored a\nnongeographical interpretation. The Ninth Circuit has favored a modified\ngeographical interpretation with a nongeographical (but textually unsustainable)\ncorollary designed to diminish the problem. And other courts have hesitated to\nadopt, and have cast doubt upon, the validity of the geographical interpretation.\nFor another thing, reliance upon the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine is deeply embedded in the\npractices of those, such as booksellers, libraries, museums, and retailers, who have\nlong relied upon its protection. Museums, for example, are not in the habit of asking\ntheir foreign counterparts to check with the heirs of copyright owners before\nsending, e.g., a Picasso on tour. That inertia means a dramatic change is likely\nnecessary before these institutions, instructed by their counsel, would begin to\nengage in the complex permission-verifying process that a geographical\ninterpretation would demand. And this Court\xe2\x80\x99s adoption of the geographical\ninterpretation could provide that dramatic change. These intolerable consequences\n(along with the absurd result that the copyright owner can exercise downstream\ncontrol even when it authorized the import or first sale) have understandably led the\nNinth Circuit, the Solicitor General as amicus, and the dissent to adopt textual\nreadings of the statute that attempt to mitigate these harms. But those readings are\nnot defensible, for they require too many unprecedented jumps over linguistic and\nother hurdles that in our view are insurmountable.\nFinally, the fact that harm has proved limited so far may simply reflect the reluctance\nof copyright holders so far to assert geographically based resale rights. They may\ndecide differently if the law is clarified in their favor. Regardless, a copyright law that\ncan work in practice only if unenforced is not a sound copyright law. It is a law that\nwould create uncertainty, would bring about selective enforcement, and, if widely\nunenforced, would breed disrespect for copyright law itself.\nThus, we believe that the practical problems that petitioner and his amici have\ndescribed are too serious, too extensive, and too likely to come about for us to\ndismiss them as insignificant \xe2\x80\x94 particularly in light of the ever-growing importance\nof foreign trade to America. The upshot is that copyright-related consequences along\nwith language, context, and interpretive canons argue strongly against a geographical\ninterpretation of \xc2\xa7 109(a).\n[Justice Breyer rejected arguments that the Court\xe2\x80\x99s Quality King decision and the\nCopyright Act\xe2\x80\x99s legislative history supports supported a geographical interpretation\nof Section 109.]\n538\n\n\x0cWiley and the dissent claim that a nongeographical interpretation will make it\ndifficult, perhaps impossible, for publishers (and other copyright holders) to divide\nforeign and domestic markets. We concede that is so. A publisher may find it more\ndifficult to charge different prices for the same book in different geographic markets.\nBut we do not see how these facts help Wiley, for we can find no basic principle of\ncopyright law that suggests that publishers are especially entitled to such rights.\nThe Constitution describes the nature of American copyright law by providing\nCongress with the power to \xe2\x80\x9csecure\xe2\x80\x9d to \xe2\x80\x9cauthors\xe2\x80\x9d \xe2\x80\x9cfor limited times\xe2\x80\x9d the \xe2\x80\x9cexclusive\nright to their ... writings.\xe2\x80\x9d Art. I, \xc2\xa7 8, cl. 8. The Founders, too, discussed the need to\ngrant an author a limited right to exclude competition. But the Constitution\xe2\x80\x99s\nlanguage nowhere suggests that its limited exclusive right should include a right to\ndivide markets or a concomitant right to charge different purchasers different prices\nfor the same book, say to increase or to maximize gain. Neither, to our knowledge,\ndid any Founder make any such suggestion. We have found no precedent suggesting\na legal preference for interpretations of copyright statutes that would provide for\nmarket divisions.\nTo the contrary, Congress enacted a copyright law that (through the \xe2\x80\x9cfirst sale\xe2\x80\x9d\ndoctrine) limits copyright holders\xe2\x80\x99 ability to divide domestic markets. And that\nlimitation is consistent with antitrust laws that ordinarily forbid market divisions.\nCf. Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990) (per curiam) (\xe2\x80\x9cAgreements\nbetween competitors to allocate territories to minimize competition are illegal\xe2\x80\x9d).\nWhether copyright owners should, or should not, have more than ordinary\ncommercial power to divide international markets is a matter for Congress to decide.\nWe do no more here than try to determine what decision Congress has taken.\nIV\nFor these reasons we conclude that the considerations supporting Kirtsaeng\xe2\x80\x99s\nnongeographical interpretation of the words \xe2\x80\x9clawfully made under this title\xe2\x80\x9d are the\nmore persuasive. The judgment of the Court of Appeals is reversed, and the case is\nremanded for further proceedings consistent with this opinion.\n[Justice Kagan concurred, joined by Justice Alito. Justice Ginsburg dissented, joined\nby Kennedy and by Scalia in part]\nNotes and Questions\n(1) In Kirtsaeng, the majority held that the words \xe2\x80\x9clawfully made under this title\xe2\x80\x9d in Section\n109 indicated a principle of international exhaustion. Based on \xe2\x80\x9c\xc2\xa7109(a)\xe2\x80\x99s language, its\ncontext, and the common-law history of the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine\xe2\x80\x9d the majority of the\nSupreme Court declined to limit the first sale doctrine to works made in the United States.\n(2) What is the purpose of the first sale doctrine? Justice Breyer (at 538) says that one\npurpose of the first sale doctrine is to effect the \xe2\x80\x9ccommon law\xe2\x80\x99s refusal to permit restraints\non the alienation of chattels.\xe2\x80\x9d He identifies another purpose as well (at 539), to \xe2\x80\x9cfree[ ]\ncourts from the administrative burden of trying to enforce restrictions upon difficult-to-trace,\nreadily movable goods\xe2\x80\x9d and \xe2\x80\x9cavoid[ ] the selective enforcement inherent in any such effort.\xe2\x80\x9d\n(3) In Equity\xe2\x80\x99s Unstated Domain: The Role of Equity in Shaping Copyright Law, 163 U. Pa. L. Rev.\n1859, 1880-81 (2015), Shyamkrishna Balganesh and Gideon Parchomovsky emphasize and\n539\n\n\x0cdefend the pragmatism of the Court\xe2\x80\x99s decision: \xe2\x80\x9cdespite offering a linguistic rationale for its\nholding, the Court drew on the common law basis of the first sale doctrine and its\nimportance in commerce.\xe2\x80\x9d Do you agree?\n(4) The Court\xe2\x80\x99s decision was met with considerable relief by libraries, museums, used\nbookstores, and technology companies. As the majority noted, \xe2\x80\x9cmuseums, for example, are\nnot in the habit of asking their foreign counterparts to check with the heirs of copyright\nowners before sending, e.g., a Picasso on tour.\xe2\x80\x9d The Court was particularly concerned that\ncopyrighted software in consumer products and copyrighted packaging of consumer\nproducts could be used to control secondary markets.\nCopyright Misuse\nOmega SA v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir. 2015)\nCircuit Judge Wardlaw, concurring in the judgment.\nThe district court granted summary judgment and awarded attorney\xe2\x80\x99s fees to Costco\nbased on the defense of copyright misuse. The majority affirms the district court\nrelying upon the Kirtsaeng-resurrected first sale doctrine; a doctrine we held\ninapplicable the first time around, and which the parties did not brief or argue in this\nappeal. Indeed, as Costco\xe2\x80\x99s counsel confirmed at oral argument, \xe2\x80\x9cthe first sale issue\nper se is not at issue in this appeal.\xe2\x80\x9d I concur in the judgment affirming the district\ncourt, but do so based on the district court\xe2\x80\x99s rationale for granting summary\njudgment\xe2\x80\x94copyright misuse\xe2\x80\x94and the arguments actually presented to us.\nI.\nThe majority opinion fails to do justice to the facts presented by this unique lawsuit.\nCostco is one of America\xe2\x80\x99s largest retailers. It is well known that Costco\xe2\x80\x99s discount\nwarehouses sell everything from pallets of toilet paper to slices of pizza. But only\ncard-carrying members know that Costco also sells a wide range of luxury goods,\nincluding Dom P\xc3\xa9rignon Champagne, Waterford crystal, Dolce & Gabbana\nhandbags, and, until this lawsuit was filed, Omega watches.\nOmega sued Costco for copyright infringement because Costco sold, without\nOmega\xe2\x80\x99s permission, forty-three genuine Omega watches in the United States. Each\nwatch Costco sold was engraved with a copyrighted Omega design (the \xe2\x80\x9cGlobe\nDesign\xe2\x80\x9d), which Costco did not have permission to use. The district court concluded,\nhowever, that because Omega placed the Globe Design on its watches at least in part\nto control the importation and sale of Omega watches in the United States, Omega\nhad misused its copyright. In District Court Judge Terry Hatter\xe2\x80\x99s words, Omega\nimpermissibly \xe2\x80\x9cused the defensive shield of copyright as an offensive sword.\xe2\x80\x9d\nA.\nOmega is a Swiss luxury watchmaker which distributes and sells its watches around\nthe world through authorized distributors and retailers. It is also a wholly-owned\nsubsidiary of the Swiss corporation the Swatch Group, Ltd. The Swatch Group\n(U.S.), Inc. (\xe2\x80\x9cSwatch U.S.A.\xe2\x80\x9d) is Omega\xe2\x80\x99s authorized and exclusive distributor in the\nUnited States. Costco, a U.S. corporation, operates membership warehouse clubs\n\n540\n\n\x0cwhich sell merchandise, including brand-name watches, to their members at lower\nprices than are available through many other retailers.\nSometime before March 2003, Swatch U.S.A. learned that Costco was selling genuine\nOmega watches in the United States without Omega\xe2\x80\x99s authorization. Costco had\ncircumvented Omega\xe2\x80\x99s distribution model and procured the Omega watches through\nthe \xe2\x80\x9cgray market.\xe2\x80\x9d Gray market goods, or parallel imports, are genuine brand-name\nproducts typically manufactured abroad, purchased, and imported into the United\nStates by third parties. Retailers are able to sell these products at a discount through\narbitrage, e.g., if Omega\xe2\x80\x99s watches retail for less in Morocco than in the United States,\nand Costco procures the watches at the Moroccan price and then imports them into\nthe United States, Costco can undercut the authorized U.S. retailers. Costco was only\nthe latest in a series of unauthorized retailers selling Omega watches in the United\nStates. Because Costco and the other \xe2\x80\x9cunauthorized\xe2\x80\x9d retailers were selling Omega\nwatches at far lower prices than Omega\xe2\x80\x99s suggested retail price, Swatch U.S.A. began\nto receive complaints from authorized Omega retailers. Swatch U.S.A.\xe2\x80\x99s thenpresident was faced with a mounting distribution problem. To increase Swatch\nU.S.A.\xe2\x80\x99s control over Omega watches in the United States, Swatch U.S.A.\xe2\x80\x99s president\ntook action \xe2\x80\x9cto stem the tide of the gray market.\xe2\x80\x9d\nSwatch U.S.A.\xe2\x80\x99s legal department devised a strategy to use copyright protection to\nstrengthen Omega\xe2\x80\x99s control over the importation of Omega watches into the United\nStates. On March 12, 2003, Omega registered its \xe2\x80\x9cGlobe Design\xe2\x80\x9d for U.S. copyright\nprotection, and then began engraving a miniscule Globe Design on the underside of\nthe best-selling Seamaster watch. Although the Omega Seamaster was the first\nproduct line engraved with the Globe Design, Omega\xe2\x80\x99s plan was to eventually place\ncopyrighted engravings on many of Swatch U.S.A.\xe2\x80\x99s product lines and use the\ndesign\xe2\x80\x99s copyright protection to prevent unauthorized retailers from selling Omega\xe2\x80\x99s\nwatches.\nIn 2004, Costco purchased 117 Omega Seamaster watches, each engraved with the\nGlobe Design, from ENE Limited for the purpose of resale. Before this lawsuit was\nfiled, Costco had sold forty-three of those watches to its members. Omega sued\nCostco in July 2004, alleging that Costco\xe2\x80\x99s sale of the forty-three Seamaster watches\nengraved with the Globe Design infringed Omega\xe2\x80\x99s copyright in the design in\nviolation of 17 U.S.C. \xc2\xa7\xc2\xa7 106 and 602. In 2007, the district court concluded that the\nfirst sale doctrine was a complete defense to Omega\xe2\x80\x99s claims, and granted Costco\xe2\x80\x99s\nmotion for summary judgment. We reversed that judgment in 2008, holding that the\nfirst sale doctrine did not apply to foreign-made goods first sold abroad and then\nimported into the United States without the copyright owner\xe2\x80\x99s permission. See Omega\nS.A. v. Costco Wholesale Corp. (\xe2\x80\x9cOmega I\xe2\x80\x9d), 541 F.3d 982, 983 (9th Cir. 2008). An\nequally divided Supreme Court affirmed that decision. Costco Wholesale Corp. v. Omega,\nS.A., 562 U.S. 40 (2010) (per curiam).\nOn remand, the parties again cross-moved for summary judgment. This time, the\ndistrict court granted Costco\xe2\x80\x99s motion for summary judgment, based on the equitable\ndefense of copyright misuse. The district court found that the purpose of Omega\xe2\x80\x99s\nlawsuit was to \xe2\x80\x9cstem the tide of the grey market\xe2\x80\x9d and the \xe2\x80\x9cunauthorized importation\nof Omega watches into the U.S.\xe2\x80\x9d Omega had conceded that it had affixed the\ncopyrighted Globe Design to the underside of its watches to take advantage of\n541\n\n\x0csection 602 of the Copyright Act, which makes the importation of copyrighted\ngoods into the United States without the copyright owner\xe2\x80\x99s authorization a violation\nof the owner\xe2\x80\x99s exclusive right to distribute. The district court concluded that Omega\nmisused its copyright in the Globe Design by leveraging its limited monopoly over\nthe design to control the importation and sale of Seamaster watches.\nII.\nA.\nThe constitutional policy underlying copyright protection is to \xe2\x80\x9cpromote the\nProgress of Science and useful Arts.\xe2\x80\x9d U.S. Const. art. I, \xc2\xa7 8, cl. 8. \xe2\x80\x9cThe immediate\neffect of our copyright law is to secure a fair return for an \xe2\x80\x98author\xe2\x80\x99s\xe2\x80\x99 creative labor.\nBut the ultimate aim is, by this incentive, to stimulate artistic creativity for the general\npublic good.\xe2\x80\x9d\nBecause Omega\xe2\x80\x99s watches are useful articles, they are not copyrightable, with some\npossible exceptions not before us. Because the watches are not the proper subject of\ncopyright protection, Omega does not argue that Costco infringed copyrights\nprotecting its watches, the argument upon which the majority rests its opinion.\nInstead, it argues that Costco infringed its limited monopoly over the copyrighted\nGlobe Design, which was engraved on the watches that Costco sold.\nInherent in granting a copyright owner the exclusive right to reproduce his works is\nthe risk that he will abuse the limited monopoly his copyright provides by restricting\ncompetition in a market that is beyond the scope of his copyright. An owner\xe2\x80\x99s\nattempt to impermissibly expand his lawful protection from competition contravenes\nnot only the policy of the copyright laws, but also the central purpose of the antitrust\nlaws. See Glen Holly Entm\xe2\x80\x99t, Inc. v. Tektronix, Inc., 343 F.3d 1000, 1010 (9th Cir.2003)\n(\xe2\x80\x9cThe central purpose of the antitrust laws, state and federal, is to preserve\ncompetition.\xe2\x80\x9d). \xe2\x80\x9cCopyright misuse is a judicially crafted affirmative defense to\ncopyright infringement\xe2\x80\x9d designed to combat the impermissible extension of a\ncopyright\xe2\x80\x99s limited monopoly. Apple Inc. v. Psystar Corp., 658 F.3d 1150, 1157 (9th\nCir.2011). Its purpose is to prevent \xe2\x80\x9cholders of copyrights from leveraging their\nlimited monopoly to allow them control of areas outside the monopoly.\xe2\x80\x9d Id.\nThe defense of copyright misuse, however, is not limited to discouraging anticompetitive behavior. Indeed, \xe2\x80\x9cthe question is not whether the copyright is being\nused in a manner violative of antitrust law, ... but whether the copyright is being used\nin a manner violative of the public policy embodied in the grant of a copyright.\xe2\x80\x9d\nLasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 978 (4th Cir.1990). We expressly\nadopted copyright misuse as an equitable defense to a claim of infringement in\nPractice Management Information Corp. v. American Medical Ass\xe2\x80\x99n, 121 F.3d 516 (9th\nCir.1997), noting that \xe2\x80\x9ccopyright misuse does not invalidate a copyright, but\nprecludes its enforcement during the period of misuse,\xe2\x80\x9d id. at 520 n. 9, as amended\nby 133 F.3d 1140 (9th Cir.1998)\nThe copyright misuse doctrine \xe2\x80\x9cforbids the use of the copyright to secure an\nexclusive right or limited monopoly not granted by the Copyright Office.\xe2\x80\x9d Lasercomb,\n911 F.2d at 977 (alterations omitted). The defense is often applied when a defendant\ncan prove either: (1) a violation of the antitrust laws; (2) that the copyright owner\n\n542\n\n\x0cotherwise illegally extended its monopoly; or (3) that the copyright owner violated\nthe public policies underlying the copyright laws. Society of Holy Transfiguration\nMonastery, Inc. v. Gregory, 689 F.3d 29, 65 (1st Cir.2012). We have discussed copyright\nmisuse in only a handful of published opinions. But while we have applied the\ndoctrine sparingly, copyright misuse is a valid defense, \xe2\x80\x9cthe contours of which are\nstill being defined,\xe2\x80\x9d MDY Indus., LLC v. Blizzard Entm\xe2\x80\x99t, Inc., 629 F.3d 928, 941 (9th\nCir.2010).\nWhile we have often discussed copyright misuse in the context of anti-competitive\nbehavior that restrains the development of competing products, \xe2\x80\x9ca defendant in a\ncopyright infringement suit need not prove an antitrust violation to prevail on a\ncopyright misuse defense.\xe2\x80\x9d Practice Mgmt. Info. Corp., 121 F.3d at 521. As the Seventh\nCircuit interprets the defense:\nThe argument for applying copyright misuse beyond the bounds of antitrust, besides\nthe fact that confined to antitrust the doctrine would be redundant, is that for a\ncopyright owner to use an infringement suit to obtain property protection, here in\ndata, that copyright law clearly does not confer, hoping to force a settlement or even\nachieve an outright victory over an opponent that may lack the resources or the\nlegal sophistication to resist effectively, is an abuse of process.\n\nAssessment Techs. of WI, LLC v. WIREdata, Inc., 350 F.3d 640, 647 (7th Cir.2003).\nThus, to \xe2\x80\x9ccloak [itself] in copyright misuse\xe2\x80\x99s protective armament\xe2\x80\x9d here, Costco is\nnot required to demonstrate that Omega\xe2\x80\x99s use of its copyrighted Globe Design\nviolates antitrust law. This appeal presents the novel issue whether Omega\xe2\x80\x99s\nattempted use of its Globe Design copyright to control imports and restrict\ncompetition from unauthorized retailers of its watches, which are neither\ncopyrightable nor copyrighted, constitutes copyright misuse.\nB.\nThe district court correctly held that Omega misused its copyright \xe2\x80\x9cby leveraging its\nlimited monopoly in being able to control the importation of [the Globe Design] to\ncontrol the importation of its Seamaster watches.\xe2\x80\x9d The district court did not clearly\nerr in finding that: (1) Omega copyrighted the Globe Design, at the advice of its legal\ndepartment, to control the importation and distribution of Omega watches into the\nUnited States; and (2) Omega told its authorized distributors that the purpose of\nsuing Costco was to \xe2\x80\x9cstem the tide of the grey market\xe2\x80\x9d and the \xe2\x80\x9cunauthorized\nimportation of Omega watches into the U.S.\xe2\x80\x9d In other words, Omega attempted to\nuse the copyrighted Globe Design to decrease competition in the U.S. importation\nand distribution of its watches by it and its authorized dealers \xe2\x80\x94 an obvious\nleveraging of a copyright to control an area outside its limited monopoly on the\ndesign.\nOmega argues that its anti-competitive motives are irrelevant to the issue of\ncopyright misuse. According to Omega, our inquiry should instead focus on the\ncopyright holder\xe2\x80\x99s objective conduct or use. But Omega\xe2\x80\x99s semantic hairsplitting is\nunpersuasive. By definition, \xe2\x80\x9cuse\xe2\x80\x9d includes an inquiry into purpose. See Black\xe2\x80\x99s Law\nDictionary 1681 (9th ed.2009) (defining \xe2\x80\x9cuse\xe2\x80\x9d as \xe2\x80\x9cThe application or employment of\nsomething; esp., a long-continued possession and employment of a thing for a\npurpose for which it is adapted\xe2\x80\x9d) (emphasis added); see also Use, Oxford English\n\n543\n\n\x0cDictionary, (\xe2\x80\x9cThe act of putting something to work, or employing or applying a\nthing, for any (esp. a beneficial or productive) purpose.\xe2\x80\x9d (emphasis added)).\nHowever, we need not decide whether Omega\xe2\x80\x99s motives are sufficient to establish\ncopyright misuse. The undisputed record shows that before this lawsuit consumers\nwere able to a buy a genuine Omega Seamaster watch from Costco for 35% less than\nOmega\xe2\x80\x99s suggested retail price. This is no longer the case. Thus, at least one\nconsequence of Omega\xe2\x80\x99s lawsuit has been a reduction of intrabrand price\ncompetition for uncopyrightable Omega watches in the United States.\nLastly, because copyright misuse is an equitable defense to an infringement action,\nthe core of our inquiry is whether \xe2\x80\x9cequity may rightly withhold its assistance from\nsuch a use of the [copyright] by declining to entertain a suit for infringement... until ...\nthe improper practice has been abandoned and [the] consequences of the misuse of\nthe [copyright] have been dissipated.\xe2\x80\x9d Morton Salt Co. v. Suppiger Co., 314 U.S. 488,\n493 (1942), abrogated on other grounds by Ill. Tool Works, Inc. v. Indep. Ink, Inc., 547\nU.S. 28 (2006). If Omega was using its copyright in a manner contrary to public\npolicy, we, as a court of equity, may refuse to aid such misuse. See Lasercomb, 911\nF.2d at 975-76.\nEquity supports the district court\xe2\x80\x99s refusal to enforce Omega\xe2\x80\x99s copyright in its Globe\nDesign against Costco during the period of Omega\xe2\x80\x99s misuse. Omega wielded its\ncopyrighted Globe Design to restrict unauthorized retailers from selling genuine\nOmega watches procured from the gray market. Indeed, in his deposition, Swatch\nU.S.A.\xe2\x80\x99s president agreed that the \xe2\x80\x9cwhole purpose\xe2\x80\x9d of creating the Globe Design in\nthe first place was to prevent unauthorized retailers from selling Omega watches.\nBecause unauthorized retailers, such as Costco, were selling gray market Omega\nwatches in the United States below Omega\xe2\x80\x99s suggested retail price, Omega attempted\nto maintain the price of its watches sold in the United States by inconspicuously\nengraving the copyrighted Globe Design on the underside of its Seamaster watches.\nEven drawing all reasonable inferences in Omega\xe2\x80\x99s favor, there is no genuine dispute\nas to whether Omega sued Costco for copyright infringement at least in part to\ncontrol the unauthorized importation and sale of Omega watches. Thus, the district\ncourt did not err in granting Costco\xe2\x80\x99s motion for summary judgment on the\ncopyright misuse defense.\nRelying on Mazer v. Stein, 347 U.S. 201 (1954), Omega maintains that as the holder of\nthe copyright to its Globe Design it has the right to sue Costco for infringing its\nexclusive right to distribute copies of its Globe Design. See 17 U.S.C. \xc2\xa7\xc2\xa7 106(3);\n602(a)(1). Contrary to Omega\xe2\x80\x99s assertion, Mazer does not empower Omega to\ntransform its Globe Design copyright into a watch copyright, thereby contravening\nthe general rule against granting copyright protection over useful articles. First,\nMazer did not concern copyright misuse. The copyright infringers in Mazer were\nchallenging the underlying validity of the owner\xe2\x80\x99s copyright; they were not\nchallenging how the owner was using the copyright. As Omega itself repeatedly\nemphasizes, the validity of Omega\xe2\x80\x99s copyright in the design is not in dispute. Second,\nthe Mazer Court did not consider the infringer\xe2\x80\x99s challenge to the copyright to be\nrelated to questions of unfair competition \xe2\x80\x94 of which the copyright misuse defense\nis deeply concerned. Instead, the Court focused on whether copyrighted works could\nbe incorporated into utilitarian products and remain copyrightable. Third, a\n\n544\n\n\x0ccopyrighted statuette that serves as the base for a lamp bears a markedly different\nrelationship to the useful product than a nearly invisible copyrighted design that is\ndiscreetly placed on the underside of a watch. Both a lamp and a watch serve\nutilitarian purposes \xe2\x80\x94 to produce light and tell time \xe2\x80\x94 but the copyrighted works\nincorporated into each article affect the character and consumers\xe2\x80\x99 perceptions of\neach article differently. The statuettes in Mazer served as lamp bases, and may have\nbeen one of the central distinguishing characteristics to a consumer between the\ncopyright owner\xe2\x80\x99s lamps and its competitor\xe2\x80\x99s lamps. In contrast, the Globe Design is\nnot a distinguishing characteristic that prospective watch buyers consider when\ndeciding whether to purchase an Omega watch. In fact, when this suit was filed,\nOmega had not publicized the Globe Design and was not using it to influence\nconsumers\xe2\x80\x99 purchasing decisions. Unlike other designs that Omega had engraved on\nits watches, the Globe Design was not \xe2\x80\x9ca mark of prestige and luxury and\nidentification.\xe2\x80\x9d Put more plainly, the Mazer Court\xe2\x80\x99s discussion of copyright concepts\nsuch as originality and separability are not implicated here.\nOmega\xe2\x80\x99s emphasis on other cases involving similar facts \xe2\x80\x94 such as Parfums Givenchy,\nInc. v. Drug Emporium, Inc., 38 F.3d 477, 485 (9th Cir.1994) (holding that a perfume\ndistributor could sue a retailer for copyright infringement when the retailer sold the\nperfume in original copyrighted packaging), and Quality King Distributors, Inc. v. L\xe2\x80\x99anza\nResearch International, Inc., 523 U.S. 135 (1998) (holding that the first sale doctrine is\napplicable to imported copies where a distributor sold imported bottled hair\nproducts affixed with a copyrighted label design) \xe2\x80\x94 is misdirected because those\ncases involved different public policy concerns than those animating the copyright\nmisuse defense. In neither Parfums Givenchy nor Quality King was the defense of\ncopyright misuse at issue. Furthermore, Parfums Givenchy was decided before we\nadopted the copyright misuse defense in Practice Management Information Corp., 121\nF.3d at 520.\nThe context of Omega\xe2\x80\x99s actions is crucial to this conclusion. Omega concedes that it\ndesigned and secured copyright protection for the Globe Design for the purpose of\nusing copyright law to restrict the unauthorized sale of Omega watches in the United\nStates. Costco was one such unauthorized retailer that threatened Omega\xe2\x80\x99s\ndistributor relationships because it sold genuine Omega watches at prices lower than\nauthorized Omega dealers were willing or able to offer. Costco was able to sell\nOmega watches at a discount because it had procured the watches from the gray\nmarket, which took advantage of international differences in Omega\xe2\x80\x99s pricing\nstructures.\nOmega\xe2\x80\x99s right to control distribution of its copyrighted work is not limitless. \xe2\x80\x9cThe\nSupreme Court has made clear that the property right granted by copyright law\ncannot be used with impunity to extend power in the marketplace beyond what\nCongress intended.\xe2\x80\x9d In re Indep. Serv. Orgs. Antitrust Litig., 203 F.3d 1322, 1328\n(Fed.Cir.2000) (citing United States v. Loew\xe2\x80\x99s, Inc., 371 U.S. 38, 47-48 (1962)).\nCopyright misuse \xe2\x80\x9cbars a culpable plaintiff from prevailing on an action for the\ninfringement of the misused copyright.\xe2\x80\x9d Lasercomb, 911 F.2d at 972. The Copyright\nOffice granted Omega the exclusive right to control the importation and distribution\nof the Globe Design into the United States. It did not empower Omega to restrict\ncompetition from unauthorized retailers selling genuine, gray market Seamaster\n\n545\n\n\x0cwatches in the United States. Although the Globe Design engraved on the underside\nof the Seamaster watches was copyrighted, Omega misused its copyright when it\nused its intellectual property protection to obtain a copyright-like monopoly over\nuncopyrightable Seamaster watches. Omega\xe2\x80\x99s expansion of its copyright-like\nmonopoly eliminated competition from unauthorized watch retailers like Costco,\nthereby allowing Omega to control \xe2\x80\x94 through its exclusive distributor, Swatch\nU.S.A. \xe2\x80\x94 the retail pricing of Seamaster watches sold in the United States. If the\ncopyright law allowed Omega to use its copyright to combat the importation and sale\nof all gray market watches that are stamped with the Globe Design, it would\neffectively grant Omega a copyright-like monopoly over the distribution and sale of\nOmega watches in the United States. Because such an out-come directly controverts\nthe aims of copyright law, it is impermissible.\nCiting to Triad Systems Corp. v. Southeastern Express Co., 64 F.3d 1330 (9th Cir.1995),\nand Apple Inc. v. Psystar Corp., 658 F.3d 1150 (9th Cir.2011), among other cases,\nOmega contends that it did not impermissibly leverage its limited monopoly in the\nGlobe Design to control an area outside of that monopoly. The parties in Triad and\nApple Inc., however, were involved in a different type of competition than Omega\nand Costco are involved in here. In Triad, the copyright owner (Triad) manufactured\ncomputers for use by automotive parts stores and designed, sold, and licensed its\nown copyrighted software to run its computers. Triad sued an independent service\norganization (\xe2\x80\x9cISO\xe2\x80\x9d) that serviced Triad computers for copyright infringement,\nalleging that the ISO made unauthorized copies of Triad\xe2\x80\x99s software when it serviced\nTriad computers. Triad and the ISO were \xe2\x80\x9ccompeting for the business of servicing\nand maintaining Triad computers.\xe2\x80\x9d We affirmed the district court\xe2\x80\x99s grant of Triad\xe2\x80\x99s\nmotion for a preliminary injunction, and rejected the ISO\xe2\x80\x99s copyright misuse defense\nbecause \xe2\x80\x9cTriad did not attempt to prohibit Southeastern or any other ISO from\ndeveloping its own service software to compete with Triad.\xe2\x80\x9d\nSimilarly, in Apple Inc. we held that Apple\xe2\x80\x99s software license agreement (\xe2\x80\x9cSLA\xe2\x80\x9d) did\nnot misuse Apple\xe2\x80\x99s copyrights because the SLA did \xe2\x80\x9cnot restrict competitors\xe2\x80\x99 ability\nto develop their own software, nor [did] it preclude customers from using non-Apple\ncomponents with Apple computers.\xe2\x80\x9d 658 F.3d at 1160. The disputed provision of\nthe SLA required the exclusive use of Apple\xe2\x80\x99s software on Apple computers. Id. at\n1153. Psystar was a competing computer manufacturer that sold its \xe2\x80\x9cOpen\nComputers\xe2\x80\x9d with a copy of Apple\xe2\x80\x99s copyrighted software pre-installed. Id. We\naffirmed the district court\xe2\x80\x99s entry of a permanent injunction against Psystar\xe2\x80\x99s\ninfringement of Apple\xe2\x80\x99s copyrighted software. Id. at 1162. In rejecting Psystar\xe2\x80\x99s\ncopyright misuse defense, we distinguished the facts in Apple Inc. from the facts\nunderlying the Fifth Circuit\xe2\x80\x99s finding of copyright misuse in Alcatel USA, Inc. v. DGI\nTechnologies, Inc., 166 F.3d 772 (5th Cir.1999). In Alcatel, a copyright owner used its\ncopyrighted operating system\xe2\x80\x99s licensing agreements to stifle the development of\ncompeting microprocessor cards. 166 F.3d at 793-94. We held in Apple Inc., however,\nthat Apple\xe2\x80\x99s SLA did not hinder competition; it \xe2\x80\x9cmerely restricted the use of Apple\xe2\x80\x99s\nown software to its own hardware.\xe2\x80\x9d 658 F.3d at 1160.\nOmega and Costco are not engaged in the same type of product competition that\nexisted in Triad and Apple Inc. Omega is primarily a watch manufacturer that sells\ndirectly to distributors. The distributors, such as Swatch U.S.A., then sell the watches\n\n546\n\n\x0cto the authorized retailers in their designated territories. Omega\xe2\x80\x99s distribution model\nis designed to carve up geographical territories and grant each regional distributor the\nexclusive right to sell Omega watches to an authorized network of retailers in its own\nterritory. Costco circumvented Omega\xe2\x80\x99s designated distribution channel in the\nUnited States by accessing watches from the gray market. By doing so, Costco began\ncompeting with Omega\xe2\x80\x99s authorized retailers. The retail competition between\nOmega\xe2\x80\x99s authorized retailers and Costco is what Omega sought to suppress. Unlike\nin Apple Inc. and Psystar, but as in Alcatel, Omega\xe2\x80\x99s assertion that its actions do not\npreclude Costco from selling other lines of watches or developing its own line of\nwatches \xe2\x80\x9cis simply irrelevant.\xe2\x80\x9d Alcatel, 166 F.3d at 794.\nSuperficially, Omega\xe2\x80\x99s conduct may appear similar to Apple\xe2\x80\x99s conduct in Apple Inc. v.\nPsystar. As Omega argues, Omega is merely restricting the sale, or use, of its watches\nto dealers that it approves, just as Apple was allowed to restrict the use of its\ncopyrighted software to its own hardware. The analogy breaks down, however,\nbecause, unlike Apple\xe2\x80\x99s ownership of a copyright in its software, Omega does not\nown a copyright in its watches. Omega merely owns the copyright in its Globe\nDesign, which it engraved onto its non-copyrightable watches to limit retail\ncompetition. It would be as if Apple surreptitiously placed a few lines of\nprogramming code from its copyrighted software onto a piece of computer hardware\nthat was not entitled to intellectual property protection, with the express purpose of\nusing its copyright to restrict competing retailers from selling that hardware at\ndiscounted prices. Even when drawing all reasonable inferences in Omega\xe2\x80\x99s favor,\nthere is no genuine dispute concerning whether restricting retail competition was one\nof the reasons Omega sued Costco for copyright infringement.\nOmega had other available remedies. It could have terminated its distribution\nagreements with the distributors that sold Omega watches outside of their designated\nterritories. Or, if Omega believed that Costco, or intermediaries like ENE Limited,\nwere inducing distributors to breach their contracts, Omega may have been able to\nsue them for tortious interference. Instead, Omega improvidently decided to sue\nCostco for copyright infringement. By doing so, Omega misused the Congressionally\nlimited power of copyright protection to address a problem better left for other\navenues of relief.\nIII.\n\xe2\x80\x9cThe limited scope of the copyright holder\xe2\x80\x99s statutory monopoly, like the limited\ncopyright duration required by the Constitution, reflects a balance of competing\nclaims upon the public interest: Creative work is to be encouraged and rewarded, but\nprivate motivation must ultimately serve the cause of promoting broad public\navailability of literature, music, and the other arts.\xe2\x80\x9d Twentieth Century Music Corp., 422\nU.S. at 156. Omega\xe2\x80\x99s attempt to expand the scope of its statutory monopoly by\nmisusing its copyright in the Globe Design upset this balance. The watchmaker\xe2\x80\x99s\nanticompetitive acts promoted neither the broad public availability of the arts nor the\npublic welfare. Instead, they eliminated price competition in the retail market for\nOmega watches and deprived consumers of the opportunity to purchase discounted\ngray market Omega watches from Costco. Omega misused its copyright by\nengraving the Globe Design on the underside of its watches, and attempting to use\ncopyright law to eliminate intrabrand competition from Costco in the retail watch\n547\n\n\x0cmarket. Because the district court correctly held that Omega misused its copyright in\nthe Globe Design by attempting to leverage its limited monopoly over the design to\ncontrol the importation and sale of Seamaster watches, I would affirm the district\ncourt on the issue of copyright misuse.\nNotes and questions\n(1) In Omega SA v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir. 2015) the majority upheld the\ndistrict court granting summary judgment and attorney\xe2\x80\x99s fees to Costco, without addressing\nthe basis for the district court\xe2\x80\x99s ruling. The majority affirmed the district court relying on the\nbasis that Omega\xe2\x80\x99s copyright claim was no longer viable under the first sale doctrine as\ninterpreted by the Supreme Court in Kirtsaeng. However, the district court would have ruled\nagainst Omega even if Costco had not been entitled to a first sale defense because of\nOmega\xe2\x80\x99s \xe2\x80\x9ccopyright misuse\xe2\x80\x9d. In her concurring opinion, Judge Wardlaw agreed with the\ndistrict court that Omega misused its copyright when it tried to use its intellectual property\nprotection to obtain a copyright-like monopoly over uncopyrightable Seamaster watches.\n(2) As the Ninth Circuit explained in Apple Inc. v. Psystar Corp., 658 F.3d 1150, 1157 (9th Cir.\n2011), the copyright misuse doctrine prevents holders of copyrights from leveraging their\nlimited monopoly to allow them control of areas outside the monopoly. The question in all\ncopyright misuse cases is: Where does the copyright monopoly begin and end?\n(3) In the licensing context, the Ninth Circuit held in Apple v. Psystar (at 1159) that copyright\nmisuse prevents copyright holders from using license terms \xe2\x80\x9cto stifle competition,\xe2\x80\x9d but it\ndoes not \xe2\x80\x9cprohibit using conditions to control use of copyrighted material.\xe2\x80\x9d How should\ncourts draw the line between stifling competition and merely controlling the use of\ncopyrighted material?\nContractual Restraints on the First Sale Doctrine\nSale versus license\nAdobe Sys. Inc. v. Christenson, 809 F.3d 1071 (9th Cir. 2015)\nMcKeown, Circuit Judge:\nThis appeal, which arises in the context of software licenses, requires us to address\nthe burden of proof applicable to the first sale defense to a copyright infringement\nclaim. Although a copyright holder enjoys broad privileges protecting the exclusive\nright to distribute a work, the first sale doctrine serves as an important exception to\nthat right. Under this doctrine, once a copy of a work is lawfully sold or transferred,\nthe new owner has the right \xe2\x80\x9cto sell or otherwise dispose of\xe2\x80\x9d that copy without the\ncopyright owner\xe2\x80\x99s permission. 17 U.S.C. \xc2\xa7 109(a). Of course, the defense is\ncontingent on rightful ownership. The old adage \xe2\x80\x9cpossession is nine-tenths of the\nlaw\xe2\x80\x9d has no traction under \xc2\xa7 109(a).\nThis appeal stems from a messy copyright dispute between Adobe Systems, Inc. and\nJoshua Christenson and his software company, Software Surplus, Inc. (\xe2\x80\x9cSSI\xe2\x80\x9d or\n\xe2\x80\x9cSoftware Surplus\xe2\x80\x9d). In the district court, litigation of this case was punctuated by\ndiscovery disputes, sanctions, and multiple rulings on the admissibility and exclusion\n\n548\n\n\x0cof evidence. The importance of these factors, which the parties emphasize on appeal,\nis diminished by the central issue \xe2\x80\x94 who bears the burden of proving the first sale\ndefense in a software licensing dispute. While the copyright holder bears the ultimate\nburden of establishing copyright infringement, the party raising a first sale defense\nbears an initial burden with respect to the defense. At the summary judgment stage,\nthis burden is discharged by producing evidence sufficient for a jury to find that the\nalleged infringer lawfully acquired ownership of genuine copies of the copyrighted\nsoftware. Once this initial burden is satisfied, the burden shifts back to the copyright\nowner to establish the absence of a first sale, because of a licensing or other nonownership-transferring arrangement when the copy first changed hands.\nThe district court correctly held that Adobe established its registered copyrights in\nthe disputed software and that Christenson carried his burden of showing that he\nlawfully acquired genuine copies of Adobe\xe2\x80\x99s software, but that Adobe failed to\nproduce the purported license agreements or other evidence to document that it\nretained title to the software when the copies were first transferred. We affirm the\ndistrict court\xe2\x80\x99s dismissal of both the copyright and trademark claims. \xe2\x80\xa6\nThe Copyright Act confers several exclusive rights on copyright owners, including\nthe right of distribution. 17 U.S.C. \xc2\xa7 106(3) (granting a right \xe2\x80\x9cto distribute copies ...\nof the copyrighted work to the public by sale or other transfer of ownership, or by\nrental, lease, or lending\xe2\x80\x9d). No factual dispute exists that, through the Software\nSurplus website, Christenson sold copies of Adobe\xe2\x80\x99s copyrighted works without\nauthorization from Adobe. Christenson did not establish any difference between the\nsoftware titles listed by Adobe, shown in screenshots of the Software Surplus website,\nand those that he sold. Adobe easily established a prima facie case of copyright\ninfringement.\nIn the face of an otherwise slam dunk copyright violation, Christenson asserts that\nhis conduct fell within an exception to Adobe\xe2\x80\x99s distribution rights under \xc2\xa7 106 \xe2\x80\x94\nthe first sale doctrine. Under the Copyright Act, this affirmative defense provides\nthat \xe2\x80\x9cthe owner of a particular copy ... lawfully made under this title, or any person\nauthorized by such owner, is entitled, without the authority of the copyright owner,\nto sell or otherwise dispose of the possession of that copy....\xe2\x80\x9d 17 U.S.C. \xc2\xa7 109(a). The\npractical effect of this language is to significantly circumscribe a copyright owner\xe2\x80\x99s\nexclusive distribution right \xe2\x80\x9conly to the first sale of the copyrighted work\xe2\x80\x9d because\n\xe2\x80\x9conce the copyright owner places a copyrighted item in the stream of commerce by\nselling it, he has exhausted his exclusive statutory right to control its\ndistribution.\xe2\x80\x9d Quality King Distribs., Inc. v. L\xe2\x80\x99anza Research Int\xe2\x80\x99l, Inc., 523 U.S. 135, 141,\n152 (1998); see also Vernor v. Autodesk, Inc., 621 F.3d 1102, 1107 (9th Cir.2010) (\xe2\x80\x9c[A]\ncopyright owner\xe2\x80\x99s exclusive distribution right is exhausted after the owner\xe2\x80\x99s first sale\nof a particular copy of the copyrighted work.\xe2\x80\x9d). Before answering the question left\nopen in Augusto of who bears the burden of proof as to this defense, it is important\nto understand the contours of the term \xe2\x80\x9csale.\xe2\x80\x9d\nIn digital copyright cases, the distinction between a \xe2\x80\x9csale\xe2\x80\x9d and a \xe2\x80\x9clicense\xe2\x80\x9d has\nbecome central. But this distinction did not arise with the advent of computer\nsoftware. As early as 1908, the Supreme Court recognized that a sale creates a\ndefense to a copyright claim while a license does not. Bobbs-Merrill held the copyright\nto the novel The Castaway and sued Macy & Company for copyright infringement.\n549\n\n\x0cEach copy of the book had a notice on the title page that the retail price was one\ndollar and \xe2\x80\x9ca sale at a less price will be treated as an infringement of the copyright.\xe2\x80\x9d\nMacy purchased copies of the book at a discount and intended to sell them for less\nthan a dollar. The Court held that Bobbs-Merrill did not have a right to control\nfuture sales of Macy\xe2\x80\x99s copies because a copyright owner \xe2\x80\x9cwho has sold a copyrighted\narticle, without restriction, has parted with all right to control the sale of it.\xe2\x80\x9d Id. at 350,\n28 S.Ct. 722 (emphasis added).\nShortly after the Bobbs-Merrill decision, Congress codified the first sale doctrine in the\nCopyright Act of 1909. In this initial statutory iteration, the first sale rule did not\nexplicitly require the defendant to own the copy at issue:\nThat the copyright is distinct from the property in the material object copyrighted,\nand the sale or conveyance, by gift or otherwise, of the material object shall not of\nitself constitute a transfer of the copyright, nor shall the assignment of the copyright\nconstitute a transfer of the title to the material object; but nothing in this Act shall\nbe deemed to forbid, prevent, or restrict the transfer of any copy of a copyrighted\nwork the possession of which has been lawfully obtained.\n\n17 U.S.C. \xc2\xa7 41 (1909).\nCongress amended the Copyright Act in 1976 and revised the first sale defense. 17\nU.S.C. \xc2\xa7 109(a). Unlike its predecessor, the amended statute explicitly required that a\ndefendant raising a first sale defense own the copy at issue. Id. (limiting the first sale\ndefense to \xe2\x80\x9cthe owner of a particular copy\xe2\x80\x9d (emphasis added)). The first sale defense\ndid \xe2\x80\x9cnot ... extend to any person who has acquired possession of the copy ... from\nthe copyright owner, by rental, lease, loan, or otherwise, without acquiring ownership\nof it.\xe2\x80\x9d Id. at \xc2\xa7 109(d). The legislative history confirms that Congress intended to\n\xe2\x80\x9crestate[] and confirm[] the principle that, where the copyright owner has\ntransferred ownership of a particular copy ... of a work, the person to whom the copy ...\nis transferred is entitled to dispose of it by sale, rental, or any other means.\xe2\x80\x9d H.R.Rep.\nNo. 94-1476, at 79 (1976) (emphasis added).\nThe Supreme Court first analyzed \xc2\xa7 109(a) in Quality King. Distinguishing between\nthe owner of a copy and a non-owner, such as a licensee, the Court emphasized that\n\xe2\x80\x9cbecause the protection afforded by \xc2\xa7 109(a) is available only to the \xe2\x80\x98owner\xe2\x80\x99 of a\nlawfully made copy (or someone authorized by the owner), the first sale doctrine\nwould not provide a defense to... any nonowner such as a bailee, a licensee, a\nconsignee, or one whose possession of the copy was unlawful.\xe2\x80\x9d 523 U.S. at 146-47.\nIn other words, to claim the benefits of the first sale defense, the holder of the copy\nmust actually hold title.\nSection 109(a)\xe2\x80\x99s focus on ownership takes on a special significance in the digital\ncontext. In a world where licensing agreements are \xe2\x80\x9cubiquitous,\xe2\x80\x9d \xe2\x80\x9clicense agreements,\nrather than sales, have become the predominate form of the transfer of rights to use\ncopyrighted software material.\xe2\x80\x9d Apple, Inc. v. Psystar Corp., 658 F.3d 1150, 1155 (9th\nCir. 2011). In practice, because \xe2\x80\x9cthe first sale doctrine does not apply to a\nlicensee,\xe2\x80\x9d id., licensing arrangements enable software companies to restrict initial\nlicensees of software from selling their licensed copies of the software to\ndownstream users.\n\n550\n\n\x0cBroadly construed, the licensing exception in the software context could swallow the\nstatutory first sale defense. We have recognized, however, that some purported\nsoftware licensing agreements may actually create a sale. See Vernor, 621 F.3d at\n1111; UMG Recordings, Inc. v. Augusto, 628 F.3d 1175, 1180 (9th Cir. 2011). To\ndetermine whether there is a legitimate license, we examine whether \xe2\x80\x9cthe copyright\nowner (1) specifies that the user is granted a license; (2) significantly restricts the\nuser\xe2\x80\x99s ability to transfer the software; and (3) imposes notable use\nrestrictions.\xe2\x80\x9d Vernor, 621 F.3d at 1111. Where these factors aren\xe2\x80\x99t satisfied, the\nupshot is that the copyright holder has sold its software to the user, and the user can\nassert the first sale defense.\nIn the software copyright context, a dispute about the first sale defense raises several\nquestions: First, which party \xe2\x80\x94 the copyright holder or the party asserting the\ndefense \xe2\x80\x94 bears the initial burden of showing ownership through lawful acquisition?\nSecond, what does it take to discharge that burden? And finally, which party bears\nthe burden of proving or disproving a license versus a sale? General principles of\nevidence, coupled with the statute and the legislative history, provide the answer.\nThe burden of proof for an affirmative defense to a civil claim generally falls on the\nparty asserting the defense. This same principle holds true in copyright. For example,\nin claiming the fair use defense to copyright infringement, it is the proponent\xe2\x80\x99s\nburden to come forward with favorable evidence about relevant markets to establish\n\xe2\x80\x9cthe effect of the [challenged] use upon the potential market for or value of the\ncopyrighted work.\xe2\x80\x9d Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590-94 & n. 20\n(1994). Another key example is found in the Digital Millennium Copyright Act, also\nreferred to as the DMCA, 17 U.S.C. \xc2\xa7 512. The DMCA\xe2\x80\x99s safe harbor provisions\nexempt Internet service providers from copyright liability under discrete statutory\nprovisions; proponents who seek the safe harbor bear \xe2\x80\x9cthe burden of establishing\nthat [they] meet[] the statutory requirements.\xe2\x80\x9d Columbia Pictures Indus., Inc. v. Fung, 710\nF.3d 1020, 1039 (9th Cir.2013) (citing Balvage v. Ryderwood Improvement & Serv. Ass\xe2\x80\x99n,\nInc., 642 F.3d 765, 776 (9th Cir.2011)).\nThe rule is no different for the first sale defense. Under \xc2\xa7 109(a), the party asserting\nthe first sale defense bears the initial burden of satisfying the statutory requirements.\nThus, that party must show ownership through lawful acquisition.\nWhat does this mean in practical terms? In the context of a summary judgment\nmotion in a software case, it simply means that the party asserting a first sale defense\nmust come forward with evidence sufficient for a jury to find lawful acquisition of\ntitle, through purchase or otherwise, to genuine copies of the copyrighted software.\nTo the extent that the copyright holder claims that the alleged infringer could not\nacquire title or ownership because the software was never sold, only licensed, the\nburden shifts back to the copyright holder to establish such a license or the absence\nof a sale.\nThis burden-shifting construct makes sense. The copyright holder is in a superior\nposition to produce documentation of any license and, without the burden shift, the\nfirst sale defense would require a proponent to prove a negative, i.e., that the\nsoftware was not licensed.\n\n551\n\n\x0cThis approach accords with the legislative history and with our general precedent\nthat fairness dictates that a litigant ought not have the burden of proof with respect\nto facts particularly within the knowledge of the opposing party. Just as it would be\nunfair for a copyright holder to be burdened with proving that a downstream holder\nof a copy did not acquire the copy lawfully, so too it would be unfair to impose the\nburden of proving the lack of a sale on the proponent of the first sale defense. As\nthe House Report acknowledges, it is an \xe2\x80\x9cestablished legal principle that the burden\nof proof should not be placed upon a litigant to establish facts particularly within the\nknowledge of his adversary.\xe2\x80\x9d H.R. Rep. 94-1476, at 81; see United States v. N.Y., New\nHaven & Hartford R.R. Co., 355 U.S. 253, 256 n. 5 (1957) (\xe2\x80\x9cThe ordinary rule, based\non considerations of fairness, does not place the burden upon a litigant of\nestablishing facts peculiarly within the knowledge of his adversary.\xe2\x80\x9d). Finally, we note\nthat a downstream possessor, who may be many times removed from any initial\nclaimed license, is hardly in a position to prove either a negative \xe2\x80\x94 the absence of a\nlicense \xe2\x80\x94 or the unknown \xe2\x80\x94 the terms of the multiple transfers of the software.\nWith this framework in mind, we turn to the specifics of this case. As the district\ncourt held, it was uncontroverted that Christenson \xe2\x80\x9clawfully purchased genuine\ncopies of Adobe software from third-party suppliers before reselling those copies.\xe2\x80\x9d\nChristenson offered invoices to document his purchases of legitimate Adobe\nsoftware from various suppliers. Nothing on those invoices suggests that he was\nother than a legitimate purchaser of the software. According to Christenson\xe2\x80\x99s sworn\nstatement, \xe2\x80\x9cneither he nor SSI have a contract with any of the suppliers that supplied\nSSI with software.... SSI asked them if they could supply SSI with a product at an\nacceptable price, and if they could, payment was negotiated.\xe2\x80\x9d This claim is consistent\nwith Christenson\xe2\x80\x99s inability to produce something more than invoices from his\nsuppliers: He cannot produce records that do not exist. Christenson discharged his\nburden with respect to the first sale defense.\nAdobe, of course, argues that Christenson could not have legitimately purchased the\nsoftware because Adobe always licenses, and does not sell, copies of its software. On\nthis point, the burden shifts back to Adobe to prove the existence and terms of a\nlicense. In an ordinary case, Adobe would produce specific license agreements and\nwe would benchmark those agreements against the Vernor factors to determine\nwhether there was a legitimate license at the outset, as well as whether downstream\ncustomers were \xe2\x80\x9cbound by a restrictive license agreement\xe2\x80\x9d such that they are \xe2\x80\x9cnot\nentitled to the first sale doctrine.\xe2\x80\x9d Vernor, 621 F.3d at 1113.\nAsking Adobe to produce the license agreements, which would include any terms or\nrestrictions, is not a difficult burden \xe2\x80\x94 Adobe is the original source of the software,\nclaims to control distribution of the software, and holds the copyrights to the\nsoftware. As Adobe noted in the district court: \xe2\x80\x9cAdobe and Adobe alone knows the\nparties with whom it contracts.\xe2\x80\x9d That categorical statement says it all-the\nlicense/contract information is uniquely within Adobe\xe2\x80\x99s knowledge.\nAdobe\xe2\x80\x99s problem is that it did not produce those licenses or document the terms of\ncontracts with specific parties. Because of the state of discovery at the time of the\nsummary judgment motions, the district court excluded virtually all of Adobe\xe2\x80\x99s lateoffered evidence of licenses. Adobe challenges this ruling in its appeal. The district\ncourt and magistrate judge had a long history with the parties and their discovery\n552\n\n\x0cefforts. After a careful examination of the rather tortured discovery process, we\nconclude that the district court did not abuse its discretion in granting Christenson\xe2\x80\x99s\nmotion to strike and excluding evidence purporting to document the licenses.\nAdobe\xe2\x80\x99s effort to substitute general testimony and generic licensing templates in lieu\nof the actual licensing agreements does not withstand scrutiny\nunder Vernor. Under Vernor, the precise terms of any agreement matter as to whether\nit is an agreement to license or to sell; the title of the agreement is not dispositive.\nAnd here, in the end, there is no admissible evidence that Adobe \xe2\x80\x9csignificantly\nrestricted the user\xe2\x80\x99s ability to transfer the software\xe2\x80\x9d at issue here. Vernor, 621 F.3d at\n1111. We thus affirm the district court\xe2\x80\x99s order granting summary judgment in favor\nof Christenson and against Adobe on the copyright claim.\nNotes and questions\n(1) In Vernor v. Autodesk, Inc., 621 F.3d 1102, 1111 (9th Cir. 2010), the Ninth Circuit held that\n\xe2\x80\x9ca software user is a licensee rather than an owner of a copy where the copyright owner: (1)\nspecifies that the user is granted a license; (2) significantly restricts the user\xe2\x80\x99s ability to\ntransfer the software; and (3) imposes notable use restrictions. In Vernor, the court held that\nthe software customer was a licensee rather than owner of its copy and thus was not entitled\nto invoke first sale doctrine. What does Adobe Sys. Inc. v. Christenson, 809 F.3d 1071 (9th Cir.\n2015) add to Vernor?\n\nLimits to the First Sale Doctrine in a Digital World\nThe conventional understanding of Copyright\xe2\x80\x99s first sale doctrine is that it prevents restraints\non the transfer of lawfully acquired copies of works by limiting the scope of the distribution\nright (the modern equivalent of the right to \xe2\x80\x9cvend\xe2\x80\x9d in earlier incarnations of the Copyright\nAct). The first sale doctrine guaranteed significant freedom of action for the purchasers of\ncopyrighted works in the print-era, but its relevance in the digital era is questionable.\nThe Copyright Act gives copyright owners the right to control the reproduction, distribution,\npublic performance and public display of their works. It also gives the copyright owner the\nright to control the making of derivative works based upon the copyrighted works. The first\nsale doctrine\xe2\x80\x94at least as embodied in Section 109 of the Act\xe2\x80\x94substantially limits the\ndistribution right, but it does not address any of these other rights.\nCapitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018)\nCircuit Judge Leval\nDefendant ReDigi, Inc. and its founders, Defendants Larry Rudolph and John\nOssenmacher, appeal from the judgment of the United States District Court for the\nSouthern District of New York (Richard J. Sullivan, J.) in favor of Plaintiffs, Capitol\nRecords, LLC, Capitol Christian Music Group, Inc., and Virgin Records IR Holdings,\nInc. (\xe2\x80\x9cPlaintiffs\xe2\x80\x9d), finding copyright infringement. Defendants had created an\nInternet platform designed to enable the lawful resale, under the first sale doctrine,\nof lawfully purchased digital music files, and had hosted resales of such files on the\nplatform. The district court concluded that, notwithstanding the \xe2\x80\x9cfirst sale\xe2\x80\x9d doctrine,\n\n553\n\n\x0ccodified in the Copyright Act of 1976, 17 U.S.C. \xc2\xa7 109(a), ReDigi\xe2\x80\x99s Internet system\nversion 1.0 infringed the Plaintiffs\xe2\x80\x99 copyrights by enabling the resale of such digital\nfiles containing sound recordings of Plaintiffs\xe2\x80\x99 copyrighted music. We agree with the\ndistrict court that ReDigi infringed the Plaintiffs\xe2\x80\x99 exclusive rights under 17 U.S.C. \xc2\xa7\n106(1) to reproduce their copyrighted works. We make no decision whether ReDigi\nalso infringed the Plaintiffs\xe2\x80\x99 exclusive rights under 17 U.S.C. \xc2\xa7 106(3) to distribute\ntheir works.\nBACKGROUND\nI. Facts\nPlaintiffs are record companies, which own copyrights or licenses in sound\nrecordings of musical performances. Plaintiffs distribute those sound recordings in\nnumerous forms, of which the most familiar twenty years ago was the compact disc.\nToday, Plaintiffs also distribute their music in the form of digital files, which are sold\nto the public by authorized agent services, such as Apple iTunes, under license from\nPlaintiffs. Purchasers from the Apple iTunes online store download the files onto\ntheir personal computers or other devices.\nReDigi was founded by Defendants Ossenmacher and Rudolph in 2009 with the\ngoal of creating enabling technology and providing a marketplace for the lawful\nresale of lawfully purchased digital music files. Ossenmacher served as ReDigi\xe2\x80\x99s\nChief Executive Officer and Rudolph, who spent twelve years as a Principal\nResearch Scientist at the Massachusetts Institute of Technology, served as ReDigi\xe2\x80\x99s\nChief Technical Officer. During the period addressed by the operative complaint,\nReDigi, through its system version 1.0, hosted resales of digital music files containing\nthe Plaintiffs\xe2\x80\x99 music by persons who had lawfully purchased the files from iTunes.\nConsidering the evidence in the light most favorable to ReDigi, ReDigi\xe2\x80\x99s system\nversion 1.0 operates as follows.\n1. Music Manager: A person who owns a digital music file lawfully purchased from\niTunes and intends to employ ReDigi\xe2\x80\x99s system to resell it (the \xe2\x80\x9cuser\xe2\x80\x9d) must first\ndownload and install onto her computer ReDigi\xe2\x80\x99s \xe2\x80\x9cMusic Manager\xe2\x80\x9d software\nprogram (\xe2\x80\x9cMusic Manager\xe2\x80\x9d). Once Music Manager has been installed, it analyzes the\ndigital file intended for resale, verifies that the file was originally lawfully purchased\nfrom iTunes, and scans it for indications of tampering. If the file was lawfully\npurchased, Music Manager deems it an \xe2\x80\x9cEligible File\xe2\x80\x9d that may be resold.4\nFootnote 4: Music Manager will deem a file \xe2\x80\x9cEligible\xe2\x80\x9d if it was purchased by the user from iTunes or it was\npurchased by the user through ReDigi, having been originally purchased lawfully by another from iTunes.\n\n2. Data Migration: The ReDigi user must then cause the file to be transferred to\nReDigi\xe2\x80\x99s remote server, known as the \xe2\x80\x9cCloud Locker.\xe2\x80\x9d To effectuate this transfer,\nReDigi developed a new method that functions differently from the conventional file\ntransfer. The conventional process is to reproduce the digital file at the receiving\ndestination so that, upon completion of the transfer, the file exists simultaneously on\nboth the receiving device and on the device from which it was transferred. If\nconnectivity is disrupted during such a standard transfer, the process can be repeated\nbecause the file remains intact on the sender\xe2\x80\x99s device.\n\n554\n\n\x0cUnder ReDigi\xe2\x80\x99s method\xe2\x80\x94which it calls \xe2\x80\x9cdata migration\xe2\x80\x9d\xe2\x80\x94ReDigi\xe2\x80\x99s software begins\nby breaking the digital music file into small \xe2\x80\x98blocks\xe2\x80\x99 of data of roughly four thousand\nbytes in length. Once the file has been broken into blocks of data (\xe2\x80\x9cpackets\xe2\x80\x9d),\nReDigi\xe2\x80\x99s system creates a \xe2\x80\x9ctransitory copy\xe2\x80\x9d of each packet in the initial purchaser\xe2\x80\x99s\ncomputer buffer. Upon copying (or \xe2\x80\x9creading\xe2\x80\x9d) a packet into the initial purchaser\xe2\x80\x99s\ncomputer buffer, ReDigi\xe2\x80\x99s software sends a command to delete that packet of the\ndigital file from permanent storage on the initial purchaser\xe2\x80\x99s device. ReDigi\xe2\x80\x99s\nsoftware then sends the packet to the ReDigi software to be copied into the buffer\nand deleted from the user\xe2\x80\x99s device. During the data migration process, the digital file\ncannot be accessed, played, or perceived. If connectivity is disrupted during the data\nmigration process, the remnants of the digital file on the user\xe2\x80\x99s device are unusable,\nand the transfer cannot be re-initiated. In such circumstances, ReDigi (according to\nits brief) bears the cost of the user\xe2\x80\x99s loss.\nOnce all the packets of the source file have been transferred to ReDigi\xe2\x80\x99s server, the\nEligible File has been entirely removed from the user\xe2\x80\x99s device. The packets are then\nre-assembled into a complete, accessible, and playable file on ReDigi\xe2\x80\x99s server.\nReDigi describes its primary technological innovation using the metaphor of a train\n(the digital file) leaving from one station (the original purchaser\xe2\x80\x99s device) and arriving\nat its destination (in the first instance, ReDigi\xe2\x80\x99s server). Under either the typical\nmethod or ReDigi\xe2\x80\x99s method, packets are sent sequentially, such that, conceptually,\n\xe2\x80\x9ceach packet is a car\xe2\x80\x9d moving from the source to the destination device. Once all the\npackets arrive at the destination device, they are reassembled into a usable file. At\nthat moment, in a typical transfer, the entire digital file in usable form exists on both\ndevices. ReDigi\xe2\x80\x99s system differs in that it effectuates a deletion of each packet from\nthe user\xe2\x80\x99s device immediately after the \xe2\x80\x9ctransitory copy\xe2\x80\x9d of that packet arrives in the\ncomputer\xe2\x80\x99s buffer (before the packet is forwarded to ReDigi\xe2\x80\x99s server). In other\nwords, as each packet \xe2\x80\x9cleaves the station,\xe2\x80\x9d ReDigi deletes it from the original\npurchaser\xe2\x80\x99s device such that it \xe2\x80\x9cno longer exists\xe2\x80\x9d on that device. As a result, the\nentire file never exists in two places at once.\nAfter the file has reached ReDigi\xe2\x80\x99s server but before it has been resold, the user may\ncontinue to listen to it by streaming audio from the user\xe2\x80\x99s Cloud Locker on ReDigi\xe2\x80\x99s\nserver. If the user later re-downloads the file from her Cloud Locker to her computer,\nReDigi will delete the file from its own server.\n3. Resale: Once an Eligible File has \xe2\x80\x9cmigrated\xe2\x80\x9d to ReDigi\xe2\x80\x99s server, it can be resold by\nthe user utilizing ReDigi\xe2\x80\x99s market function. If it is resold, ReDigi gives the new\npurchaser exclusive access to the file. ReDigi will (at the new purchaser\xe2\x80\x99s option)\neither download the file to the new purchaser\xe2\x80\x99s computer or other device\n(simultaneously deleting the file from its own server) or will retain the file in the new\npurchaser\xe2\x80\x99s Cloud Locker on ReDigi\xe2\x80\x99s server, from which the new purchaser can\nstream the music. ReDigi\xe2\x80\x99s terms of service state that digital media purchases may be\nstreamed or downloaded only for personal use.\n4. Duplicates: ReDigi purports to guard against a user\xe2\x80\x99s retention of duplicates of her\ndigital music files after she sells the files through ReDigi. To that end, Music\nManager continuously monitors the user\xe2\x80\x99s computer hard drive and connected\ndevices to detect duplicates. When a user attempts to upload an Eligible File to\n\n555\n\n\x0cReDigi\xe2\x80\x99s server, ReDigi \xe2\x80\x9cprompt[s]\xe2\x80\x9d her to delete any pre-existing duplicates that\nMusic Manager has detected. If ReDigi detects that the user has not deleted the\nduplicates, ReDigi blocks the upload of the Eligible File. After an upload is complete,\nMusic Manager continues to search the user\xe2\x80\x99s connected devices for duplicates. If it\ndetects a duplicate of a previously uploaded Eligible File, ReDigi will prompt the\nuser to authorize ReDigi to delete that duplicate from her personal device and, if\nauthorization is not granted, it will suspend her account.\nPlaintiffs point out, and ReDigi does not dispute, that these precautions do not\nprevent the retention of duplicates after resale through ReDigi. Suspension of the\noriginal purchaser\xe2\x80\x99s ReDigi account does not negate the fact that the original\npurchaser has both sold and retained the digital music file after she sold it. So long as\nthe user retains previously-made duplicates on devices not linked to the computer\nthat hosts Music Manager, Music Manager will not detect them. This means that a\nuser could, prior to resale through ReDigi, store a duplicate on a compact disc,\nthumb drive, or third-party cloud service unconnected to the computer that hosts\nMusic Manager and access that duplicate post-resale.6\nFootnote 6: Defendants do not dispute that, under Apple iCloud\xe2\x80\x99s present\narrangements, a user could sell her digital music files on ReDigi, delete Music\nManager, and then redownload the same files to her computer for free from the\nApple iCloud. Apple\xe2\x80\x99s iCloud service allows one who has purchased a file from\niTunes to re-download it without making a new purchase.\nWhile ReDigi\xe2\x80\x99s suspension of the original purchaser\xe2\x80\x99s ReDigi account may be a\ndisincentive to the retention of sold files, it does not prevent the user from retaining\nsold files.\nII. Proceedings Below\nOn January 6, 2012, Plaintiffs brought this action, originally solely against ReDigi,\nInc., alleging inter alia, that in the operation of ReDigi\xe2\x80\x99s system version 1.0, it\ninfringed Plaintiffs\xe2\x80\x99 copyrights by unauthorized reproduction and distribution of\nPlaintiffs\xe2\x80\x99 copyrighted works. The parties cross-moved for summary judgment. On\nMarch 30, 2013, the district court granted partial summary judgment in Plaintiffs\xe2\x80\x99\nfavor finding infringement. On June 6, 2016, the district court entered a final\njudgment awarding damages to Plaintiffs in the amount of three million five hundred\nthousand dollars ($3,500,000) and permanently enjoining Defendants from operating\nthe ReDigi system.\nDISCUSSION\nI. The First Sale Doctrine\nThe primary issue on appeal is whether ReDigi\xe2\x80\x99s system version 1.0 lawfully enables\nresales of its users\xe2\x80\x99 digital files. Sections 106(1) and (3) of the Copyright Act\nrespectively grant the owner of a copyright the exclusive right to control the\nreproduction and the distribution of the copyrighted work. 17 U.S.C. \xc2\xa7 106(1) & (3).\nUnder the first sale doctrine, codified in \xc2\xa7 109(a), the rights holder\xe2\x80\x99s control over the\ndistribution of any particular copy or phonorecord that was lawfully made effectively\nterminates when that copy or phonorecord is distributed to its first recipient. Section\n109(a) provides:\n556\n\n\x0cNotwithstanding the provisions of section 106(3), the owner of a particular copy or\nphonorecord lawfully made under this title, or any person authorized by such owner,\nis entitled, without the authority of the copyright owner, to sell or otherwise dispose\nof the possession of that copy or phonorecord.\n\n17 U.S.C. \xc2\xa7 109(a).\nUnder this provision, it is well established that the lawful purchaser of a copy of a\nbook is free to resell, lend, give, or otherwise transfer that copy without violating the\ncopyright holder\xe2\x80\x99s exclusive right of distribution. The copy so resold or retransferred may be re-transferred again and again without violating the exclusive\ndistribution right. It is undisputed that one who owns a digital file from iTunes of\nmusic that is fixed in a material object qualifies as \xe2\x80\x9cthe owner of a particular . . .\nphonorecord lawfully made,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 109(a), and is thus entitled under \xc2\xa7 109(a)\n\xe2\x80\x9cto sell or otherwise dispose of the possession of that . . . phonorecord,\xe2\x80\x9d id.\n(emphasis added), without violating \xc2\xa7 106(3). On the other hand, \xc2\xa7 109(a) says\nnothing about the rights holder\xe2\x80\x99s control under \xc2\xa7 106(1) over reproduction of a copy\nor phonorecord.\nThe district court found that resales through ReDigi were infringing for two reasons.\nThe first reason was that, in the course of ReDigi\xe2\x80\x99s transfer, the phonorecord has\nbeen reproduced in a manner that violates the Plaintiffs\xe2\x80\x99 exclusive control of\nreproduction under \xc2\xa7 106(1); the second was that the digital files sold through\nReDigi, being unlawful reproductions, are not subject to the resale right established\nby \xc2\xa7 109(a), which applies solely to a \xe2\x80\x9cparticular . . . phonorecord . . . lawfully made.\xe2\x80\x9d\n17 U.S.C. \xc2\xa7 109(a). We agree with the first reason underlying the district court\xe2\x80\x99s\nfinding of infringement. As that is a sufficient reason for affirmance of the judgment,\nwe make no ruling on the district court\xe2\x80\x99s second reason.\nReDigi argues on appeal that its system effectuates transfer of the particular digital\nfile that the user lawfully purchased from iTunes, that it should not be deemed to\nhave reproduced that file, and that it should therefore come within the protection of\n17 U.S.C. \xc2\xa7 109(a). ReDigi makes two primary contentions in support of these\narguments.\nFirst, ReDigi asserts\xe2\x80\x94as it must for its first sale argument to succeed\xe2\x80\x94 that the\ndigital files should be considered \xe2\x80\x9cmaterial objects\xe2\x80\x9d and therefore, under 17 U.S.C. \xc2\xa7\n101\xe2\x80\x99s definition of \xe2\x80\x9cphonorecords\xe2\x80\x9d as \xe2\x80\x9cmaterial objects,\xe2\x80\x9d should qualify as\n\xe2\x80\x9cphonorecords\xe2\x80\x9d eligible for the protection of \xc2\xa7 109(a).\nSecond, ReDigi argues that from a technical standpoint, its process should not be\nseen as making a reproduction. ReDigi emphasizes that its system simultaneously\n\xe2\x80\x9ccauses [packets] to be removed from the . . . file remaining in the consumer\xe2\x80\x99s\ncomputer\xe2\x80\x9d as those packets are copied into the computer buffer and then transferred\nto the ReDigi server, so that the complete file never exists in more than one place at\nthe same time, and the \xe2\x80\x9cfile on the user\xe2\x80\x99s machine continually shrinks in size while\nthe file on the server grows in size.\xe2\x80\x9d9\nFootnote 9: From October 13, 2011 until March 2012, ReDigi\xe2\x80\x99s system sometimes made temporary archival\ncopies that were deleted as soon as the migration process was complete. Those backup files have not been put at\nissue in this appeal.\n\n557\n\n\x0cReDigi points out that the \xe2\x80\x9csum of the size of the data\xe2\x80\x9d stored in the original\npurchaser\xe2\x80\x99s computer and in ReDigi\xe2\x80\x99s server never exceeds the \xe2\x80\x9csize of the original\nfile,\xe2\x80\x9d which, according to ReDigi, \xe2\x80\x9cconfirms that no reproductions are made during\nthe transfer process.\xe2\x80\x9d\nAs for ReDigi\xe2\x80\x99s first argument, that the digital file it transfers is a phonorecord\nprotected by \xc2\xa7 109(a), we do not decide this issue because we find that ReDigi\neffectuates an unlawful reproduction even if the digital file itself qualifies as a\nphonorecord.10\nFootnote 10: A conclusion that a digital file cannot be a phonorecord would have decisive implications for a\nsystem functioning like ReDigi\xe2\x80\x99s version 2.0, as well as its version 1.0. Because our understanding of the\ntechnology is limited, as is our ability to appreciate the economic implications, we find it preferable to rule more\nnarrowly.\n\nAs for ReDigi\xe2\x80\x99s second argument, we reject it for the following reasons. The\nCopyright Act defines phonorecords as \xe2\x80\x9cmaterial objects in which sounds. . . are\nfixed by any method now known or later developed, and from which the sounds can\nbe perceived, reproduced, or otherwise communicated, either directly or with the aid\nof a machine or device.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101. Accordingly, when the purchaser of a\ndigital music file from iTunes possesses that file, embodied \xe2\x80\x9cfor a period of more\nthan transitory duration\xe2\x80\x9d in a computer or other physical storage device, Cartoon\nNetwork LP v. CSC Holdings, Inc., 536 F.3d 121, 127 (2d Cir. 2008) (quoting 17 U.S.C.\n\xc2\xa7 101), that device\xe2\x80\x94or at least the portion of it in which the digital music file is fixed\n(e.g., the location on the hard drive)\xe2\x80\x94becomes a phonorecord. See London-Sire\nRecords, Inc. v. Doe, 542 F. Supp. 2d 153, 171 (D. Mass. 2008) (holding that the\nsegment of a hard disc on which an electronic music file is encoded is a\n\xe2\x80\x9cphonorecord\xe2\x80\x9d under the Copyright Act). In the course of transferring a digital\nmusic file from an original purchaser\xe2\x80\x99s computer, through ReDigi, to a new\npurchaser, the digital file is first received and stored on ReDigi\xe2\x80\x99s server and then, at\nthe new purchaser\xe2\x80\x99s option, may also be subsequently received and stored on the\nnew purchaser\xe2\x80\x99s device.11\nFootnote 11: The new purchaser at his option may alternatively choose to leave the digital file in the new\npurchaser\xe2\x80\x99s storage locker on ReDigi\xe2\x80\x99s server and stream it for access.\n\nAt each of these steps, the digital file is fixed in a new material object \xe2\x80\x9cfor a period\nof more than transitory duration.\xe2\x80\x9d Cartoon Network, 536 F.3d at 127. The fixing of the\ndigital file in ReDigi\xe2\x80\x99s server, as well as in the new purchaser\xe2\x80\x99s device, creates a new\nphonorecord, which is a reproduction. ReDigi version 1.0\xe2\x80\x99s process for enabling the\nresale of digital files thus inevitably involves the creation of new phonorecords by\nreproduction, even if the standalone digital file is deemed to be a phonorecord.\nAs for the argument that, as ReDigi copies a packet of data, it deletes the equivalent\npacket in the user\xe2\x80\x99s device so that the amount of data extant in the transfer process\nremains constant, this does not rebut or nullify the fact that the eventual receipt and\nstorage of that file in ReDigi\xe2\x80\x99s server, as well as in the new purchaser\xe2\x80\x99s device (at his\noption), does involve the making of new phonorecords. Unless the creation of those\nnew phonorecords is justified by the doctrine of fair use, which we discuss and reject\nin a later portion of this opinion, the creation of such new phonorecords involves\nunauthorized reproduction, which is not protected, or even addressed, by \xc2\xa7 109(a).\n\n558\n\n\x0cReDigi makes several additional arguments designed to characterize its process as\ninvolving the transfer of its users\xe2\x80\x99 lawfully made phonorecords, rather than the\ncreation of new phonorecords. None of these arguments negates the crucial fact that\neach transfer of a digital music file to ReDigi\xe2\x80\x99s server and each new purchaser\xe2\x80\x99s\ndownload of a digital music file to his device creates new phonorecords. ReDigi\nargues, for example, that during a transfer through ReDigi\xe2\x80\x99s data migration\ntechnology, each packet of data from the original source file resides in a buffer \xe2\x80\x9cfor\nless than a second\xe2\x80\x9d before being overwritten, and thus fails to satisfy the requirement\nthat a sound recording must be embodied \xe2\x80\x9cfor a period of more than transitory\nduration\xe2\x80\x9d to qualify as a phonorecord, 17 U.S.C. \xc2\xa7 101; Cartoon Network, 536 F.3d at\n127. Even if, during transfer, ReDigi\xe2\x80\x99s system retains each digital file in a computer\nbuffer for a period of no more than transitory duration, those files subsequently\nbecome embodied in ReDigi\xe2\x80\x99s server and in the new purchaser\xe2\x80\x99s device, where they\nremain for periods of more than transitory duration. ReDigi\xe2\x80\x99s server and the resale\npurchaser\xe2\x80\x99s device on which the digital music files are fixed constitute or contain\nnew phonorecords under the statute.\nReDigi next argues that, in the course of transferring a user\xe2\x80\x99s file to ReDigi\xe2\x80\x99s own\nserver, and to the resale purchaser\xe2\x80\x99s device, ReDigi sees to it that all of the original\npurchaser\xe2\x80\x99s preexisting duplicates are destroyed. As an initial matter, as noted above,\nReDigi here overclaims. It does not ensure against retention of duplicate\nphonorecords created by the original owner. ReDigi\xe2\x80\x99s assertion that \xe2\x80\x9cthere is never\nan instance when an Eligible File could exist in more than one place or be accessed\nby more than one user\xe2\x80\x9d is simply not supported by ReDigi\xe2\x80\x99s own evidence. In\naddition, even if ReDigi effectively compensated (by offsetting deletions) for the\nmaking of unauthorized reproductions in violation of the rights holder\xe2\x80\x99s exclusive\nreproduction right under \xc2\xa7 106(1), nonetheless ReDigi\xe2\x80\x99s process itself involves the\nmaking of unauthorized reproductions that infringe the exclusive reproduction right\nunless justified under fair use.12\nFootnote 12: We recognize that the use of computers with digital files of protected matter will often result in the\ncreation of innocuous copies which we would be loath to consider infringements because doing so would\neffectively bar society from using invaluable computer technology in relation to protected works. We believe this\nprecedent will not have that undesirable effect for reasons discussed below in the section on fair use. What we\nconsider here is that the making of unauthorized reproductions in pursuit of an objective to distribute protected matter in\ncompetition with the rights holder. The production of innocuous, unauthorized reproductions through the unavoidable\nfunction of a computer, when done for purposes that do not involve competing with the rights holder in its\nexclusive market, is outside the scope of this dispute.\n\nWe are not free to disregard the terms of the statute merely because the entity\nperforming an unauthorized reproduction makes efforts to nullify its consequences\nby the counterbalancing destruction of the preexisting phonorecords.\nReDigi further argues, citing ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60 (2d\nCir. 1996), that the computer hard drive into which the original purchaser\xe2\x80\x99s digital\nfile is embedded cannot be her lawfully made phonorecord. A computer hard drive,\nReDigi argues, cannot qualify as a phonorecord under \xc2\xa7 101 because it contains\nmore than a sound recording. This argument misinterprets ABKCO. We held in\nABKCO that a license to publish a phonorecord did not authorize the publication of\ncompact discs for use in karaoke that contained both sound recordings and visual\ndepictions of song lyrics. 96 F.3d at 64. The ABKCO opinion undertook to construe\nthe breadth of a compulsory license. The opinion does not support the conclusion\n559\n\n\x0cthat a compact disc that stores visual depictions of words as well as recorded music\ndoes not contain a phonorecord. To be sure, a license to distribute phonorecords of\na particular song would not by its terms authorize the distribution of whatever other\ncopyrighted content is contained in a computer hard drive that also contains the\nrecording of the song. But it does not follow that a device or other \xe2\x80\x9cmaterial object[]\nin which sounds . . . are fixed . . . and from which the sounds can be perceived,\nreproduced, or otherwise communicated,\xe2\x80\x9d 17 U.S.C. \xc2\xa7 101, is not a phonorecord,\nmerely because it contains other matter as well. We reject ReDigi\xe2\x80\x99s argument.13\nFootnote 13: ReDigi also draws our attention to the Ninth Circuit\xe2\x80\x99s decision in Recording Industry Association of\nAmerica v. Diamond Multimedia Systems, Inc., 180 F.3d 1072 (9th Cir. 1999). In Diamond, the Ninth Circuit held that\n\xe2\x80\x9ca hard drive is excluded from the definition of digital music recordings\xe2\x80\x9d under the Audio Home Recording Act\n(\xe2\x80\x9cAHRA\xe2\x80\x9d) because \xc2\xa7 1001(5)(B) expressly provides that a \xe2\x80\x9cdigital music recording\xe2\x80\x9d does not include material\nobjects \xe2\x80\x9cin which one or more computer programs are fixed,\xe2\x80\x9d and \xe2\x80\x9ca hard drive is a material object in which one\nor more [computer] programs are fixed.\xe2\x80\x9d Id. at 1076. Even if we were to accept the Ninth Circuit\xe2\x80\x99s construction\nof the term \xe2\x80\x9cdigital music recording\xe2\x80\x9d under the AHRA, that would not alter the meaning of the term\n\xe2\x80\x9cphonorecord\xe2\x80\x9d under \xc2\xa7 101 of the Copyright Act. See id. at 1077 n.4.\n\nFinally, ReDigi argues that the district court\xe2\x80\x99s conclusion makes no sense because it\nwould require a customer to sell her valuable computer in order to be able to sell an\niTunes music file that was lawfully purchased for under $1.00. Of course it would\nmake no economic sense for a customer to sell her computer or even a $5.00 thumb\ndrive in order to sell an iTunes music file purchased for $1.00. But ReDigi far\noverstates its economic argument when it asserts that the \xe2\x80\x9cdistrict court\xe2\x80\x99s ruling\neliminates any meaningful competition from resellers\xe2\x80\x9d as \xe2\x80\x9cno secondary market can\never develop if consumers are required to give away their computer hard disks as\npart of any resale.\xe2\x80\x9d A secondary market can readily be imagined for first purchasers\nwho cost-effectively place 50 or 100 (or more) songs on an inexpensive device such\nas a thumb drive and sell it. See 4 Patry on Copyright \xc2\xa7 13:23 (observing that \xc2\xa7 109\npermits the sale of an iPod that contains lawfully made digital music files).\nFurthermore, other technology may exist or be developed that could lawfully\neffectuate a digital first sale.\nWe conclude that the operation of ReDigi version 1.0 in effectuating a resale results\nin the making of at least one unauthorized reproduction. Unauthorized reproduction\nis not protected by \xc2\xa7 109(a). It violates the rights holder\xe2\x80\x99s exclusive reproduction\nrights under \xc2\xa7 106(1) unless excused as fair use. For reasons explained below, we\nconclude that the making of such reproductions is not a fair use.\nOur conclusion is supported by the fact that the Copyright Office also concluded\nthat the resale of digital files is infringing. In 1998, Congress mandated that the\nRegister of Copyrights evaluate \xe2\x80\x9cthe relationship between existing and emergent\ntechnology and the operation of section 109.\xe2\x80\x9d The Copyright Office conducted a\nmulti-year evaluation, including review of comments and testimony from the public,\nacademia, libraries, copyright organizations and copyright owners. DMCA Report\n2001 at vi. The Register concluded that \xc2\xa7 109 does not apply to otherwise\nunauthorized digital transmissions of a copyrighted work, reasoning that such\ntransmissions cause the recipient to obtain a new copy of the work. The Register\nreasoned that the creation of a new copy of the work would constitute an\nunauthorized reproduction falling outside the authorization of \xc2\xa7 109(a).\n\n560\n\n\x0cReDigi argues that the Register\xe2\x80\x99s 2001 report is obsolete because it presumed that\nthe only way to transfer digital files over the Internet was by the traditional \xe2\x80\x9ccopy\nand delete\xe2\x80\x9d method, whereas new technologies either have been or might be\ndeveloped that transfer digital files over the Internet using a non-infringing method.\nPlaintiffs counter that, in 2016, the Register again asserted that \xe2\x80\x9ca digital file transfer\ncreates a new copy or phonorecord on the transferee\xe2\x80\x99s computer\xe2\x80\x9d and thus does not\nqualify for first sale protection. U.S. Copyright Office, Library of Cong., The Making\nAvailable Right in the United States 22, n.94 (2016) (quoting the district court\xe2\x80\x99s decision\nin this action with approval). We need not pronounce upon the ongoing relevance of\nthe Register\xe2\x80\x99s 2001 report, or decide whether all digital file transmissions over the\nInternet make reproductions, to determine that ReDigi\xe2\x80\x99s system version 1.0 does\nso.14\nFootnote 14: Having rejected ReDigi\xe2\x80\x99s arguments for the reasons explained above, we have no need to consider\nwhether an electronic digital music file, independent of any physical storage device in which the file is fixed, can\nqualify as a phonorecord in view of \xc2\xa7 101\xe2\x80\x99s definition of phonorecords as \xe2\x80\x9cmaterial objects.\xe2\x80\x9d 17 U.S.C. \xc2\xa7101.\n\n***\nWe conclude by addressing policy-based arguments raised by ReDigi and its amici.\nThey contend that ReDigi\xe2\x80\x99s version 1.0 ought to be validated as in compliance with \xc2\xa7\n109(a) because it allows for realization of an economically beneficial practice,\noriginally authorized by the courts in the common law development of copyright, see\nBobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908), and later endorsed by Congress. They\nalso contend that the Copyright Act must be read to vindicate purchasers\xe2\x80\x99 ability to\nalienate digital copyrighted works under the first sale doctrine\xe2\x80\x94emphasizing that \xc2\xa7\n109(a) is styled as an entitlement rather than a defense to infringement\xe2\x80\x94without\nregard to technological medium. See Copyright Law Professors Brief 4, 12, 14. On this\nscore, they rely heavily on the breadth of the common law first sale doctrine, and on\na purported imperative, described as the \xe2\x80\x9cprinciple of technological neutrality\xe2\x80\x9d by\namici and the \xe2\x80\x9cequal treatment principle\xe2\x80\x9d by ReDigi, not to disadvantage purchasers\nof digital copyrighted works, as compared with purchasers of physical copyrighted\nworks.\nAs for whether the economic consequences of ReDigi\xe2\x80\x99s program are beneficial and\nfurther the objectives of copyright, we take no position. Courts are poorly equipped\nto assess the inevitably multifarious economic consequences that would result from\nsuch changes of law. So far as we can see, the establishment of ReDigi\xe2\x80\x99s resale\nmarketplace would benefit some, especially purchasers of digital music, at the\nexpense of others, especially rightsholders, who, in the sale of their merchandise,\nwould have to compete with resellers of the same merchandise in digital form, which,\nalthough second hand, would, unlike second hand books and records, be as good as\nnew.\nFurthermore, as to the argument that we should read \xc2\xa7 109(a) to accommodate\ndigital resales because the first sale doctrine protects a fundamental entitlement,\nwithout regard to the terms of \xc2\xa7 109(a) (and incorporated definitions), we think such\na ruling would exceed the proper exercise of the court\xe2\x80\x99s authority. The copyright\nstatute is a patchwork, sometimes varying from clause to clause, as between\nprovisions for which Congress has taken control, dictating both policy and the\ndetails of its execution, and provisions in which Congress approximatively\n561\n\n\x0csummarized common law developments, implicitly leaving further such development\nto the courts. The paradigm of the latter category is \xc2\xa7 107 on fair use. In the\nprovisions here relevant, Congress dictated the terms of the statutory entitlements.\nNotwithstanding the purported breadth of the first sale doctrine as originally\narticulated by the courts, see Bobbs-Merrill Co., 210 U.S. at 350 (\xe2\x80\x9cThe copyright\nstatutes, while protecting the owner of the copyright in his right to multiply and sell\nhis production, do not create the right to impose a limitation at which the book shall\nbe sold at retail by future purchasers.\xe2\x80\x9d); Bureau of Nat\xe2\x80\x99l Literature v. Sells, 211 F. 379,\n381-82 (W.D. Wash. 1914) (finding no infringement, in light of first sale doctrine,\nwhere reseller re-bound used books and held them out as new books), Congress, in\npromulgating \xc2\xa7 109(a), adopted a narrower conception, which negates a claim of\nunauthorized distribution in violation of the author\xe2\x80\x99s exclusive right under \xc2\xa7 106(3),\nbut not a claim of unauthorized reproduction in violation of the exclusive right\nprovided by \xc2\xa7 106(1). If ReDigi and its champions have persuasive arguments in\nsupport of the change of law they advocate, it is Congress they should persuade. We\nreject the invitation to substitute our judgment for that of Congress.\nCONCLUSION\nWe have considered ReDigi\xe2\x80\x99s remaining arguments against the district court\xe2\x80\x99s ruling\nand find them to be without merit. The judgment of the district court is\nAFFIRMED.\nNotes and questions:\n(1) In Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018), the Second Circuit held\nthat, notwithstanding the first sale doctrine, by enabling the resale of digital files containing\nsound recordings through a process involving reproduction, ReDigi\xe2\x80\x99s infringed the Plaintiffs\xe2\x80\x99\ncopyrights. The court of appeals made no decision as to whether ReDigi also infringed the\nPlaintiffs\xe2\x80\x99 exclusive distribution rights.\n(2) The Second Circuit\xe2\x80\x99s discussion of fair use is omitted from the extract above. The\nSecond Circuit held that ReDigi\xe2\x80\x99s actions were not protected under the doctrine of fair use.\nReDigi\xe2\x80\x99s use was not transformative (or otherwise supported under the first fair use factor)\nand its complete reproductions were sold in competition with the Plaintiffs\xe2\x80\x99 own authorized\ncopies. The court concluded that\nEven if ReDigi is credited with some faint showing of a transformative purpose,\nthat purpose is overwhelmed by the substantial harm ReDigi inflicts on the value of\nPlaintiffs\xe2\x80\x99 copyrights through its direct competition in the rights holders\xe2\x80\x99 legitimate\nmarket, offering consumers a substitute for purchasing from the rights holders. We\nfind no fair use justification.\n\n(3) Note that in UsedSoft GmbH v Oracle International Corp (C-128/11) (ECJ 2012) the ECJ\nruled that the owner of copyright in software could not prevent a perpetual licensee who has\ndownloaded the software from the internet from selling his \xe2\x80\x98used\xe2\x80\x99 license. How different is\nthe law in the European Union compared to the United States on this issue?\n\n562\n\n\x0cRental Rights and Lending Rights\nRental Rights in the United States\nThe Record Rental Amendment of 1984, codified in 17 USC \xc2\xa7109(b) prohibits an owner of a\nphonorecord that embodies a sound recording or musical work from renting it to the public\nfor direct or indirect commercial advantage.\nThis exception to the first sale doctrine was designed to prevent music stores from renting\nrecords and thereby facilitating home copying. The provision does not apply to libraries and\neducational institutions.\nThe Copyright Software Rental Amendments Act of 1990 amended \xc2\xa7109(b) further to\nprohibit rentals of computer software for direct or indirect commercial advantage. The\nexception does not apply to lending of a copy by a nonprofit library for nonprofit purposes,\nprovided the library affixes an appropriate warning.\nThe amendment also specifically excludes: A computer program which is embodied in a\nmachine or product and which cannot be copied during the ordinary operation or use of the\nmachine or product; or\nA computer program embodied in or used in conjunction with a limited purpose computer\nthat is designed for playing video games and may be designed for other purposes.\nLibrary Lending, Printed Books vs. eBooks\nThe first sale doctrine makes lending libraries possible. The majority of library activity is\nbeyond the bounds of the copyright holder\xe2\x80\x99s rights because of the first sale doctrine in\nSection 109(a) of the Copyright Act. The copyright holder\xe2\x80\x99s right of distribution is limited by\nthe first sale doctrine and is exhausted upon the purchase of a legal copy. Whether the\nlibrary obtains the work from the publisher, a secondary market, or a donor, the library is\nthen free to lend, sell, repair, or destroy the book, limited only by the lifespan of the book\xe2\x80\x99s\nphysical condition. Although publishers may attempt to entice libraries to purchase a more\nexpensive and durable \xe2\x80\x9clibrary edition\xe2\x80\x9d copy, libraries are just as free to purchase any\nconsumer edition.\nHowever, the digital lending of e-books and audiobooks operates under a different legal\nframework. Even though digital rights management (\xe2\x80\x9cDRM\xe2\x80\x9d) controls and library hosting\nprograms approximate the lending experience for the patron whose borrowed book expires\nat the end of the lending period and become available again for lending by the library, the\nmechanics of e-book lending implicate different legal issues. Unlike with physical books, the\nlending of a digital work involves the creation and transmission of a copy of the work.\nWhereas libraries could acquire a physical collection over time and weather budget shortfalls\nwith the existing catalog, the e-book licensing model prevents libraries from utilizing\nconsumer versions or secondary markets and revokes access to the licensed catalog when the\nlibrary cannot afford licensing fees. Publishers differ in their licensing arrangements. For\nexample, at the time of writing,155 Harper Collins limited licensees to 26 loans per license\nbefore requiring renewal. Often, companies like Overdrive will act as intermediaries between\n\n155\n\nEarly in 2019.\n\n563\n\n\x0cthe publisher and the public libraries and may impose their own conditions beyond those of\nthe publisher.\nPublic Lending Rights in Other Jurisdictions\nSome other countries have handled the issue of the lending of physical books differently.\nThe Australia Public Lending Rights (PLR) pays qualifying Australian citizen or resident\ncreators and publishers an inalienable set amount for each library book holding. The\nEuropean Union requires the member states to include noncommercial lending within the\ncopyright holder\xe2\x80\x99s exclusive rights and thus the copyright owner\xe2\x80\x99s interest extends beyond\nthe first sale to enable a rightholder to permit or deny later noncommercial lending, unless\nthe member state ensures that the authors receive renumeration for public lending. A\nnumber of European Union members have joined Australia, Canada, Israel, and New\nZealand and also established PLR systems.\n\nThe \xe2\x80\x9cDroit De Suite\xe2\x80\x9d and Resale Royalties\nClose v. Sotheby\xe2\x80\x99s 894 F.3d 1061 (9th Cir. 2018)\nOpinion by Judge Jay S. Bybee\nMany nations recognize the droit de suite, under which artists receive a royalty each\ntime the original, tangible embodiment of their work is resold. The practice was first\nrecognized in France in 1920 and then adopted in other civil-law jurisdictions. More\nrecently, a number of common-law jurisdictions have adopted some form of the droit\nde suite. In those countries that recognize it, the droit de suite is considered a moral\nright, albeit one with economic value.\nThe droit de suite protects visual artists, who face particular difficulty in capitalizing on\ntheir work. Literary and recording artists can generally profit from their efforts by\ncontrolling the reproduction of books or music. For visual artists such as painters\nand sculptors, however, the right to control reproduction is often not their principal\nsource of income. Rather, it is often the sale of their original work that allows them\nto make a profit. The droit de suite gives these artists an economic interest in\nsubsequent sales of their original work, thereby allowing them to capture some of its\nappreciation in value after the first sale.\nThe droit de suite also appears in international copyright law. Since 1948, the Berne\nConvention has recognized that artists possess an \xe2\x80\x9cinalienable right to an interest in\nany sale of the work subsequent to the first transfer by the author of the work.\xe2\x80\x9d\nBerne Convention for the Protection of Literary and Artistic Works art. 14ter(1).\nNevertheless, the Berne Convention does not obligate its signatories to adopt the\ndroit de suite. Instead, the Berne Convention makes the recognition of such rights\noptional, but rewards such recognition with reciprocity: countries recognizing the\nright will protect the right of each others\xe2\x80\x99 artists.\nThe United States became a signatory to the Berne Convention in 1989, but to date,\nit has not adopted the droit de suite. As early as the 1970s, Congress considered\nadopting the droit de suite as part of U.S. copyright law, but those efforts have never\nproved successful.\n\n564\n\n\x0c\xe2\x80\xa6\nUnder the California Resale Royalties Act of 1976 (\xe2\x80\x9cCRRA\xe2\x80\x9d), the seller of \xe2\x80\x9ca work\nof fine art\xe2\x80\x9d or the seller\xe2\x80\x99s agent must withhold 5% of the sale price and pay it to the\nartist. If the seller or agent is unable to locate and pay the artist within 90 days, the\n5% royalty goes to the California Arts Council. In that event, the California Arts\nCouncil must attempt to locate and pay the artist. If the artist has not been located\nafter seven years, the Council may then use the funds to acquire fine art for public\nbuildings. If the seller or agent fails to pay the 5% royalty, the artist may bring an\naction for damages and attorneys\xe2\x80\x99 fees. Notably, the artist\xe2\x80\x99s right to the 5% royalty\nmay not be waived or reduced by contract.\n[Applying the statutory test for preemption under Section 301(a) of the Copyright\nAct, the court held that the subject matter of the CRRA fell within the subject matter\nof copyright, it then turned to the question of whether that the statute granted\n\xe2\x80\x9crights equivalent\xe2\x80\x9d to copyright.]\nAlthough the CRRA\xe2\x80\x99s resale royalty right and \xc2\xa7 106(3)\xe2\x80\x99s distribution right are not\ncoextensive, they are equivalent. The two rights differ in that one grants artists the\nright to receive a percentage payment on all sales of artwork after the first, while the\nother grants artists the right to receive full payment on the first (and only the first)\nsale. But, at root, both concern the distribution of copies of artwork and define\nartists\xe2\x80\x99 right (or lack thereof) to payment on downstream sales of those copies.\nThe equivalence of the two rights is further underscored by the manner in which the\nCRRA both expands and restricts the federal distribution right. The CRRA expands\nthe federal distribution right because, whereas the first sale doctrine limits artists\xe2\x80\x99\nright to payment to the first sale, the CRRA grants artists an unwaivable right to a\n5% royalty on all downstream sales. Indeed, the CRRA is designed precisely to alter\nthe first sale doctrine by affording artists a right to at least some measure of payment\non every sale after the first. At the same time, the CRRA also restricts the federal\ndistribution right by forbidding artists from fully alienating copies of their artwork.\nIn effect, the CRRA creates an inalienable restraint on alienation.\nIn short, the CRRA does not merely grant an additional right beyond what federal\ncopyright law already provides but fundamentally reshapes the contours of federal\ncopyright law\xe2\x80\x99s existing distribution right. This runs counter to \xc2\xa7 301(a), which\nprecludes \xe2\x80\x9call legal or equitable rights that are equivalent to any of the exclusive\nrights within the general scope of copyright,\xe2\x80\x9d even if they are not precisely within the\ncontemplation of the Copyright Act.\nNotes and questions\n(1) In Close v. Sotheby\xe2\x80\x99s, Inc., 894 F.3d 1061 (9th Cir. 2018), the Ninth Circuit held that claims\nfor resale royalties under the California Resale Royalties Act were expressly preempted by\nthe 1976 Copyright Act. The court of appeals held that claims that arose before the effective\ndate of the 1976 Copyright Act were preempted only if they conflicted with the 1909 Act.\nThe court concluded that plaintiffs\xe2\x80\x99 claims concerning sales occurring between the CRRA\xe2\x80\x99s\neffective date of January 1, 1977, and the 1976 Act\xe2\x80\x99s effective date of January 1, 1978 were\nnot preempted and remanded to the district court for further proceedings.\n\n565\n\n\x0c(2) The case for resale royalties laws is set out in the opinion above. Guy Rub and\nChristopher Sprigman argue that this view is wrong, resale royalties don\xe2\x80\x99t help artists, at least\nnot most artists.\nChristopher Sprigman and Guy Rub, Resale Royalties W ould Hurt Emerging\nArtists, Artsy.net, Aug 8, 2018\nThere are a lot of problems with resale royalties schemes, and we have addressed\nsome of them at length elsewhere. Here, we focus on one overriding difficulty:\nResale royalties take real money from the entire art world, including young and\nstruggling artists, and transfer most of it to a tiny group of famous and rich superartists\xe2\x80\x94the artistic one-percenters. \xe2\x80\xa6 Resale royalties schemes are a regressive tax:\nthey take from the poor and give to the rich. It\xe2\x80\x99s no surprise that rich artists and\ntheir lawyers, agents, and heirs favor resale royalties laws. But the rest of the art\nworld should not have to pay the price for it.\n\nDo you agree?\n\n566\n\n\x0c16. PUBLIC PERFORMANCE, DISPLAY & TRANSMISSION\nThe international framework for performance, display and transmission\nrights\nThe Berne Convention contains a hodgepodge of provisions relating to what can loosely be\ntermed public performance and communication to the public. Article 11 of the Berne\nConvention gives the authors of dramatic, dramatic-musical, and musical works the exclusive\nright to publicly perform their works \xe2\x80\x9cby any means or process\xe2\x80\x9d, and, in a separate\nsubsection, the exclusive right of communicating the performance of their works to the\npublic.\nBerne Convention Article 11. Certain Rights in Dramatic and Musical Works:\n(1) Authors of dramatic, dramatico-musical and musical works shall enjoy the\nexclusive right of authorizing:\n(i) the public performance of their works, including such public performance by any\nmeans or process;\n(ii) any communication to the public of the performance of their works.\n(2) Authors of dramatic or dramatico-musical works shall enjoy, during the full term\nof their rights in the original works, the same rights with respect to translations\nthereof.\n\nBerne Article 11bis gives the authors of literary and artistic works the exclusive right to\nbroadcast their works, and to communicate the work to the public \xe2\x80\x9cby wire or\nrebroadcasting\xe2\x80\x9d. For good measure, Article 11bis, adds a reference to the public\ncommunication by loudspeaker or any other analogous instrument transmitting the\nbroadcast of the work. Article 11bis(2) specifically authorizes a system of compulsory\nlicensing. This is common for cable retransmission.\nBerne Convention Article 11bis. Broadcasting and Related Rights:\n(1) Authors of literary and artistic works shall enjoy the exclusive right of\nauthorizing:\n(i) the broadcasting of their works or the communication thereof to the public by\nany other means of wireless diffusion of signs, sounds or images;\n(ii) any communication to the public by wire or by rebroadcasting of the broadcast\nof the work, when this communication is made by an organization other than the\noriginal one;\n(iii) the public communication by loudspeaker or any other analogous instrument\ntransmitting, by signs, sounds or images, the broadcast of the work.\n(2) It shall be a matter for legislation in the countries of the Union to determine the\nconditions under which the rights mentioned in the preceding paragraph may be\nexercised, but these conditions shall apply only in the countries where they have\nbeen prescribed. They shall not in any circumstances be prejudicial to the moral\nrights of the author, nor to his right to obtain equitable remuneration which, in the\nabsence of agreement, shall be fixed by competent authority.\n\n567\n\n\x0cFor the authors of literary works, Article 11ter adds a right of public recitation and\ncommunication to the public of recitation.\nBerne Convention Article 11ter. Certain Rights in Literary Works:\n(1) Authors of literary works shall enjoy the exclusive right of authorizing:\n(i) the public recitation of their works, including such public recitation by any means\nor process;\n(ii) any communication to the public of the recitation of their works.\n(2) Authors of literary works shall enjoy, during the full term of their rights in the\noriginal works, the same rights with respect to translations thereof.\n\nFinally, Article 14 provides a specific provision for cinematographic adaptations. The author\nof a literary or artistic work that has been adapted into cinematographic work shall enjoy the\nexclusive right of authorizing \xe2\x80\x9cthe public performance and communication to the public by\nwire of the works thus adapted or reproduced.\xe2\x80\x9d\nBerne Convention Article 14 Cinematographic and Related Rights\n(1) Authors of literary or artistic works shall have the exclusive right of authorizing:\n(i) the cinematographic adaptation and reproduction of these works, and the\ndistribution of the works thus adapted or reproduced; (ii) the public performance\nand communication to the public by wire of the works thus adapted or reproduced.\n\nThe Berne Convention does not require member nations to recognize a distinct right of\npublic display, although in Article 17, the convention clearly leaves that option open to the\nstates. More importantly, although the Berne Convention requires the provision of various\nrights of public performance and public communication, it makes no attempt to define what\nis meant by public.\nTRIPs Article 14(1) deals with what are generally referred to as anti-bootlegging laws. The\nright to prevent bootlegging in of great interest to performers, but it not exactly a\nperformance right.\nArticles 14(3) suggests to member nations that \xe2\x80\x9cbroadcasting organizations\xe2\x80\x9d should have the\nright to prevent rebroadcasting of broadcasts by wireless means, as well as more general\n\xe2\x80\x9ccommunication to the public of television broadcasts.\xe2\x80\x9d However, the broadcaster rights in\n14(3) are not mandatory under TRIPs if owners of copyright in the subject matter of\nbroadcasts are given those rights instead. This is the approach taken by the United States.\nTRIPs Article 14 - Protection of Performers, Producers of Phonograms\n(Sound Recordings) and Broadcasting Organizations\n1. In respect of a fixation of their performance on a phonogram, performers shall\nhave the possibility of preventing the following acts when undertaken without their\nauthorization: the fixation of their unfixed performance and the reproduction of\nsuch fixation. Performers shall also have the possibility of preventing the following\nacts when undertaken without their authorization: the broadcasting by wireless\nmeans and the communication to the public of their live performance.\n3. Broadcasting organizations shall have the right to prohibit the following acts\nwhen undertaken without their authorization: the fixation, the reproduction of\nfixations, and the rebroadcasting by wireless means of broadcasts, as well as the\ncommunication to the public of television broadcasts of the same. Where Members\n\n568\n\n\x0cdo not grant such rights to broadcasting organizations, they shall provide owners of\ncopyright in the subject matter of broadcasts with the possibility of preventing the\nabove acts, subject to the provisions of the Berne Convention (1971).\n\nPerformance and display in the United States\nThe Copyright Act provides copyright owners with a general public performance right, a\npublic display right, and a narrowly tailored public performance \xe2\x80\x9cby means of a digital audio\ntransmission\xe2\x80\x9d right.\n17 U.S. Code \xc2\xa7 106 - Exclusive rights in copyrighted works\nSubject to sections 107 through 122, the owner of copyright under this title has the\nexclusive rights to do and to authorize any of the following:\n(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes,\nand motion pictures and other audiovisual works, to perform the copyrighted work\npublicly;\n(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes,\nand pictorial, graphic, or sculptural works, including the individual images of a\nmotion picture or other audiovisual work, to display the copyrighted work publicly;\nand\n(6) in the case of sound recordings, to perform the copyrighted work publicly by\nmeans of a digital audio transmission.\n\nWhy does copyright include public performance and public display rights?\nCopyright was originally limited to rights of reproduction and distribution because by\ncontrolling the making and sale of copies, authors and publishers could control the primary\nchannels through which their works were enjoyed by the public. The making and/or sale of\ncopies were the main tolling points that allowed authors to achieve some reward for their\nlabors, and publishers some reward for their investments. In the era of the printing press, an\nactual copy, once sold, became its own freestanding commodity, to be bought and sold, lent\nand used without further consultation to the copyright owner, so long as it was not copied.\nHowever, as the economic significance of performance and display unconnected to\nreproduction increased, copyright owners began to press for a broader scope of rights that\nwould encompass these activities. Performance rights are particularly important in relation to\naudio-visual works and in the music industry.\n\nThe display right\nSection 106(5) gives the copyright owner the exclusive right of public display for certain\nclasses of works. The list of works includes almost every kind of work that would be worth\ndisplaying (literary, musical, dramatic, and choreographic works, pantomimes, and pictorial,\ngraphic, or sculptural works, including the individual images of a motion picture or other\naudiovisual work), but not architectural works.\nBy and large the concept of display is not hard to understand. The Copyright Act defines it\nin the following terms:\n17 U.S. Code \xc2\xa7 101 - Definitions\n\n569\n\n\x0cTo \xe2\x80\x9cdisplay\xe2\x80\x9d a work means to show a copy of it, either directly or by means of a\nfilm, slide, television image, or any other device or process or, in the case of a\nmotion picture or other audiovisual work, to show individual images\nnonsequentially.\n\nThe display right is limited to \xe2\x80\x9cpublic\xe2\x80\x9d displays and is additionally limited by Section 109(c)\nthat gives the owner or authorized possessor of a particular copy of a work the right to\ndisplay that copy publicly to viewers present at the place where the copy is located. Thus\nalthough in the absence of a written assignment, an artist retains copyright when she sells her\npainting, no license or permission is required to display that painting, either publicly or\nprivately.\n17 U.S. Code \xc2\xa7 109(c)\nNotwithstanding the provisions of section 106(5), the owner of a particular copy\nlawfully made under this title, or any person authorized by such owner, is entitled,\nwithout the authority of the copyright owner, to display that copy publicly, either\ndirectly or by the projection of no more than one image at a time, to viewers present\nat the place where the copy is located.\n\nThe display right is also subject to various other statutory exemptions such as the Section\n110 (1) exemption face-to-face teaching activities.\n17 U.S. Code \xc2\xa7 110 - Limitations on exclusive rights: Exemption of certain\nperformances and displays\nNotwithstanding the provisions of section 106, the following are not infringements\nof copyright:\n(1) performance or display of a work by instructors or pupils in the course of faceto-face teaching activities of a nonprofit educational institution, in a classroom or\nsimilar place devoted to instruction, unless, in the case of a motion picture or other\naudiovisual work, the performance, or the display of individual images, is given by\nmeans of a copy that was not lawfully made under this title, and that the person\nresponsible for the performance knew or had reason to believe was not lawfully\nmade;\n(2) [a rather complicated provision amounting to a distance learning exception]\n(3) performance of a nondramatic literary or musical work or of a dramatico-musical\nwork of a religious nature, or display of a work, in the course of services at a place\nof worship or other religious assembly;\n\nThe display right has very limited independent economic significance. There are two reasons:\nfirst, for displays without technological assistance (i.e., live displays) Section 109(c) is an\nexception that virtually swallows the rule; second, most technologically enabled displays are\nalso reproductions, so the display right does not add anything unless the right to reproduce\nand the right to display are owned or licensed separately.\nWhat makes a display public?\nA display is public if it is made \xe2\x80\x9cat a place open to the public or at any place where a\nsubstantial number of persons outside of a normal circle of a family and its social\nacquaintances is gathered.\xe2\x80\x9d See Section 101. The Act contains a much more elaborate\ndefinition of what it means to \xe2\x80\x9cperform or display a work \xe2\x80\x98publicly\xe2\x80\x99\xe2\x80\x9d but we will defer those\ncomplexities to the discussion of the performance right.\n\n570\n\n\x0cA work can also be displayed through transmission. The \xe2\x80\x9ctransmit\xe2\x80\x9d clause is discussed in\ndetail in the context of the public performance right, below.\n\nThe performance right\nUnderstanding the Section 106(4) performance right in terms of live in-person performances\nis also fairly easy. If you recite a poem, act out a play, dance a choreographic work, play a\nmusical work or a film, you perform those works. Do those things in public, and you\npublically perform it.\n17 U.S. Code \xc2\xa7 101 - Definitions\nTo \xe2\x80\x9cperform\xe2\x80\x9d a work means to recite, render, play, dance, or act it, either directly or\nby means of any device or process or, in the case of a motion picture or other\naudiovisual work, to show its images in any sequence or to make the sounds\naccompanying it audible.\n\nThere is no equivalent to Section 109(c) for performances. As a result, there is much more\ncaselaw on how to delineate between public and non-public performances than there is for\npublic and non-public displays. For the most part the definition in Section 101\xe2\x80\x94\xe2\x80\x9cat a place\nopen to the public or at any place where a substantial number of persons outside of a normal\ncircle of a family and its social acquaintances is gathered\xe2\x80\x9d\xe2\x80\x94is self-explanatory with respect\nto live, in-person performances. What is not self-explanatory is the remainder of the Section\n101 definition dealing with the transmission of performances. Transmission rights are\ndiscussed below.\nSection 106(4) applies to most categories of works that could be performed\xe2\x80\x94\xe2\x80\x9cliterary,\nmusical, dramatic, and choreographic works, pantomimes, and motion pictures and other\naudiovisual works\xe2\x80\x9d\xe2\x80\x94but this list does not include sound recordings.\nPerformance rights for sound recordings and musical works are different\nThe following extract from Professor Kristelia Garc\xc3\xada\xe2\x80\x99s article on Facilitating Competition by\nRemedial Regulation is a useful primer on some key concepts and language for talking about\nmusic and copyright.\nKristelia A. Garc\xc3\xada, Facilitating Competition by Remedial Regulation, 31 Berkeley\nTechnology Law Journal, 183, 192\xe2\x80\x9393 (2016)\nExtracted and adapted with permission\n\nMusic Licensing 101\nThe world of music licensing is incredibly (and, many would argue, unduly)\ncomplicated. This is as much the result of piecemeal legislation and powerful\nlobbyists as it is a reflection of well-intended, yet largely unsuccessful, attempts to\nanticipate and accommodate ever-evolving technologies and consumer\npreferences. Music is unique among copyrighted content (e.g., films, television\nprograms, novels) in that a single song is actually comprised of two distinct\ncopyrights: One on the underlying musical composition and another on the sound\nrecording of that musical composition. For each of these copyrights, there exists a\ncompanion right--that of \xe2\x80\x9cpublic performance\xe2\x80\x9d--that gives a licensee the right to play\n571\n\n\x0c(i.e., perform) a song publicly, such as at a restaurant, sporting event, or over the\nterrestrial radio airwaves.\nThese performance rights may be further broken down into digital performance\nrights (for online plays via an Internet radio service like Pandora), and terrestrial\nperformance rights (for analog plays via an FM radio station). Copyrights on a\nmusical composition and copyrights on a sound recording (and their respective\npublic performance rights) are typically held by different parties and pay royalties\ndifferently depending on the platform and the use within that platform. This\ndichotomy (quadchotomy?) results in a number of interesting and counterintuitive\nphenomena in music licensing. For example, while the sale of a digital download of\nThe Beach Boys\xe2\x80\x99 hit song \xe2\x80\x9cSurfin\xe2\x80\x99 USA\xe2\x80\x9d on Apple\xe2\x80\x99s iTunes platform triggers a\nstatutory royalty paid on both the underlying musical composition and the sound\nrecording, playing the same song on an FM radio station results in a public\nperformance royalty payment to Chuck Berry, the song\xe2\x80\x99s composer, but no such\nroyalty payment to the Wilson brothers, performers of the sound recording.\nAs Garc\xc3\xada explains, copyright attaches to music in two ways, first as a composition (think of\nsheet music) and second, since 1972, as a recording (think vinyl, magnetic tape, compact disc,\netc.) Sound recordings were not protected by federal copyright law until 1972, and even then,\nthey were treated quite differently to musical works. Of particular relevance here, sound\nrecordings were excluded from the general performance right in Section 106(4).\nThe Digital Performance Right in Sound Recordings Act\nIn the early 1990s the recording industry began to understand that perfect digital\nreproduction and efficient Internet distribution were a threat to its business model grounded\nin physical distribution. The industry warned Congress that \xe2\x80\x9cdigital delivery would siphon\noff and eventually eliminate the major source of revenue for investing in future recordings\xe2\x80\x9d\nand that over time, this would lead to \xe2\x80\x9ca vast reduction in the production of recorded\nmusic.\xe2\x80\x9d156\nResponding to these concerns, in 1995, Congress passed the Digital Performance Right in\nSound Recordings Act (the \xe2\x80\x9cDPRSRA\xe2\x80\x9d), adding a limited exclusive right in the performance\nof sound recordings \xe2\x80\x9cby means of a digital audio transmission\xe2\x80\x9d to the bundle of rights in\nSection 106 of the Copyright Act. The DPRSRA gave the copyright owners of sound\nrecordings a digital performance right, but subjected that right to important exceptions and,\nin certain cases, to a compulsory licensing regime.\nThe DPRSRA was targeted at new subscription music services offered by cable, satellite, and\nInternet service providers. But it did not seem to envisage the significance of Internet radio,\ni.e. non-subscription services supported by advertising. This gap in the legislation persisted\nuntil a last-minute addition was made to the 1998 Digital Millennium Copyright Act and the\ncategory of digital performance right exempt services was limited to \xe2\x80\x9cnonsubscription\nbroadcast transmissions.\xe2\x80\x9d Following the amendments, terrestrial radio was still exempt from\n\nDigital Performance Right in Sound Recording: Hearing on H.R. 1506 Before the H. Comm. on the\nJudiciary, Subcomm. on Courts & Intellectual Prop., 104th Cong. (1995) (statement of Jason Berman, President,\nRIAA).\n156\n\n572\n\n\x0cthe new sound recording digital performance right, but Internet radio and webcasting were\nno longer exempt.\nFor a discussion of how rate setting under the webcasting compulsory licensing regime\nworks, see Peter Dicola and Matthew Sag, An Information-Gathering Approach to Copyright Policy,\n34 Cardozo Law Review 173 (2012). For more recent developments, see Jacob Victor,\nReconceptualizing Compulsory Copyright Licenses, forthcoming in the Stanford Law Review.157\nPerformance Rights Organizations (PROs)\nThe 1909 Copyright Act included a provision that extended the relatively new public\nperformance right to non-dramatic musical works. By 1913, prominent composers and\nsongwriters had begun talking about organizing in order to collect royalties based on this\nnew right. The composers maintained their concern about new media cutting into sales of\nsheet music. In 1914, the American Society of Composers, Arrangers, and Publishers\n(\xe2\x80\x9cASCAP\xe2\x80\x9d) was officially incorporated and over the next few years, the new organization\nused the judicial system to establish the meaning and extent of the public performance right.\nThe earliest cases concerned hotels, restaurants, and cabarets, but ASCAP quickly moved on\nto target the movie industry, and then the radio and television broadcasting industries when\nthey emerged.\nPerformance rights organizations (PROs) play an important role in the administration of\ncopyright law. PROs such as ASCAP, BMI, and SESAC, offer blanket public performance\nlicenses for vast catalogs of musical works to radio stations, stadiums, concert venues, bars,\nrestaurants, etc. Copyright owners opt in to organizations such as these by granting them a\nnonexclusive license. The arrangement is efficient for copyright owners and it provides\nsomething close to a one-stop shop for broadcasting networks and music venues. ASCAP\nand BMI are private organizations, but they have been subject to various antitrust law\nconsent decrees for over half a century. Issues with the current consent decree are beyond\nthe scope of this chapter, but it is important to note that licensees who believe that ASCAP\nis not offering reasonable terms can take their dispute to the federal District Court in the\nSouthern District of New York.\nASCAP does not collect royalties for digital audio transmissions of sound recordings; these\nare administered by SoundExchange. SoundExchange plays a very similar role to ASCAP,\nexcept that it plays by a set of rules established under the statutory licensing scheme in the\ncopyright act rather than an antitrust consent decree.\nNote that the Music Modernization Act of 2018 changed a number of details about how the\nstatutory licenses under the Copyright Act are determined. Most of these changes do not\nimpact the core functions of ASCAP et al. in relation to collecting public performance\nroyalties.\n\n157\n\nAvailable at SSRN: https://ssrn.com/abstract=3397352\n\n573\n\n\x0cTransmission rights\nTransmission and public performance under the 1909 Act\nTo understand the transmission component of the public performance right in the\nCopyright Act of 1976, it is necessary to be familiar with three key Supreme Court cases\ndecided in the twilight of the 1909 Act: Fortnightly, Teleprompter, and Aiken.\nIn the late 1960s and early 1970s, community antenna television (CATV) systems challenged\nthe incumbent television broadcasters by retransmitting television signals to CATV\nsubscribers. The CATV provider in Fortnightly Corp. v. United Artists Television, Inc., 392 U.S.\n390 (1968) placed antennas on hills above certain cities and used coaxial cables to carry the\nsignals received by the antennas to the home television sets of its subscribers. The CATV\npr
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