EXTENDED READINGS ON COPYRIGHT
BY MATTHEW SAG
© Matthew Sag (2018–2021). No copyright claimed in United States government works or the works of other authors
specifically credited herein. This work is released under a Creative Commons (Attribution-NonCommercial-ShareAlike
4.0 International) license. Email the author at matthewsag@gmail.com subject “EROC” for additional permissions,
suggestions, and corrections. Note: (1) All case extracts are edited for concision and readability; (2) Placeholders included
for topics to be addressed in future versions; (3) cite as MATTHEW SAG, EXTENDED READINGS ON COPYRIGHT, 2021
Edition (second release).

ABOUT THIS BOOK
Origins. This book began as a collection of materials I developed for my Copyright Law class
at Loyola University Chicago. The title, Extended Readings on Copyright, reflects the origins of
this project. Early on, my aim was simply to supplement existing casebooks in those areas
where I found them to be unhelpful or out of date. Soon enough, the project expanded into
the textbook on copyright law you are reading now. Extended Readings on Copyright may always
be something of a work in progress because the law of copyright changes so rapidly.
Nevertheless, I think that the book has progressed far enough to be useful to students,
academics, judges and practitioners.
Edition. This book was initially released in 2019. The 2021 edition was published in January
of 2021. The current edition is dated May 14, 2021.
This book is what you make of it. This edition of Extended Readings on Copyright is distributed
under a non-commercial Create Commons license that allows you to add, subtract, and
amend as you see fit, subject to two main requirements: you must offer any derivative work
based on these materials under the same license terms, and you must provide appropriate
attribution to the original. I encourage you to share your edits and additions with me, but
this is not obligatory. Extended Readings on Copyright can be used as a standalone textbook on
United States copyright law or as the foundation for a comparative copyright law course.
Accessibility. Readers might find some of the formatting, editorial, and layout decisions in this
book unusual. I have cleaned up internal citations in the cases and expanded most of the
abbreviations to make the text flow more smoothly for those using assistive technologies.
The traditional Blue Book conventions used in law are incredibly hostile to the visually
disabled and I see no reason to perpetuate the conventional practice of that exclusion by
design. I have compromised slightly on the issue of footnotes. I have tried to use footnotes
sparingly and where a footnote in a case or article extract is worth reading, I have promoted
it to the main text. This book is available as a .docx file and a .ppt file. Those who require
larger print should be able to achieve this simply by changing the style definitions and
updating the table of contents.
If there are ways in which this book can be more accessible, please let me know.
There is no separate statutory supplement to this book. Instead, the relevant statutory provisions are
set out in the text because (a) that is where students are most likely to actually read them, (b)
this facilitates discussion of the statute which most copyright casebooks neglect. One of the
implications of this policy is that the same section of the Copyright Act may be extracted in
several different chapters of the book. This makes the book longer than it would otherwise
be, but I believe the extra pixels are worth it.
Summaries. Copyright law is a hard subject. The words of the Copyright Act of vitally
important to understanding copyright law, but they are also completely insufficient without
the relevant legislative history and case law development. Most of the cases extracted in this
book are followed by a short restatement of the central holding or teaching of the case. I
recognize that some instructors may prefer their students to figure this out for themselves,
but I find that there is still plenty of challenge left in the material.
Other reasons to use this book. Although Extended Readings on Copyright is primarily a book about
copyright law in the United States, I have tried to situate American law in an international
and comparative context where possible. Seeing how the law works in other jurisdictions
2

provides an insight into how the law in the United States could be different. Furthermore,
every copyright specialist should have some basic understanding of how the international
intellectual property system works, if only to be able to evaluate appeals to the authority of
the Berne Convention, the TRIPs agreement, and other international copyright agreements.
ACKNOWLEDGMENTS
I have sought and received permission to include extracts from several notable academics,
for which I am grateful. Other copyright material is included in reliance on the fair use
doctrine.

3

EXTENDED READINGS ON COPYRIGHT
Subject Oriented Table of Contents
1.
Introduction to Copyright Law
An overview of copyright
The historical development of copyright law
The expansion of copyright rights and subject matter
Jurisprudential changes
The “why” of copyright law
Key economic concepts in copyright law
Copyright’s international framework
The harmonization of copyright in the European Union
A quick look at the rights of the copyright owner

20
20
21
30
31
31
35
38
40
42

2.
Copyright Subject Matter and Questions of Creativity, Originality, and
Intellectual Creation
The significance of creativity, originality, and authorship
International Context
Creativity, originality and copyright subject matter in the United States

45
45
45
47

3.
The Exclusion of Facts, Ideas, Functions, and Processes from Copyright
Protection
80
Introduction
80
International context
80
The idea-expression distinction and levels of generality
81
Illustrations of the idea-expression distinction at work
87
The exclusion of facts, ideas, functions, and processes
88
Merger and scènes à faire
108
The law itself is not copyrightable
121
Other exclusions from copyright protection
134
4.
The Historical Development of the Concepts of Reproduction, Adaptation,
and Fair Use
137
Reproduction and adaptation—International
137
Reproduction, adaptation, and fair use—United States
138
The historical context of the reproduction right
139
Reproduction in the modern era
149
5.
The Reproduction Right
The meaning of reproduction
Different tests and approaches
The confusing role of similarity in copyright infringement
The ordinary observer test(s)
“Total concept and feel”
The abstraction, filtration, and comparison test
4

158
158
160
190
197
199
210

6.
The right to prepare a derivative work based upon the copyrighted work 212
Legislative history
212
Illustrative cases
214
The scope of copyright in derivative works
225
7.
An Overview of Copyright Limitations and Exceptions
How to think about copyright limitations and exceptions
Copyright limitations and exceptions required by international agreements
Significant limitations and exceptions to copyright in the United States
International constraints on copyright limitations and exceptions

233
233
234
234
236

8.
Expressive Fair Use—Transformative Use
Campbell v. Acuff-Rose and the modern era of fair use
The significance of Campbell v. Acuff-Rose
The interrelated nature of the fair use factors
Transformative use without transformative purpose?
Transformative use in Google v Oracle

239
239
253
263
268
294

9.
Expressive Fair Use—Untransformative uses
Untransformative copying and new markets
Providing access to the print-disabled
Educational fair uses

299
299
310
314

10.
Non-Expressive Use As Fair Use
Non-expressive use
The relationship between transformative use and non-expressive use
Text data mining in the European Union

325
325
370
372

11.
Copyright subject matter and the boundaries of the work
Locating the threshold of copyrightability
Boundary problems with copyrighted works
The quantum theory of copyright and the supposed problem of disappearing works
The problem of temporarily contingent works
Emergent and hyper-textual works
Copyrightable Characters (and Musical Hooks and Riffs)?

376
376
379
382
406
407
407

12.
Ownership, Authorship and Transfer
Initial ownership of copyright interests: International framework
Initial ownership of copyright interests under United States copyright law
Coauthors are joint owners of the work
Ownership of employee works and commissioned works
Non-employee works made for hire
Transfer of copyright interests
Fractured ownership – copyright divisibility
United States rules on the termination of transfers

416
416
416
418
437
439
440
442
447

5

13.
Moral Rights
What are moral rights?
The international legal framework for moral rights protection
Moral rights in the United States outside the Copyright Act
Moral rights in the United States under VARA

458
458
458
459
470

14.
Formalities and Duration
International context—the Berne Convention prohibition on formalities
The significance of formalities in the United States
Copyright duration
International norms and agreements concerning copyright duration
Copyright duration in the United States
The constitutionality and wisdom of copyright term extension
Orphan works
The effect of long copyright terms on the availability of older works

499
499
500
512
513
514
519
529
536

15.
Copyright and Industrial Design
Different approaches to functional art
Protecting industrial designs and other PGS works through copyright
What is “conceptual separability” after Star Athletica v. Varsity Brands?
Star Athletica at the Copyright Office

538
538
540
544
559

16.
Copyright in Computer Software
Copyright in computer programs under Berne and TRIPs
An overview of copyright protection for computer software in the United States
The history of software copyright litigation in the United States
The Oracle v. Google Cases

566
566
566
568
574

17.
Distribution & First Sale
International framework
The distribution right in the United States
The first sale doctrine in the United States
Limits to the first sale doctrine in a digital world
Rental rights and lending rights
The “droit de suite” and resale royalties

609
609
610
616
629
639
640

18.
Public Performance, Display & Transmission
The international framework for performance, display and transmission rights
Performance and display in the United States
The display right
The performance right
Transmission rights
The “Homestyle” and other exceptions to the public performance right
Cable & satellite licenses

643
643
645
645
647
650
665
666

6

19.
Some Issues at the Intersection of Copyright and Contracts
Sale versus license
Copyright misuse

667
667
675

20.
Secondary Liability for Copyright Infringement
International framework
Secondary liability for copyright infringement in the United States
Liability of device manufacturers and service providers
Significant post-Grokster secondary liability cases
Tertiary liability?

690
690
690
694
700
727

21.
Internet Safe Harbors From Claims of Copyright Infringement
732
The Digital Millennium Copyright Act and the origins of the Section 512 Safe Harbors 732
The Section 512 Safe Harbors
735
Extended commentary on Section 512(i)(A) and what it means to reasonably implement a
repeat infringer policy
739
Section 512(c) “storage at the direction of a user”
750
Designating an agent to receive notifications of claimed infringement
757
What activities are at the direction of the user for the purposes of Section 512(c)?
758
Liability for misrepresentation under 512(f)
762
European Union Internet safe harbors
773
22.
Digital Rights Management and Copyright Management Information
The circumvention of technological protection measures— International
The Circumvention of technological protection measures—United States
Copyright management information

780
780
780
799

23.
Volitional Conduct
New technologies expose latent ambiguities in copyright law
The emergence of volitional conduct

816
816
817

24.
The Copyright Implications of Linking and Embedding on the Internet 833
The Server Test
833
Embedding and licensing
846
Embedding and fair use
850
Linking in the European Union
855
Ancillary copyright in the European Union
866
25.
Remedies for Copyright Infringement
The international framework on remedies for copyright infringement
Remedies for copyright infringement in the United States
Actual damages and undue profits
Injunctions
Statutory damages
Attorney’s fees
7

872
872
872
873
874
875
884

The significance of copyright formalities in copyright litigation

888

26.
Procedural Issues in Copyright Litigation
Standing
Registration and jurisdiction
Choice of law
Class actions
Statute of limitations
Sovereign immunity
Copyright and the preemption of state law causes of action

895
895
908
914
914
915
925
930

8

EXTENDED READINGS ON COPYRIGHT
Complete Table of Contents
1.
Introduction to Copyright Law
An overview of copyright
The historical development of copyright law

20
20
21

Monopoly and censorship as a response to the printing press
The First Copyright Act: The Statute of Anne
The Battle of the Booksellers, or the Question of Literary Property
Millar v Taylor 98 Eng. Rep. 201 (K.B. 1769)
Donaldson v. Becket (1774) 1 Eng. Rep. 837
The Battle of the Booksellers 2.0, or the Question of Literary Property in United States
Wheaton v. Peters, 33 U.S. 591 (1834)

The expansion of copyright rights and subject matter
Jurisprudential changes
The “why” of copyright law
Utilitarian versus natural rights perspectives
Is copyright property?

21
22
23
24
24
25
26

30
31
31

31
34

Key economic concepts in copyright law

35

The standard model
Copyright and Creativity: Evidence from Italian Operas
Less money, more music?
Sequential innovation

Copyright’s international framework

Why and to what extent is the law of intellectual property international?
Copyright’s International Framework

The harmonization of copyright in the European Union
A quick look at the rights of the copyright owner

2.
Copyright Subject Matter and Questions of Creativity, Originality, and
Intellectual Creation
The significance of creativity, originality, and authorship
International Context
Creativity, originality and copyright subject matter in the United States
Pre-Feist
Burrow-Giles Lithographic Co. v. Sarony, 111 US 53 (1884)
Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903)
Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir.1951)
Feist
Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)
The Monkey Selfie and Computer Generated Works
Originality and Derivative Works
L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976)

35
37
37
38

38

38
39

40
42

45
45
45
47
47
48
52
56
59
60
73
73
74

3.
The Exclusion of Facts, Ideas, Functions, and Processes from Copyright
Protection
80
Introduction
80
International context
80
9

The idea-expression distinction and levels of generality

81

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

82

Illustrations of the idea-expression distinction at work
The exclusion of facts, ideas, functions, and processes

Baker v. Selden, 101 US 99 (1880)
Rationales for the idea-expression distinction
Rationales for the Exclusion of Functionality from Copyright Protection
Section 102(b) of the Copyright Act
Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir. 2015)

Merger and scènes à faire

The Merger Doctrine
Scènes à Faire
Lexmark International, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004)

The law itself is not copyrightable

87
88

88
95
95
97
99

108

108
110
111

121

Georgia v. Public.Resource.Org, Inc. 140 S.Ct. 1498 (2020)
122
American Society for Testing & Materials v. Pub.Resource.Org, Inc., 896 F.3d 437 (D.C. Cir. 2018)132

Other exclusions from copyright protection

134

Words, titles, and short phrases
Taxonomies

134
135

4.
The Historical Development of the Concepts of Reproduction, Adaptation,
and Fair Use
137
Reproduction and adaptation—International
137
Berne Convention
The Information Society Directive

Reproduction, adaptation, and fair use—United States
The historical context of the reproduction right
Gyles v. Wilcox (1740) 26 ER 489
Folsom v. Marsh, 9 F. Cas. 342, 349 (C.C.D. Mass. 1841) (No. 4901)

137
138

138
139

140
143

Reproduction in the modern era

149

5.
The Reproduction Right
The meaning of reproduction
Different tests and approaches

158
158
160

White-Smith Music Publishing Co. v. Apollo Co 209 U.S. 1 (1908)
Kalem Co. v. Harper Brothers, 222 U.S. 55 (1911)

Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)
The extrinsic/intrinsic test for infringement of the reproduction right
Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018)
Skidmore v. Zeppelin 952 F.3d 1051 (9th Cir. 2020) (En Banc)

The confusing role of similarity in copyright infringement

Probative similarity versus substantial similarity
There is no simple relationship between probative and substantial similarity
The Demise of the Inverse Ratio Rule
Skidmore v. Zeppelin 952 F.3d 1051 (9th Cir. 2020) (En Banc)

The ordinary observer test(s)

Problems with the ordinary observer test

149
154

161
167
167
181

190

190
191
193
194

197

198

“Total concept and feel”

Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003)

10

199

200

The abstraction, filtration, and comparison test

210

6.
The right to prepare a derivative work based upon the copyrighted work 212
Legislative history
212
Earlier Copyright Acts
The Copyright Act of 1976
Limiting principles

212
212
213

Illustrative cases

214

The Harry Potter Lexicon Case
Warner Brothers Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008)
Castle Rock Entertainment v. Carol Publishing Group, Inc., 150 F.3d 132 (2d Cir. 1998)
Penguin Random House LLC v. Colting, 270 F. Supp. 3d 736 (S.D.N.Y. 2017)

The scope of copyright in derivative works

Keeling v. Hars, 809 F. 3d 43 (2d Cir. 2015)

214
214
219
220

225

226

7.
An Overview of Copyright Limitations and Exceptions
How to think about copyright limitations and exceptions

233
233

Copyright limitations and exceptions required by international agreements
Significant limitations and exceptions to copyright in the United States

234
234

International constraints on copyright limitations and exceptions

236

“True limitations and exceptions” versus “inherent limitations”
Statutory licenses
Codifying inherent limitations
True limitations and exceptions
Where does fair use fit in?

The Three Step Test
World Trade Organization Panel Decision re: US – Section 110(5) (DS160)
How Restrictive is the Three-Step Test?

233
234
234
234
235
236
236
237

8.
Expressive Fair Use—Transformative Use
Campbell v. Acuff-Rose and the modern era of fair use

239
239

The significance of Campbell v. Acuff-Rose

253

The Sony “Betamax” case
Harper & Row
Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994)
1. Returning fair use to its common law origins
2. A positive vision of fair use centered on transformative use
3. The end of “market failure”
4. Unwinding the presumption against commercial fair use

The interrelated nature of the fair use factors

Mattel Inc. v. Walking Mountain Products, 353 F.3d 792 (9th Cir. 2003)
Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270 (11th Cir. 2001)

Transformative use without transformative purpose?

Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013)
Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, (2d Cir. Mar. 26, 2021)

Transformative use in Google v Oracle

239
239
240
254
256
258
261

263

264
266

268

268
272

294

Google LLC. v. Oracle America, Inc., 593 U.S. __ (April 5, 2021)
295
Is Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith still good law after Google v
Oracle?
296

11

9.
Expressive Fair Use—Untransformative uses
Untransformative copying and new markets

299
299

Providing access to the print-disabled

310

Sony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984)
American Geophysical Union v. Texaco Inc., 60 F. 3d 913 (2d Cir. 1994)
A & M Records, Inc. v. Napster, Inc., 239 F. 3d 1004 (9th Cir. 2001)
Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014)

Educational fair uses

299
303
304
310

314

Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991)
315
Princeton University Press v. Michigan Document Services, Inc., 99 F.3d 1381, 1383 (6th Cir.
1996) (en banc)
315
The GSU Copyright Case
315
Cambridge University Press v. Albert, 906 F.3d 1290 (11th Cir. 2018)
316

10.
Non-Expressive Use As Fair Use
Non-expressive use

325
325

Reverse Engineering
Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)
Anti-plagiarism software
A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009)
Text Data Mining & Search Engine Cases
The image search cases: Kelly and Perfect 10
Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014)
Authors Guild v. Google, Inc., 804 F. 3d 202 (2d Cir. 2015)

325
325
331
331
340
340
341
351

The relationship between transformative use and non-expressive use

370

Text data mining in the European Union

372

11.
Copyright subject matter and the boundaries of the work
Locating the threshold of copyrightability

376
376

Matthew Sag, The New Legal Landscape for Text Mining and Machine Learning, 66 Journal of the
Copyright Society of the U.S.A. 291–367 (2019)
370

Categories of work recognized by the Copyright Act.
Originality
Fixation

Boundary problems with copyrighted works
The quantum theory of copyright and the supposed problem of disappearing works
Garcia v. Google, Inc., 786 F. 3d 733 (9th Circuit 2015) (en banc)
16 Casa Duse, LLC v. Merkin, 791 F. 3d 247 (2nd Cir. 2015)
Addition thoughts on the quantum theory of copyright
A thought experiment: serial fixation by a sole author
Thought experiments on the disappearance of subworks in joint works

The problem of temporarily contingent works
Emergent and hyper-textual works
Copyrightable Characters (and Musical Hooks and Riffs)?

Tests of the “copyrightability” of characters
Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496 (7th Cir. 2014)

12.

Ownership, Authorship and Transfer

12

376
377
378

379
382

382
393
398
399
402

406
407
407

409
410

416

Initial ownership of copyright interests: International framework
Initial ownership of copyright interests under United States copyright law

416
416

Ownership of the physical embodiment of the work has no bearing on copyright ownership 416
Pope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.)
416
Authorship and ownership are inextricably entwined
417

Coauthors are joint owners of the work

418

Who qualifies as a joint author?
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)
Joint works and derivative works
Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989)

Ownership of employee works and commissioned works
Who is an employee?
Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)
What is within the scope of employment?

Non-employee works made for hire
Transfer of copyright interests

Requirements for transfer
Failed transfers and implied licenses
Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990)

Fractured ownership – copyright divisibility

Gardner v. Nike 279 F.3d 774, 780 (9th Cir. 2002)

418
419
427
427

437

438
438
439

439
440

440
441
441

442

442

United States rules on the termination of transfers

447

13.
Moral Rights
What are moral rights?
The international legal framework for moral rights protection
Moral rights in the United States outside the Copyright Act

458
458
458
459

Post-1978 Grants
Pre-1978 Grants
Terminated derivatives
Stewart v. Abend 495 U.S. 207 (1990)

The patchwork approach
The Dastar decision and its aftermath
Dastar v. Twentieth Century Fox 539 U.S. 23 (2003)
Defined Space, Inc. v. Lakeshore East, LLC 797 F.Supp.2d 896 (N.D. Ill. 2011)

447
448
449
449

459
460
460
467

Moral rights in the United States under VARA

470

14.
Formalities and Duration
International context—the Berne Convention prohibition on formalities
The significance of formalities in the United States

499
499
500

Notice
Registration & deposit
What is publication?
Estate of Martin Luther King v. CBS, INC., 194 F. 3d 1211 (11th Cir. 1999)
The effect of publication of derivative works

500
501
501
501
512

The rights of attribution and integrity and their limits
The duration rights under VARA
A case study of VARA in action
Cohen v. G&M Realty LP, 320 F.Supp.3d 421 (EDNY 2018) (February 12, 2018)

13

476
477
478
478

Copyright duration
International norms and agreements concerning copyright duration
The Berne Formula: life of the author plus 50 years
Beyond Berne

512
513
513
514

Copyright duration in the United States

514

The constitutionality and wisdom of copyright term extension

519

Overview
Complexity
Copyright Duration for unpublished works
Special rules apply to sound recordings
Eldred v. Ashcroft, 537 U.S. 186 (2003)
Golan v. Holder, 565 U.S. 302 (2012)

514
515
516
517
520
520

Orphan works

529

The effect of long copyright terms on the availability of older works

536

15.
Copyright and Industrial Design
Different approaches to functional art

538
538

Protecting industrial designs and other PGS works through copyright

540

Does the fair use doctrine justify the use of orphan works?
Legislative responses to the orphan works problem in the European Union

Design Patents in the United States

PGS works
Useful Articles and Conceptual Severability
Mazer v. Stein, 347 U.S. 201 (1954)
Distinguishing Between Useful and Useless Articles

530
533

539
540
540
540
543

What is “conceptual separability” after Star Athletica v. Varsity Brands?

544

Before Star Athletica
Star Athletica LLC v. Varsity Brands Inc. 137 S.Ct. 1002 (2017)
Did Star Athletica change the law?

544
545
558

Star Athletica at the Copyright Office

559

Colosseum Flatware Artwork
Kitchen Helper Children’s Stool
Yeezy Boost

559
560
561

16.
Copyright in Computer Software
Copyright in computer programs under Berne and TRIPs
An overview of copyright protection for computer software in the United States
The history of software copyright litigation in the United States
Peter S. Menell, API Copyrightability Bleak House: Unraveling and Repairing the Oracle v. Google
Jurisdictional Mess, 31 Berkeley Technology Law Journal, 1515 (2016)

The Oracle v. Google Cases

The Federal Circuit decision on copyrightability
The new jury trial and the 2018 Federal Circuit decision
The Supreme Court’s decision in Google Inc. v. Oracle America, Inc.
Google Inc. v. Oracle America, Inc. (Supreme Court 2021)

17.
Distribution & First Sale
International framework

566
566
566
568
568

574

574
575
577
577

609
609

14

The distribution right in the United States

610

Distribution by digital transmission?
Distribution versus “Making Available”
Extended Discussion: The Copyright Office’s 2016 Making Available Report

The first sale doctrine in the United States

Bobbs-Merrill Co. v. Straus 210 U.S. 339 (1908)
Statutory recognition of distribution right and first sale doctrine
Copyright Exhaustion and Parallel Importation
Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013)

Limits to the first sale doctrine in a digital world

Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018)
Digital Exhaustion in the European Union

Rental rights and lending rights

Rental Rights in the United States
Library Lending, Printed Books versus eBooks
Public Lending Rights in Other Jurisdictions

The “droit de suite” and resale royalties

Close v. Sotheby’s 894 F.3d 1061 (9th Cir. 2018)

18.
Public Performance, Display & Transmission
The international framework for performance, display and transmission rights
Performance and display in the United States
The display right
The performance right
Performance rights for sound recordings and musical works are different
Kristelia A. García, Facilitating Competition by Remedial Regulation, 31 Berkeley Technology Law
Journal, 183, 192–93 (2016)
The Digital Performance Right in Sound Recordings Act
Performance Rights Organizations (PROs)

Transmission rights

Transmission and public performance under the 1909 Act
Public Performance and the “Transmit Clause” Under the 1976 Act
Cablevision
American Broadcasting Companies v. Aereo, Inc. 134 S.Ct. 2498 (2014)

610
612
613

616

616
619
620
620

629

629
639

639

639
640
640

640

640

643
643
645
645
647
647
647
648
649

650

650
651
652
653

The “Homestyle” and other exceptions to the public performance right
Cable & satellite licenses

665
666

19.
Some Issues at the Intersection of Copyright and Contracts
Sale versus license

667
667

Sale versus License: The Second Circuit’s Economic Realities Approach
Krause v. Titleserv, Inc., 402 F. 3d 119 (2d. Cir 2005)
Sale versus License: The Ninth Circuit’s Vernor-MDY framework
Guy A. Rub, Against Copyright Customization

669
669
673
674

Copyright misuse

Apple Inc. v. Psystar Corp., 658 F.3d 1150 (9th Cir. 2011)
Omega SA v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir. 2015)

20.
Secondary Liability for Copyright Infringement
International framework
15

675

675
681

690
690

Secondary liability for copyright infringement in the United States
Justifications for secondary liability
Statutory Basis
Types of secondary liability
Shapiro, Bernstein & Co. v. H. L. Green Co., 316 F.2d 304 (2nd Cir. 1963)
Gershwin Pub. Corp. v. Columbia Artist Management, Inc., 443 F.2d 1159 (2d Cir. 1971)

Liability of device manufacturers and service providers

The Sony Safe Harbor
Sony Corporation of America v. Universal City Studios, Inc., 464 U.S. 417 (1984)
Napster and Grokster
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005)

690
690
690
691
691
692

694

694
694
698
699

Significant post-Grokster secondary liability cases

700

Tertiary liability?

727

Perfect 10, Inc. v. Visa International Service Association, 494 F.3d 788 (9th Cir. 2007)
700
Secondary liability for Internet Service Providers
713
BMG Rights Management (US) LLC v. Cox Communications, Inc., 881 F.3d 293 (4th Cir. 2018) 713
Contributory Infringement and “simple measures”
719
Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017)
719
Cobbler Nevada, LLC v. Gonzales, 901 F. 3d 1142 (9th Cir. 2018)
721
UMG Recordings, Inc. v. Shelter Capital Partners, 718 F.3d 1006, (9th Cir. 2013)

728

21.
Internet Safe Harbors From Claims of Copyright Infringement
732
The Digital Millennium Copyright Act and the origins of the Section 512 Safe Harbors 732
Matthew Sag, Internet Safe Harbors and the Transformation of Copyright Law

The Section 512 Safe Harbors

732

735

Overview
735
Service Provider
735
Conditions for Eligibility–In General
736
Conditions for eligibility–repeat infringer policies
736
A case study in how not to implement a repeat infringer policy: BMG Rights Management v.
Cox Communications.
737

Extended commentary on Section 512(i)(A) and what it means to reasonably implement a
repeat infringer policy
739
What counts as a repeat infringer policy under Section 512(i)(A)
What does it mean to have “reasonably implemented” a repeat infringer policy?

739
748

Section 512(c) “storage at the direction of a user”

750

Designating an agent to receive notifications of claimed infringement
What activities are at the direction of the user for the purposes of Section 512(c)?

757
758

Mavrix Photographs, LLC v. Livejournal, Inc., 873 F.3d 1045 (9th Cir. 2017)

758

What counts as knowledge of infringement under the DMCA safe harbors?
Viacom International, Inc. v. YouTube, Inc., 676 F. 3d 19 (2d Cir. 2012)
Actual knowledge and “red flag” knowledge
Willful blindness
Control and Benefit: § 512(c)(1)(B)
The status of pre-1972 sound recordings under the DMCA.

Liability for misrepresentation under 512(f)

The case of the dancing baby
Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2015)

European Union Internet safe harbors

The E-Commerce Directive & the Information Society Directive

16

750
751
751
753
754
757

762

763
764

773

773

Digital Single Market Directive

775

22.
Digital Rights Management and Copyright Management Information
The circumvention of technological protection measures— International
The Circumvention of technological protection measures—United States

780
780
780

An overview of the DMCA
DMCA exceptions and limitations
Administrative Exemptions
Judicial interpretation of the anti-circumvention provisions
MDY Industries, LLC v. Blizzard Entertainment, Inc., 629 F. 3d 928 (9th Cir. 2010)

780
782
783
783
783

Copyright management information

Leveyfilm, Inc. v. Fox Sports Interactive Media, 999 F. Supp. 2d 1098 (ND Il. 2014)
Stevens v. Corelogic, Inc., 899 F. 3d 666 (9th Cir. 2018)
Mango v. BuzzFeed, Inc., 970 F. 3d 167 (2nd Cir. 2020)
Notes on the interpretation of Section 1202

23.
Volitional Conduct
New technologies expose latent ambiguities in copyright law
The emergence of volitional conduct

Netcom
CoStar
Cablevision
Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008)
Fox Broadcast Corporation, Inc. v. Dish Network L.L.C., 747 F.3d 1060 (9th Cir. 2013)
Volition as proximate cause?
Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017)

799

800
805
811
814

816
816
817

818
820
822
822
827
829
830

24.
The Copyright Implications of Linking and Embedding on the Internet 833
The Server Test
833
Origins of the server test
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)
Does the server test apply to embedded content?
Goldman v. Breitbart News Network, LLC, 302 F.Supp.3d 585 (SDNY 2018)

Embedding and licensing

Sinclair v. Ziff Davis, LLC, 454 F. Supp. 3d 342 (S.D.N.Y. 2020)

833
833
836
837

846

846

Embedding and fair use

850

Linking in the European Union

855

Boesen v. United Sports Publications, Ltd., (E.D.N.Y. Nov. 2, 2020) (unreported)
Svensson v. Retriever Sverige AB, Case C 466/12 (13 February 2014)
GS Media BV v. Sanoma Media Netherlands BV and Others (Case C-160/15) CJEU (2015)
VG Bild-Kunst (C-392/19, 9 March 2021)

Ancillary copyright in the European Union

850
855
856
863

866

Article 15 of the Digital Single Market Directive (Ancillary Copyright)

867

25.
Remedies for Copyright Infringement
The international framework on remedies for copyright infringement
Remedies for copyright infringement in the United States
Actual damages and undue profits

872
872
872
873

17

Injunctions

874

The effect of eBay v. MercExchange

874

Statutory damages

875

Who should decide on the amount of statutory damages?
Feltner v. Columbia Pictures Television, Inc., 523 US 340 (1998)
Other issues in calculating statutory damages
Friedman v. Live Nation Merchandise, Inc., 833 F. 3d 1180 (9th Cir. 2016)

Attorney’s fees

Factors vs. discretion
No dual standard for prevailing plaintiffs and defendants
Special considerations for prevailing defendants
Who is the “prevailing party” when a case is dismissed?
Other questions about prevailing party
Costs

The significance of copyright formalities in copyright litigation
Remedies and attorney’s fees depend on timely registration
When does infringement commence?
Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008)

26.
Procedural Issues in Copyright Litigation
Standing
John Wiley & Sons, Inc. v. DRK Photo, 882 F.3d 394 (2d Cir. 2018)

Registration and jurisdiction

Registration vs. filing of a registration application
Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019)
Different rules for some foreign works

876
876
879
879

884

884
885
886
886
887
887

888

888
891
891

895
895
895

908

908
908
914

Choice of law
Class actions
Statute of limitations

914
914
915

Sovereign immunity

925

Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014)

915

The theory behind state sovereign immunity
925
Injunctive relief against state officials
926
Cambridge University Press v. Becker, 863 F. Supp. 2d 1190 (N.D. Ga. 2012)
926
The Supreme Court’s decision in Allen v. Cooper and the future of state sovereign immunity in
copyright
929

Copyright and the preemption of state law causes of action
Maloney v. T3Media, Inc., 853 F. 3d 1004 (9th Cir. 2017)

18

930

930

19

1. INTRODUCTION TO COPYRIGHT LAW
An overview of copyright
The subject of copyright law is human creativity. Like its subject matter, copyright law is
fascinating, complicated, and contested. Copyright law as we know it today began over 300
years ago with the enactment of the Statute of Anne in England in 1710. The Statute of
Anne was a delayed response to the disruptive technology of the printing press that had
swept across Europe in late 15th and 16th Centuries. Copyright has continued to respond to
technological and social change ever since.
The next few paragraphs sketch out a very basic overview of copyright as a preview of the
material that lies ahead. The aim of this overview is to describe the law as it is now in the
United States, and to gloss over important questions of history and alternative
interpretations of the law—these will come later.
Authors & Works. Copyright is a set of exclusive rights that belong, initially at least, to the
author or authors of “a work” such as novel, a movie, or a piece of music. Copyright begins
when the work is created and typically lasts for the life of the author plus 50 or 70 years.
Copyright protects a wide variety of cultural objects, including books, drawings, paintings,
sculpture, music, and movies. More recently that list has expanded to include computer
software and architecture.
Rights. Broadly speaking, the copyright owner has the exclusive right to reproduce the work,
to make adaptations based on the work that are reasonably close to the original, to distribute
the work, and to communicate the work to the public through performance and display.
Rights in relation to distribution and display can seem very broad, but in practice they are
quite narrow because they only apply to any given copy of a work up until the first sale of
that copy.
Copyright rights are broad, but they are not as broad as the equivalent rights in patent law.
Patent owners have the exclusive right to “make, use, or sell” the patented invention. The
concepts of “make” and “sell” have their analogs in copyright law, but there is nothing so
broad as a right to “use” the copyrighted work. This is significant: you don’t need permission
to read a book or listen to music on a compact disc, you don’t need permission to lend the
book or the disc to a friend, or to tell people about the things you have learned from the
book or your reaction to the music.
Expression. Even though copyright law gives the author the exclusive right to make
reproductions of her works, that right only goes so far: Copyright does not protect every
aspect work, it only protects original expression.
Copyright does not protect facts, ideas or functional product features. To illustrate, I would
infringe the copyright in Martha Stewart’s cookbook if I copied the entire work and made it
available for free on the Internet. However, I could follow one of the recipes in that book to
make a cake, and I could sell that cake for profit, all with no duty to account to Martha
Stewart. Indeed, I could reduce Martha Stewart’s cake recipe down to a simple set of

20

instructions and then describe those instructions in my own words and compete with Martha
Stewart in the market for cake recipes.1
Rights can fragment and overlap. Copyright rights can be fragmented and overlapping.
Suppose that A writes a poem. B adapts the poem into song lyrics. C adds an original
musical composition. D performs the song and it is recorded by E to create a sound
recording. Further suppose that F then plays that recording in public, and G records that
performance along with images of the reaction of the audience to create an audiovisual work.
If Harriet were to copy G’s movie without obtaining permission from anyone, she might be
infringing the rights of A, B, C, E and G. It is possible that D and E would be joint authors
of the sound recording. Also, some jurisdictions outside the United States would also
recognize that D has an intrinsic right to the performance such that D’s permission would
be required for certain downstream uses whether she is an author of the sound recording or
not.
Limitations & Exceptions. The rights of copyright owners are subject to a number of
important limitations. The copyright laws of most countries contain a hodgepodge of
limitations and exceptions that reflect the influence of particular interest groups at particular
times. Some copyright limitations are required to meet its overall purpose of encouraging the
diffusion of knowledge, promoting authorship and enabling creativity; some are required
because without them copyright law might unduly constrain freedom of expression; and
some limitations are required because without them copyright would confer overly broad
exclusive rights in related and downstream activities. But we must also concede that some
copyright limitations or exceptions are really just a result of special interest pleading and
can’t be fully justified as fulfilling the essential purpose of copyright or maximizing general
welfare. The copyright system would be self-defeating without some limits on the broad
rights of copyright owners, but exactly what limits are required, how should they be
structured, and who is best placed to make these decisions are all highly controversial
questions in modern copyright law.

The historical development of copyright law
Monopoly and censorship as a response to the printing press
Copyright law is constantly evolving. Prior to Gutenberg’s invention of the movable type
printing press in the early 15th century, the predominant technology of copying was the
monastic 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
of printing press technology throughout Europe catalyzed enormous social and political
changes. In the early days of this new technological era, regulation of the printing press
focused on the need to maintain religious and political orthodoxy. In England, this need was
met by a licensing system that ensured that only the Stationers’ Guild was permitted to print
books. In turn, the Guild ensured that only approved books were printed. The Licensing Act
1 See Publications Int’l, Ltd. v. Meredith Corp., 88 F.3d 473, 481 (7th Cir. 1996) (explaining that recipe books

can show originality and obtain copyright protection if “the authors lace their directions for producing dishes
with musings about the spiritual nature of cooking or reminiscences they associate with the wafting odors of
certain dishes in various stages of preparation.”)

21

of 1662 explained its objective in terms of guarding against the publication of “heretical
schismatical blasphemous seditious and treasonable” books.
By convention, the members of the Stationers Guild agreed that the first member to enter a
literary title in the Stationers’ Register would have exclusive and perpetual rights to publish it.
This practice explains some of the terminology of copyright law. “The registered title and the
rights associated with it were known as the “copy” of the publication, and the acquisition of
a copy (or the “right of copy”) was limited to guild members.”2 The Stationers Guild was
essentially a cartel of London publishers and booksellers. Within this group it was common
to view the ‘copy’ as a form of property, it was treated as an exclusive right and was a thing
to be owned, traded, and used as collateral for loans.3 But it is important to understand that
although the booksellers thought of the “copy” as their property, this concept of property
was very different from the idea of “literary property”—a term that came into vogue only
much later—and our modern concept of copyright.
The Licensing Acts lasted until almost the end 17th century in England but they were
eventually allowed to expire, thus bringing the de jure printing monopoly of the Stationers
Guild to an end. The demise of the Licensing Acts has been attributed to a growing distaste
for pre-publication censorship, and to dissatisfaction with the inflated prices and
monopolistic practices of the Stationers Guild.4
The transition from monopoly and censorship to statutory copyright did not occur in a
vacuum. England in the 17th Century witnessed regicide, civil war, dictatorship, the
restoration of the monarchy, and a “Glorious Revolution” which cemented Protestantism as
the official state religion. Underlying most of these events was a power struggle between the
crown and parliament in which parliament eventually prevailed.

The First Copyright Act: The Statute of Anne
In 1710, the British Parliament passed “An Act for the Encouragement of Learning, by
Vesting the Copies of Printed Books in the Authors, or Purchasers, of such Copies, during
the Times therein mentioned”, or as it is usually simply called, The Statute of Anne.
Historians have debated whether the Statute of Anne should be seen as displacing, regulating,
or merely entrenching the pre-existing monopoly of London booksellers in the seventeenth
century. On the surface, the Statute of Anne was a significant departure from previous
customs of the book trade because it placed control of new works of authorship into the
hands of authors themselves. Also, unlike the Stationers Guild’s monopoly privileges, the
2 Simon Stern, Towards a Pre-History of the Public Domain: Copyright Law and Its Limits in Eighteenth-Century England,

OXFORD LITERATURE HANDBOOK (Draft on file with the author).

3 John Feather, From Rights in Copies to Copyright: The Recognition of Authors’ Rights in English Law and Practice in the

Sixteenth and Seventeenth Centuries, 10 CARDOZO ARTS AND ENTERTAINMENT LAW JOURNAL 461-62 (1992).

4 See for example, Letter from Locke to Edward Clarke (Jan. 2, 1693), in The Correspondence of John Locke, ed. E.S.

De Beer, 8 vols. (Oxford: Clarendon Press, 1976-1989), 4: 614-15. “[T]he Company of Stationers . . . haveing
got a Patent for all or most of the Ancient Latin Authors (by what right or pretence I know not) claime the text
to be theirs and soe will not suffer [others to supply] fairer and more correct Editions. . . . [Thus] a monopoly is
put into the hands of the company of ignorant and lazy stationers . . . By this monopoly also of these ancient
authors noe body here, that would publish any of them a new with comments or any other advantage can doe it
without the leave of the learned judicious stationers.” As cited in Simon Stern, Towards a Pre-History of the
Public Domain: Copyright Law and Its Limits in Eighteenth-Century England

22

author’s rights under the Statute of Anne were for a limited duration. Books published
before the Statute were granted twenty-one years of protection under the new law. The
authors of books published after the Statute of Anne took effect were entitled to an initial
term of 14 years, renewable for a second term of the same length if the author was still alive
when the first term ended.
Why 14 years and not some other period? Why two terms for that matter? In Authors and
Owners: The Invention of Copyright, Mark Rose, argues that the bifurcated term was an attempt
to bring the new author’s right within the scope of the 1624 Statute of Monopolies. The
Statute of Monopolies limited the powers of the Crown to grant monopolies, but created an
exception relating to any “manner of new manufacture” as long as the monopoly did not
exceed a specified limited term: twenty-one years for extant grants; fourteen years for future
grants.5
The scope of protection under the Statute of Anne was much narrower than modern
copyright. The statute did not explicitly address translations, incomplete copying or the
unauthorized creation of sequels. The Statute of Anne also contained a provision whereby
booksellers who charged “high and unreasonable” prices could be called into account and
potentially fined. The statute did not reach the import of foreign books in languages other
than English.

The Battle of the Booksellers, or the Question of Literary Property
Following the enactment of the Statute of Anne, members of the Stationers’ Guild argued
that, regardless of the limited times referred to in the statute, they held perpetual common
law exclusive printing rights. It is worth noting that members of the Stationers’ Guild never
sought to establish such a common law right in the period between the end of the Licensing
Acts in 1695 and the enactment of the Statute of Anne in 1710.6
In support of this contention, these London booksellers noted that members of the Guild
had a longstanding practice of respecting such claims and would not reprint any text first
claimed by another member. The Guild members based in London came into increasing
competition with provincial and Scottish publishers who failed to respect their comfortable
cartel and the ensuing litigation led to two pivotal cases in the history of copyright, Millar v
Taylor and Donaldson v. Becket.
An important part of the context in which this litigation took place is the difference between
courts of law and courts of equity. In the 18th century, the English common law courts have
jurisdiction to address questions of common-law and could make awards of money damages.
Injunctions on the other hand were the exclusive province of courts of equity. The
booksellers pursued their claims in courts of equity because they preferred the remedy of
preliminary and permanent injunctions. In addition, by avoiding the common law courts
they reduced the risk of facing a serious challenge to the existence of their supposed
common-law right.7
5 See

MARK ROSE, AUTHORS AND OWNERS: THE INVENTION OF COPYRIGHT, 45-47 (1993); Statute of
Monopolies, 1624, 21 Jac., c. 3 (Eng.)
6 Simon Stern, Towards a Pre-History of the Public Domain, supra.
7 Id. “Courts of equity would grant an ex parte injunction that would remain in effect until the defendant

appeared to answer the plaintiff’s charges. If the charges proved valid after both sides had been heard, the

23

Millar v Taylor 98 Eng. Rep. 201 (K.B. 1769)
The argument for perpetual copyright was initially successful. In Millar v. Taylor 98 Eng. Rep.
201 (K.B. 1769) the majority of Court of King’s Bench held that copyright existed as both a
statutory and a common-law right. The majority held that when statutory copyright ended,
the booksellers’ common law copyright assigned from the author would continue, forever.
In this view, the Statute of Anne merely vested copyright owners with additional remedies
over and above those available at common law and in equity. Justice Yates, dissenting,
agreed that authors had a right to control the first publication of their manuscripts, but no
more. Millar died not long after the ruling and it was never appealed.
Not being bound by decisions of the Court of the King’s Bench, the Scottish Court of
Session reached a different position in Hinton v Donaldson (1773, 5 Brn 508)
Donaldson v. Becket (1774) 1 Eng. Rep. 837
This summary relies heavily on Ronan Deazley, Commentary on Donaldson v. Becket (1774), in Primary Sources on Copyright
(1450-1900), eds L. Bently & M. Kretschmer, (2008) (original at www.copyrighthistory.org).

In 1771 a London bookseller and publisher by the name of Thomas Becket sought an
injunction from the court of Chancery to prevent the Scottish bookseller Alexander
Donaldson from printing the The Seasons by the poet James Thomson who had died in 1748.
The rights conferred on The Seasons by the Statute of Anne had long since expired, thus the
basis of the publisher’s claim was a right at common law beyond the mere right of first
publication.
Donaldson v. Becket has confused generations of judges, commentators and students because
the procedural issues are somewhat baroque and because the early reports of the case were
entirely inadequate. The case was heard before Lord Chancellor Apsley who considered
himself bound by Millar v. Taylor to grant the plaintiff a perpetual injunction.
Lord Chancellor Apsley’s decree was appealed to House of Lords. The twelve common law
judges of the House of Lords heard the arguments of counsel for both sides and gave their
answers to five questions. The fourth and fifth questions overlap with the first three. The
questions were:
1. Whether, at common law, an author of any book or literary composition, had the
sole right of first printing and publishing the same for sale, and might bring an
action against any person who printed, published, and sold the same, without his
consent?
2. If the author had such right originally, did the law take it away upon his printing
and publishing such book or literary composition, and might any person afterward
reprint and sell, for his own benefit, such book or literary composition, against the
will of the author?
court could grant a permanent injunction. However, a preliminary injunction was usually sufficient for the
plaintiff’s needs and the dispute rarely proceeded any further. This approach proved especially attractive to the
booksellers once they saw that the Chancery court would not ask whether the statutory term of protection had
expired. The equity courts were willing to entertain the hypothetical premise that the plaintiff had a valid claim,
and to proceed from there. Thus by avoiding the common-law courts, the booksellers kept alive their claims
about common-law copyright for more than six decades, using a form of pleading that required them to
presuppose the existence, at common law, of the very right whose dubious status had led them to Chancery in
the first place.”

24

3. If such action would have lain at common law, is it taken away by the Statute of
8th Anne: and is an author, by the said statute, precluded from every remedy except
on the foundation of the said statute, and on the terms and conditions prescribed
thereby?
4. Whether the author of any literary composition, and his assigns, had the sole right
of printing and publishing the same, in perpetuity, by the common law?
5. Whether this right is any way impeached, restrained, or taken away, by the statute
8th Anne?

The traditional interpretation of Donaldson v. Becket, reflected in the U.S. Supreme Court’s
first copyright case, Wheaton v. Peters 33 U.S. 591 (1834), is that “a majority of the judges were
in favor of the common law right of authors [beyond a right of first publication], but that the
same had been taken away by the statute.” However, this traditional view is not correct, nor
was it followed in the United States, as we will see shortly.
The confusion begins with the fact that the votes of the common law judges were
misreported. Ronan Deazley explains this misreporting in detail in his illuminating
Commentary on Donaldson v. Becket. Deazley also shows how the significance of the votes of the
common law judges of the House of Lords is often misunderstood. The House of Lords
consisted of both peers who were common law judges and peers who were not. Although
the full House of Lords (the common law judges and the other peers combined) almost
always followed the opinion of the majority of its common law judges, it was not bound to
do so and in this case it did not. Five peers also spoke to the issue and of these, only one
favored a common law right.
In addition, whereas the judges had answered five distinct questions raised by the case, the
only question put to the peers was whether the perpetual injunction should be overturned.
When the House of Lords voted to reverse the decision below, it did not clearly indicate
whether it was because there was no common law copyright, no common law copyright
beyond a right of first publication, or whether the Statute of Anne abrogated a pre-existing
common law copyright. Looking to the opinions of the peers on the question of common
law copyright yields a tied vote: seven judges and one peer found such a right, but four
judges and four peers and found against it. This tied vote does not mean that the issue was
unresolved, however. There were 84 Lords are listed as in attendance the day the House of
Lords finally voted to reverse the decree, although their individual opinions are unknown.
What matters, however, is that in stating the law of the case in Donaldson v. Becket, Lord
Chancellor Apsley explicitly denied the existence of any common law right, and it was thus
this position that carried the day.

The Battle of the Booksellers 2.0, or the Question of Literary Property in United
States
Wheaton v. Peters was a dispute between an early Supreme Court reporter, Wheaton, and his
successor, Peters. Wheaton had compiled the opinions of the Supreme Court from his
tenure as official reporter along with annotations and summaries of argument into a costly
series of reports. His successor, Peters, produced an abridged version of those same
materials, winnowed down to the opinions themselves. Although Peter’s reports were
inferior in many respects, they were substantially cheaper and thus had a devastating effect
on the market for Wheaton’s reports. In addition to maintaining a claim under statutory
copyright, the plaintiff argued that “an author was entitled, at common law, to a perpetual
25

property in the copy of his works, and in the profits of their publication; and to recover
damages for its injury, by an action on the case, and to the protection of a court of equity.”
Wheaton v. Peters, 33 U.S. 591 (1834)
Mr. Justice McLean delivered the opinion of the Court
Perhaps no topic in England has excited more discussion, among literary and
talented men, than that of the literary property of authors. So engrossing was the
subject, for a long time, as to leave few neutrals, among those who were
distinguished for their learning and ability. At length the question, whether the copy
of a book or literary composition belongs to the author at common law, was brought
before the court of king’s bench, in the great case of Millar v. Taylor, reported in 4
Burr. 2303. This was a case of great expectation; and the four judges, in giving their
opinions, seriatim, exhausted the argument on both sides. Two of the judges, and
Lord Mansfield held, that, by the common law, an author had a literary property in
his works; and they sustained their opinion with very great ability. Mr Justice Yeates,
in an opinion of great length, and with an ability, if equalled, certainly not surpassed,
maintained the opposite ground.
Previous to this case, injunctions had issued out of chancery to prevent the
publication of certain works, at the instance of those who claimed a property in the
copyright, but no decision had been given. And a case had been commenced, at law,
between Tonson and Collins, on the same ground, and was argued with great ability,
more than once, and the court of king’s bench were about to take the opinion of all
the judges, when they discovered that the suit had been brought by collusion, to try
the question, and it was dismissed.
This question was brought before the House of Lords, in the case of Donaldson v.
Beckett and others, reported in 4 Burr. 2408. … It would appear from the points
decided, that a majority of the judges were in favor of the common law right of
authors, but that the same had been taken away by the statute.
The title and preamble of the statute, 8 Anne, ch. 19, is as follows:
“An act for the encouragement of learning by vesting the copies of printed books in
the authors or purchasers of such copies, during the times therein mentioned.”
“Whereas printers, booksellers and other persons, have of late frequently taken the
liberty of printing, reprinting and publishing, or causing to be printed, reprinted and
published, books and other writings without the consent of the authors or
proprietors of such books and writings, to their very great detriment, and too often
to the ruin of them and their families,” &c.

… From the above authorities, and others which might be referred to if time
permitted, the law appears to be well settled in England, that, since the statute of 8
Anne, the literary property of an author in his works can only be asserted under the
statute. And that, notwithstanding the opinion of a majority of the judges in the great
case of Miller v. Taylor was in favor of the common law right before the statute, it is
still considered, in England, as a question by no means free from doubt.
That an author, at common law, has a property in his manuscript, and may obtain
redress against any one who deprives him of it, or by improperly obtaining a copy
26

endeavours to realise a profit by its publication, cannot be doubted; but this is a very
different right from that which asserts a perpetual and exclusive property in the
future publication of the work, after the author shall have published it to the world.
The argument that a literary man is as much entitled to the product of his labour as
any other member of society, cannot be controverted. And the answer is, that he
realises this product by the transfer of his manuscripts, or in the sale of his works,
when first published.
A book is valuable on account of the matter it contains, the ideas it communicates,
the instruction or entertainment it affords. Does the author hold a perpetual
property in these? Is there an implied contract by every purchaser of his book, that
he may realise whatever instruction or entertainment which the reading of it shall
give, but shall not write out or print its contents.
In what respect does the right of an author differ from that of an individual who has
invented a most useful and valuable machine? In the production of this, his mind has
been as intensely engaged, as long, and, perhaps, as usefully to the public, as any
distinguished author in the composition of his book.
The result of their labours may be equally beneficial to society, and in their respective
spheres they may be alike distinguished for mental vigour. Does the common law
give a perpetual right to the author, and withhold it from the inventor? And yet it has
never been pretended that the latter could hold, by the common law, any property in
his invention, after he shall have sold it publicly.
It would seem, therefore, that the existence of a principle may well be doubted,
which operates so unequally. This is not a characteristic of the common law. It is said
to be founded on principles of justice, and that all its rules must conform to sound
reason.
Does not the man who imitates the machine profit as much by the labour of another,
as he who imitates or republishes a book? Can there be a difference between the
types and press with which one is formed, and the instruments used in the
construction of the others?
That every man is entitled to the fruits of his own labour must be admitted; but he
can enjoy them only, except by statutory provision, under the rules of property,
which regulate society, and which define the rights of things in general.
But, if the common law right of authors were shown to exist in England, does the
same right exist, and to the same extent, in this country. … It is insisted, that our
ancestors, when they migrated to this country, brought with them the English
common law, as a part of their heritage.
That this was the case, to a limited extent, is admitted. No one will contend, that the
common law, as it existed in England, has ever been in force in all its provisions, in
any state in this union. It was adopted, so far only as its principles were suited to the
condition of the colonies: and from this circumstance we see, what is common law in
one state, is not so considered in another. The judicial decisions, the usages and
customs of the respective states, must determine, how far the common law has been
introduced and sanctioned in each. … The question respecting the literary property
of authors, was not made a subject of judicial investigation in England until 1760;
27

and no decision was given until the case of Millar v. Taylor was decided in 1769. Long
before this time, the colony of Pennsylvania was settled. What part of the common
law did Penn and his associates bring with them from England?
The literary property of authors, as now asserted, was then unknown in that country.
Laws had been passed, regulating the publication of new works under license. And
the king, as the head of the church and the state, claimed the exclusive right of
publishing the acts of parliament, the book of common prayer, and a few other
books.
No such right at the common law had been recognized in England, when the colony
of Penn was organized. Long afterwards, literary property became a subject of
controversy, but the question was involved in great doubt and perplexity; and a little
more than a century ago, it was decided by the highest judicial court in England, that
the right of authors could not be asserted at common law, but under the statute. The
statute of 8 Anne was passed in 1710.
Can it be contended, that this common law right, so involved in doubt as to divide
the most learned jurists of England, at a period in her history, as much distinguished
by learning and talents as any other; was brought into the wilds of Pennsylvania by
its first adventurers. Was it suited to their condition?
But there is another view still more conclusive.
In the eighth section of the first article of the constitution of the United States it is
declared, that congress shall have power “to promote the progress of science and
useful arts, by securing for limited times, to authors and inventors, the exclusive right
to their respective writings and discoveries.” And in pursuance of the power thus
delegated, congress passed the act of the 30th of May 1790.
This is entitled “an act for the encouragement of learning, by securing the copies of
maps, charts and books, to the authors and proprietors of such copies, during the
times therein mentioned.”
In the first section of this act, it is provided, “that from and after its passage, the
author and authors of any map, chart, book or books, already printed within these
United States, being a citizen, &c. who hath or have not transferred to any other
person the copyright of such map, chart, book or books, &c. shall have the sole right
and liberty of printing, reprinting, publishing and vending such map, book or books,
for fourteen years.”
In behalf of the common law right, an argument has been drawn from the word
secure, which is used in relation to this right, both in the constitution and in the acts
of congress. This word, when used as a verb active, signifies to protect, insure, save,
ascertain, &c.
The counsel for the complainants insist that the term, as used, clearly indicates an
intention, not to originate a right, but to protect one already in existence.
There is no mode by which the meaning affixed to any word or sentence, by a
deliberative body, can be so well ascertained, as by comparing it with the words and
sentences with which it stands connected. By this rule the word secure, as used in the
constitution, could not mean the protection of an acknowledged legal right. It refers
28

to inventors, as well as authors, and it has never been pretended, by any one, either
in this country or in England, that an inventor has a perpetual right, at common law,
to sell the thing invented.
And if the word secure is used in the constitution, in reference to a future right, was
it not so used in the act of congress?
But, it is said, that part of the first section of the act of congress, which has been
quoted, a copyright is not only recognized as existing, but that it may be assigned, as
the rights of the assignee are protected, the same as those of the author.
As before stated, an author has, by the common law, a property in his manuscript;
and there can be no doubt that the rights of an assignee of such manuscript, would
be protected by a court of chancery. This is presumed to be the copyright recognized
in the act, and which was intended to be protected by its provisions. And this
protection was given, as well to books published under such circumstances, as to
manuscript copies.
That congress, in passing the act of 1790, did not legislate in reference to existing
rights, appears clear, from the provision that the author, &c. “shall have the sole
right and liberty of printing,” &c. Now if this exclusive right existed at common law,
and congress were about to adopt legislative provisions for its protection, would they
have used this language? Could they have deemed it necessary to vest a right already
vested. Such a presumption is refuted by the words above quoted, and their force is
not lessened by any other part of the act.
Congress, then, by this act, instead of sanctioning an existing right, as contended for,
created it. This seems to be the clear import of the law, connected with the
circumstances under which it was enacted.
From these considerations it would seem, that if the right of the complainants can be
sustained, it must be sustained under the acts of congress. Such was, probably, the
opinion of the counsel who framed the bill, as the right is asserted under the statutes,
and no particular reference is made to it as existing at common law. The claim, then,
of the complainants, must be examined in reference to the statutes under which it is
asserted.
[At the time, copyright was conditioned on a number of formalities, including
depositing a copy of the work with the Department of State. Justice McLean rejected
Wheaton’s argument that the deposit requirement did not bar copyright protection
under the relevant statute.]
The construction of the acts of congress being settled, in the further investigation of
the case it would become necessary to look into the evidence and ascertain whether
the complainants have not shown a substantial compliance with every legal requisite.
But on reading the evidence we entertain doubts, which induce us to remand the
cause to the circuit court, where the facts can be ascertained by a jury.
And the cause is accordingly remanded to the circuit court, with directions to that
court to order an issue of facts to be examined and tried by a jury, at the bar of said
court, upon this point, viz. whether the said Wheaton as author, or any other person
as proprietor, had complied with the requisites prescribed by the third and fourth
sections of the said act of congress, passed the 31st day of May 1790, in regard to the
29

volumes of Wheaton’s Reports in the said bill mentioned, or in regard to one or
more of them in the following particulars, viz. whether the said Wheaton or
proprietor did, within two months from the date of the recording thereof in the
clerk’s office of the district court, cause a copy of the said record to be published in
one or more of the newspapers printed in the resident states, for the space of four
weeks; and whether the said Wheaton or proprietor after the publishing thereof, did
deliver or cause to be delivered to the secretary of state of the United States, a copy
of the same to be preserved in his office, according to the provisions of the said
third and fourth sections of the said act.
And if the said requisites have not been complied with in regard to all the said
volumes, then the jury to find in particular in regard to what volumes they or either
of them have been so complied with.
It may be proper to remark that the court are unanimously of opinion, that no
reporter has or can have any copyright in the written opinions delivered by this
court; and that the judges thereof cannot confer on any reporter any such right.
Notes and questions
(1) The Supreme Court’s decision in Wheaton v. Peters 33 U.S. 591 (1834) reprised the
common law copyright debate from Millar v. Taylor and Donaldson v. Beckett. The Supreme
Court agreed that the common law carried from England to the colonies that became the
United States recognized a right of first publication, but it rejected the broader claim of
perpetual common law copyright. At 657 the majority declares:
That an author, at common law, has a property in his manuscript, and may obtain
redress against any one who deprives him of it, or by improperly obtaining a copy
endeavours to realise a profit by its publication, cannot be doubted; but this is a very
different right from that which asserts a perpetual and exclusive property in the
future publication of the work, after the author shall have published it to the world.

(2) The final sentence of the majority opinion notes (at 668), almost as an afterthought, that
the court is unanimously of the opinion that “no reporter has or can have any copyright in
the written opinions delivered by this court; and that the judges thereof cannot confer on a
reporter any such right.”
(3) Why does the majority recognize a common law right of first publication, but reject
perpetual copyright?
(4) Does it matter whether copyright existed at common law but was then displaced by
statute, versus never having existed at all?

The expansion of copyright rights and subject matter
The range of things that copyrights protects and the ways in which it protects them have
expanded significantly over the years. New technologies such as photography, player pianos,
the gramophone (and other ways of recording music) the motion picture camera, radio and
television have all had an important influence on the development of copyright.

30

More recently, technologies such as the photocopier and the videocassette recorder and then
later the personal computer significantly destabilized copyright policy because these
inventions placed commercially significant copying technology directly in the hands of large
numbers of consumers for the first time.
The challenge of new technology intensified with digitization and the Internet. Digitization
allows for perfect reproduction such that the millionth copy of an MP3 file sounds just as
good as the first copy. The Internet has connected billions of people together; by and large,
this is regarded as a positive development, but this togetherness has also facilitated copyright
piracy on a massive scale. Determining how copyright law should respond to the challenges
and opportunities of the Internet is one of the fundamental questions underlying almost
every issue in copyright.

Jurisprudential changes
[Placeholder for discussion of how the tests for copyright infringement became more explicit
in the 20th Century and other developments that make modern copyright cases read quite
differently to older ones.]

The “why” of copyright law
Utilitarian versus natural rights perspectives
There are a multitude of theories as to what the true purpose of copyright law should be. At
the risk of oversimplification, it seems fair to characterize the Anglo-American view of
copyright law as utilitarian.
The first copyright statute, the Statute of Anne enacted in England in 1710, begins with the
following rationale:
Whereas printers, booksellers, and other persons have of late frequently taken the
liberty of printing, reprinting, and publishing, or causing to be printed, reprinted,
and published, books and other writings, without the consent of the authors or
proprietors of such books and writings, to their very great detriment, and too often
to the ruin of them and their families …

The purpose of the Statute of Anne is apparent in its title:
An Act for the Encouragement of Learning, by Vesting the Copies of Printed
Books in the Authors, or Purchasers, of such Copies, during the Times therein
mentioned.

This sentiment is also reflected in Article I, Section 8, Clause 8 of the United States
Constitution, which empowers Congress:
To promote the Progress of Science and useful Arts, by securing for limited Times
to Authors and Inventors the exclusive Right to their respective Writings and
Discoveries.

These overlapping sentiments are not a coincidence: the Statute of Anne was the template
for similar copyright laws in the American colonies, the United States itself and numerous

31

other common law jurisdictions. This common heritage is seen in the long title of the U.S.
Copyright Act of 1790, which was almost identical to that of the Statute of Anne:
An Act for the encouragement of learning, by securing the copies of maps, Charts,
And books, to the authors and proprietors of such copies, during the times therein
mentioned.

The U.S. Supreme Court has endorsed a purposive understanding of copyright law on more
than one occasion, although with nuanced differences in emphasis between ends and means.
In Sony Corporation of America v. Universal City Studios, Inc. 464 U.S. 417 (1984), Justice Stevens,
writing for the majority, said (at 429)
The monopoly privileges that Congress may authorize are neither unlimited nor
primarily designed to provide a special private benefit. Rather, the limited grant is a
means by which an important public purpose may be achieved. It is intended to
motivate the creative activity of authors and inventors by the provision of a special
reward, and to allow the public access to the products of their genius after the
limited period of exclusive control has expired.

Or, as Judge Pierre Leval put it in an influential law review article, Toward a Fair Use Standard,
[Copyright is] not an inevitable, divine, or natural right that confers on authors the
absolute ownership of their creations. It is designed rather to stimulate activity and
progress in the arts for the intellectual enrichment of the public.8

Other cases and authorities downplay the need to shape copyright to meet its public purpose
goals, arguing that copyright incentives intrinsically tend toward the public good. In Mazer v.
Stein, 347 U.S. 201 (1954), the Court said (at 219)
… copyright law celebrates the profit motive, recognizing that the incentive to
profit from the exploitation of copyrights will redound to the public benefit by
resulting in the proliferation of knowledge.... The profit motive is the engine that
ensures the progress of science.

In Eldred v. Ashcroft 537 U.S. 186 (2003), Justice Ginsburg used this quote in rejoinder to
Justice Steven’s and Justice Breyer’s arguments concerning the constitutionality of extending
the term of copyright for works that had already been created. She explained (at 212,
footnote 18) that, in her view, public and private ends are not in tension in copyright law, or
at least that “the two ends are not mutually exclusive; copyright law serves public ends by
providing individuals with an incentive to pursue private ones.”
What should we make of natural rights and other non-utilitarian theories of copyright law?
The short answer is that they have their place, but it is difficult to accept them as the primary
justification for the institution of copyright law. Where it is clear that a non-utilitarian theory
of copyright is welfare reducing, privileging the non-utilitarian position amounts to little
more than expressing a preference for the utility of one class of persons over another. As
Glynn Lunney notes in Copyright’s Excess: Money and Music in the US Recording Industry (2018)
(at 57),
“I like authors better” may be perfectly fine as a basis for deciding who receives an
invitation to your next cocktail party; it is not a satisfactory basis for a system of
legal rights that binds author and non-authors alike.
8 Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1107 (1990)

32

The European approach to copyright does not ignore utilitarian benefits, but its
foundational concern is with recognition of the rights of the author. This natural rights view
of copyright explains the European enthusiasm for “moral rights” that protect the integrity
of a work as distinct from the traditional economic rights. It also explains another key
difference between European influenced copyright systems and those in the AngloAmerican tradition, the treatment of the rights of performers. Both of these topics are
addressed in later chapters. Of course, many aspects of European copyright law are more
consistent with a utilitarian conception of copyright; just as a few aspects of copyright in
common law jurisdictions may be better explained from a natural rights perspective.
Natural rights intuitions about copyright play an important role in constructing the basic
concepts of copyright law. Non-economic theories are essential to developing a coherent
body of law with reasonably determinate parameters, which is another way of saying low
information costs. The problem with a purely instrumental account of copyright law is that it
sets a goal, but tells us very little about the means to realize that goal. As Professor
Shyamkrishna Balganesh, explains in The Obligatory Structure Of Copyright Law: Unbundling The
Wrong Of Copying:
To the instrumental account, the precise structure of copyright’s entitlement--that is,
its “rights”--matters very little. The inducement for creativity that it seeks to provide
could thus be meaningfully achieved in principle through the grant of a governmentsponsored subsidy or reward, a tax break, or perhaps more realistically, a
compensation (or compulsory licensing) regime. The instrumental account thus
lacks explanatory depth, in that it does not extend beyond the surface of copyright’s
operation to explain why it operates in the precise way that it does …9

Without some intrinsic idea of what copyright is supposed to be about, we face too many
choices about what the law should be to be able to make any rational choices at all. The
mandate to maximize the public good can’t give us a predictable definition of authorship by
itself, nor does it dictate where the line between ideas and expression should be drawn in the
abstract. Answering these questions from a strictly utilitarian position would require
knowledge of all of the other variables in the system, such as the duration of copyright, the
scope of rights, etc.10 Copyright law is built around a few key legal concepts, concepts such
as originality and the idea-expression distinction that will be discussed at length elsewhere in
these materials. These concepts are not inconsistent with the instrumental account of
copyright law, but they are more than merely levers of instrumentalism. As Balganesh further
explains:
The instrumental account thus answers the question, “why copyright?” Yet in
operationalizing the institution and applying it to individual instances, a
decisionmaker need not make reference to the overall instrumental goals of the
institution, but can instead adopt an analysis using the granular devices and concepts
on which the liability regime relies--all of which revolve around the idea of
copying.11
9 Shyamkrishna Balganesh, The Obligatory Structure Of Copyright Law: Unbundling The Wrong Of Copying, 125 HARV.

L. REV. 1664, 1687 (2012).

10 See also Matthew Sag, Beyond Abstraction, The Law And Economics Of Copyright Scope And Doctrinal Efficiency, 81

TULANE L. REV., 187 (2006).
11 Id. at 1688-1689.

33

Is copyright property?
The debate about whether copyright and other forms of “intellectual property” (i.e., patents,
trademarks, trade secrets, etc.) are really property tends to proceed along the following lines.
Those who proclaim that copyright is property observe that as a matter of definition
exclusive and tradable rights are generally thought of as property. Those who resist the
property label note that copyright and other IP rights are limited in scope and duration and
subject to a number of important public interest caveats.
Pro-property advocates respond with fascinating descriptions of the law relating to nuisance,
easements, riparian rights, and ancient Roman concepts holding the oceans and navigable
waterways in public trust. The implication being that, for every conceivable feature of
copyright that supposedly distinguishes it from property, there is in fact a property law
antecedent.
Those who resist the property label respond by saying something along the lines of “but that
is not what you mean when you say copyright is property. You mean that as a normative
matter, the rights of the copyright owner should come as close as possible to absolute
control that is unyielding and perpetual.” Both sides then declare victory in the debate and
revert to their initial positions.
Whether one chooses to call copyright “property”, “regulation”, or something else entirely, it
is worth understanding how copyright is different to rights in relation to tangible things.12 A
property right in Blackacre confers broad rights of exclusion on the owner. As a corollary,
the property owner’s right to exclude necessarily implies a duty to refrain from trespass.
Copyright has a similar right/duty correlation. The copyright owner’s exclusive rights with
respect to her original expression can be reframed in terms of a duty not to copy original
expression.
In real property, the right to exclude makes possible an undefined set of use privileges in
relation to Blackacre. These privileges are protected through a right to exclude because the
underlying resource is rivalrous. If I am to make full use of my parking space, it is essential
that you not be allowed to park your car there. Here we see the difference between copyright
and real property. The exclusive rights of the copyright owner are entirely superfluous to her
use of her intellectual property. If you make a copy of my manuscript, I am not prevented
from reading my original copy, or from using it as the basis for additional copies. To recap,
the difference between copyright and property is that in the latter case exclusion and the
correlative duty not to intrude serve as placeholders for more fundamental interests; whereas
in copyright, the fundamental interest is the duty not to copy original expression.
There is also a separate debate in Constitutional law as to whether copyright qualifies as
property within the original meaning of the Fourteenth Amendment’s Due Process Clause.
Compare Justice Kagan’s majority opinion in Allen v. Cooper, 140 S. Ct. 994 (2020) with
Justice Thomas’ separate opinion concurring in part and concurring in the judgment. But
that is even less interesting than the general philosophical question posed above.

12 The

analysis that follows leans heavily on Shyam Balganesh’s The Obligatory Structure Of Copyright Law,
although it probably does it an injustice.

34

Key economic concepts in copyright law
The standard model
The standard model for the economic analysis of copyright begins starts with the idea that
copyright law is a solution to a “public goods” problem.
“Information wants to be free. Information also wants to be expensive.” This is the basic dilemma that
copyright law attempts to resolve.13 Information wants to be free in the sense that, once
produced, information is cheap to copy, distribute, and recombine. Information wants to be
expensive in the sense that, for information producers to recover their fixed costs of
creation, they need to be able to charge more than just the low marginal cost of copying that
results from a competitive market.
In its pure form, information is what economists call a public good, meaning that it is both
non-excludable and non-rivalrous.14 The non-excludable nature of information means that
those who produce it often find it difficult to keep the benefits to them-selves. Consider the
following example. Amy, a budding novelist, plans to write a novel at an expected initial cost
of $100 (called the “cost of expression”). Amy also expects that, once written, it will only
cost her $1 to make copies of her novel for distribution. There are ten potential buyers of
Amy’s work, each with a different valuation ranging from Bill, for whom the novel is worth
$20, to Kevin, for whom the novel is worth only $11. If Amy sells ten copies of her novel at
$11 each, she will recover both her initial cost of expression and her marginal cost (the cost
of printing each additional volume). Unfortunately for Amy, she is unlikely to be able to
charge that price because once she sells a copy to her first customer, Bill, he will also be able
to make copies and offer to sell them to the remaining customers. Bill’s cost of expression is
zero, because he did not write the novel, so Bill can make a profit by selling at any price
above his marginal cost of copying. If Amy can’t stop Bill from free riding on her work, she
will abandon the idea of becoming a novelist and pursue an alternative career instead, a
suboptimal outcome for both Amy and her customers.
Amy’s story illustrates the classic economic rationale for the creation of exclusive rights in
information in general and copyright in particular. Without the legal artifact of exclusivity,
assuming that everyone has the same marginal cost, Amy’s competitors will face a lower
average cost of production for her novel than she does. Consequently, faced with the choice
between creating and copying, it makes more sense to copy. To put it another way, in a
competitive market the market price will be that of the lowest cost producer, which the
author will never be. As such, without some mechanism to appropriate the benefits of their
investments, authors and publishers will underinvest in the production of information
products. Of course, authors and artists invest in writing for many reasons beyond the
financial rewards that copyright law provides. But this fact should not obscure the point that
the author’s hope of commercial success is often what keeps them chained to the typewriter
and keeps their publisher paying the rent.

13 STEWART BRAND, THE MEDIA L AB: INVENTING THE FUTURE AT MIT 202 (1987).
14 WILLIAM LANDES & RICHARD POSNER, THE ECONOMIC S TRUCTURE OF I NTELLECTUAL PROPERTY LAW 14

(2003)

35

Copyright rights allow an author to internalize more of the benefits of her creations; or in
the jargon of economics, copyright facilitates the internalization of a work’s positive externalities
and limits free riding.
So that was the standard model of the economics of copyright. The basic story is that
without the incentives that copyright provides, creators would lack the incentive to create, or
at least to disseminate their creations.
So far, so good, but what about the costs of copyright?
Copyright facilitates the internalization of a work’s positive externalities and limits free riding,
but free riding in this context is not necessarily something we want to limit. Intellectual
works are non-rivalrous — a non-rivalrous good is one for which one person’s use does not
affect the value of any other person’s use. For example, while a photographic print is a
tangible physical object, it also embodies creative expression. If I take the print from your
living room, you are deprived of the enjoyment of seeing it there; on the other hand, if I
merely reproduce the print, you still have the original, and yet I now have one too. The
photo qua object is rivalrous; the photo qua artistic expression is non-rivalrous.
The non-rivalrous nature of information makes the welfare implications of copyright
different from those of other forms of property: the incentives attributed to allocating
property rights in information must be offset against the resulting underutilization of that
information. In other words, there is a trade-off between the author’s incentive to produce a
work and the public’s interest in access to that work.
The author’s exclusive rights under copyright law provide a buffer against price competition.
This competitive buffer allows the author to charge higher prices than she otherwise would,
which in turn has two immediate effects. First, some consumers remain willing to purchase
the work at a higher price and consequently pay more. Assuming we value the welfare of
both consumers and authors equally, this is simply a wealth transfer and is welfare-neutral.
Second, those who are unwilling to pay the higher price are forced to go without the work in
question. Market allocation of scarce resources to their highest valued use is usually welfare
enhancing, but for non-rivalrous goods, the exclusion of low value users produces a
deadweight loss because their consumption is not at the expense of another who values the
good more.
All this suggests that there is a trade-off between efficiency in production and efficiency in
consumption; essentially this is a comparison of dynamic benefits (incentives) and static
costs (exclusion). Copyright has dynamic benefits in that it creates incentives to invest in the
creation of new intellectual and creative works. Copyright has static costs comprised of the
“consumer deadweight loss resulting from higher pricing,” the concentration of market
power, and possible stifling of alternative points of view. In the classic model, the optimal
assignment of copyright rights is determined by balancing the dynamic incentives against
static deadweight losses.15

15 William M. Landes & Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. LEGAL S TUD. 325, 326

(1989).

36

Copyright and Creativity: Evidence from Italian Operas
So, what do we know about the economics of copyright? We know that in theory copyright
establishes market-based incentives for the creation and dissemination of expressive works.
We also know that, depending on the scope of copyright, these incentives might become
obstacles for the next generation of creators and that they might limit access to the work
leading to a deadweight loss.
So much for theory, is there any evidence that copyright actually works in practice?
In “Copyright and Creativity: Evidence from Italian Operas,”16 Michela Giorcelli and Petra Moser
found a creative way to empirically test the effect of copyright law by examining the
production of operas in Italian states between 1770 and 1900. Usually, it doesn’t make sense
to attribute the difference in output between two states to any particular aspect of their legal
systems because the difference may well be attributable to whatever caused the two states to
adopt different legal systems. But in this case, the variation in copyright laws came about as a
result of Napoleon’s military campaign in Northern Italy. This gives the authors something
close to a natural experiment, variation between comparable states in copyright law that
came about for reasons that have nothing to do with copyright. Lombardy and Venetia
adopted copyright laws in 1801, as part of a broader packet of French laws, after they had
fallen under French rule.
From 1801 onwards, Lombardy and Venetia appear to have experienced a significant
increase in the number of new operas that premiered per state and per year. Giorcelli and
Moser also found that the number of high-quality operas also increased in the copyright
early adopter states. However, although the Italian experiment suggests that copyright really
does create incentives, the same can’t necessarily be said about extensions of the duration of
copyright. As Giorcelli and Moser note, when Lombary and Venetia later moved to extend
their copyright terms, “there was no clear increase in the level or the quality of output, even
though both states had responded strongly to the adoption of basic copyright laws.”

Less money, more music?
Copyright has steadily expanded for the last 300 years. As Glynn Lunney notes in Copyright’s
Excess (2018), much of that expansion has been driven by “on the fundamental premise that
more incentives will yield more and better original works,” but this is a premise that we have
never really tested. In Copyright’s Excess, Lunney uses a variety of data sources to show that, at
least since the 1960s, the relationship between money and music production has been exactly
the opposite to that which the incentive story of copyright would predict. The central dogma
of copyright holds that greater rewards spur greater endeavors and that we should expect
that less money means less music. And yet, increases in copyright have reduced music output
and quality, and forces undermining copyright—especially illegal peer to peer filesharing—
have increased it.
Macroeconomic studies such as those in Lunney’s book are incredibly tricky and not
everyone will agree that he has demonstrated a perverse relationship between music industry
revenue and music production. At the very least, however, the last 50 years of data from the

16 Michela Giorcelli and Petra Moser, Copyright and Creativity: Evidence from Italian Operas (February 24,

2015). Available at SSRN: http://ssrn.com/abstract=2505776.

37

United States music industry leave us with a total absence of evidence for the central dogma
of copyright law.

Sequential innovation
The standard model of copyright does not pay much attention to sequential innovation. This
is unfortunate in a world where very few creations stand alone. Even the greatest authors
and artists typically see further by standing on the shoulders of those who came before them.
Although we want the law to encourage highly original works, we don’t expect art and
literature to stand apart from contemporary culture. Films refer to other films, books refer to
other books, even in the visual arts and in architecture one might see references and
reactions to other works. The scope of copyright needs to be carefully calibrated to provide
sufficient incentive for original works without smothering the creativity of the next
generation.
The economics of sequential innovation raises many questions but provides few answers in
the context of copyright. When creator B wants to build all the work of creator A to produce
a new copyrightable work, it is impossible to say in the abstract how the rewards/incentives
for the second work should be allocated. The simplistic belief that the initial allocation of
every conceivable right relating to a work should be vested in A does not account for
transaction costs, uncertainty and strategic behavior, externalities (cost and benefits visited
on third parties), and non-economic motivations. It might seem intuitive that the author of a
book should be entitled to determine who writes the sequel, but where do we draw the line
between a sequel and a companion book, a parody or simply a work in the same genre?

Copyright’s international framework
Why and to what extent is the law of intellectual property international?
There have been significant international agreements concerning intellectual property
protection since at least the mid 19th century. However, there was an important paradigm
shift in 1994 when intellectual property was incorporated into the world free-trade system
under the WTO, the World Trade Organization. As Margot Kaminski points out in The
Capture Of International Intellectual Property Law Through The U.S. Trade Regime, it may not be
intuitively obvious that a set of laws establishing territorial exclusive rights belongs in a free
trade regime devoted to lowering tariffs and other trade barriers to ensure the free flow of
goods and services:
But over the past several decades, free trade agreements have expanded to cover a
number of regulatory areas, including IP, in surprising depth.

Kaminski further explains:
Global efforts to link IP to trade culminated in the 1994 Agreement on TradeRelated Aspects of Intellectual Property (“TRIPS Agreement”) in the World Trade
Organization. The TRIPS Agreement made international IP law broader, deeper,
and more enforceable. TRIPS covers numerous areas of IP in more detail. However,
there was enough space left for policy disagreement that several countries, including
the United States, now use bilateral free trade agreements to supplement TRIPS’s
protections.

38

The integration of IP into bilateral and multilateral free-trade agreements is justified
on the promise of the efficiencies gained from harmonized standards. By linking
intellectual property rights to other trade issues, net exporters of intellectual
property – principally the United States – were able to persuade net importers to
accept higher standards of IP protection in exchange for better terms of trade in
unrelated fields. Linking IP to international trade has led to greater harmonization,
but more importantly it also links intellectual property agreements to the WTO
dispute resolution system unless makes existing agreements more enforceable.17

However, progress at the WTO has stalled in recent years and the United States and
European Union have both pursued bilateral free trade agreements. These agreements have
tended to impose higher standards of IP protection on the trading parties in ways that are
arguably inconsistent with the spirit of the TRIPs Agreement negotiated in 1994. For
example, Chapter 17 of Australia–United States Free Trade Agreement (AUSFTA) (effective
as of January 1, 2005) required Australia to extend the minimum term of copyright to 70
years after the author’s death. This is 20 years more than is required under the Berne
Convention.

Copyright’s International Framework
Copyright law has been the subject of far-reaching international agreements since the Berne
Convention of 1886. Today, the TRIPs agreement incorporates by reference articles 1 to 21
of the Berne Convention (Paris 1971) and its Appendix. The TRIPs Agreement also contains
its own minimum standards for copyright which both overlap with and extend the Berne
Convention.
TRIPs Article 9(1)
Members shall comply with Articles 1 through 21 of the Berne Convention (1971)
and the Appendix thereto. However, Members shall not have rights or obligations
under this Agreement in respect of the rights conferred under Article 6bis of that
Convention or of the rights derived therefrom.

The first Berne Convention was a significant development in first the internationalization on
intellectual property. Prior to the Berne Convention, countries either didn’t recognize the
copyrights of foreign nationals, or they did so based on bilateral agreements of reciprocity.
The Berne convention adopted the principle of national treatment whereby each country
agrees to treat foreigners at least as well as it treats its own nationals, regardless of the level
of protection offered in a foreign country. The Berne Convention also adopted certain
minimum standards.
Remarkably, the United States stayed outside of the Berne Convention until 1989. Initially,
the United States refused to enforce foreign copyrights as part of a deliberate industrial
policy that prioritized the education of a fast-growing population over the rights of authors
in faraway countries. However, even after the United States became an important producer
of literature, music, film, and television it was reluctant to accede to the Berne Convention
because United States law predicated copyright protection on compliance with formalities –
including publication with a copyright notice, registration with the copyright office and

17 Margot E. Kaminski, The Capture Of International Intellectual Property Law Through The U.S. Trade Regime, 87 S.

CAL. L. REV. 977 (2014).

39

deposit with the library of congress. Insistence on these formalities was strictly prohibited
under the Berne Convention.
Some other significant international agreements on copyright and related rights include the
Rome Convention, the international convention for the protection of performers, producers
of phonograms and broadcasting organizations, first signed in 1961; and the WIPO
Copyright Treaty and the WIPO Performances and Phonograms Treaty.18
In addition, copyright has also been an important issue in a number of regional and bilateral
free trade agreements, particularly those negotiated by the European Union and the United
States. These agreements are often referred to as “TRIPs-Plus” agreements because they
seek to impose minimum standards above and beyond what was agreed to in the TRIPs
Agreement.

The harmonization of copyright in the European Union
This book contains a number of digressions on subjects relating to European copyright law.
Although a complete understanding of copyright in the European Union is well outside the
scope of this book, it is helpful to understand at least the basics of the European lawmaking
process.
The European Union is a political and economic union of 27 European member states(it
was 28 members before the withdrawal of the United Kingdom at the end of January 2020).
The member states of the European Union are obliged to harmonize their respective
domestic laws by complying with EU directives. The European Union also issues regulations.
Regulations have direct effect within the European Union, whereas Directives must be
implemented by national governments.
Since 1993 the EU has adopted the following directives and regulations relating to copyright:
•

•
•
•

Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules
concerning copyright and rights related to copyright applicable to satellite broadcasting and
cable retransmission [1993] OJ L 248/15 (‘SatCab Directive’), as amended by Directive (EU)
2019/789 of the European Parliament and of the Council of 17 April 2019 laying down rules
on the exercise of copyright and related rights applicable to certain online transmissions of
broadcasting organisations and retransmissions of television and radio programmes, and
amending Council Directive 93/83/EEC [2019] OJ L 130/82
Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the
legal protection of databases [1996] OJ L 77/20 (‘Database Directive’)
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on
the harmonisation of certain aspects of copyright and related rights in the information
society [2001] OJ L 167/10 (‘InfoSoc Directive’)
Directive 2001/84/EC of the European Parliament and of the Council of 27 September
2001 on the resale right for the benefit of the author of an original work of art [2001] OJ L
272/32 (‘Resale Right Directive’)

18 Although over 180 countries are members of WIPO, the influence of these two WIPO treaties is still weaker

than the TRIPS Agreement, which enjoys the strong enforcement mechanism under the WTO’s Dispute
Settlement Body.

40

•
•
•

•
•
•
•

•

•

•
•

Corrigendum to Directive 2004/48/EC of the European Parliament and of the Council of
29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.04.2004)
[2004] OJ L 195/16 (‘Enforcement Directive’)
Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on
the legal protection of computer programs (codified version) [2009] OJ L 111, 05.05.2009,
16–22 (‘Software Directive’)
Directive 2006/115/EC of the European Parliament and of the Council of 12 December
2006 on rental right and lending right and on certain rights related to copyright in the field of
intellectual property (codified version) [2006] OJ L 376/28 (‘Rental and Lending Rights
Directive’)
Directive 2006/116/EC of the European Parliament and of the Council of 12 December
2006 on the term of protection of copyright and certain related rights [2006] OJ L 372/12
(‘Term Directive’)
Directive 2011/77/EU of the European Parliament and of the Council of 27 September
2011 amending Directive 2006/116/EC on the term of protection of copyright and certain
related rights [2011] OJ L 265/1 (‘Performers and Sounds Recordings Term Directive’)
Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012
on certain permitted uses of orphan works [2012] OJ L 299/5 (‘Orphan Works Directive’)
Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014
on collective management of copyright and related rights and multi-territorial licensing of
rights in musical works for online use in the internal market [2014] OJ L 84/72 (‘Collective
Rights Management Directive’)
Regulation (EU) 2017/1563 of the European Parliament and of the Council of 13
September 2017 on the cross-border exchange between the Union and third countries of
accessible format copies of certain works and other subject matter protected by copyright
and related rights for the benefit of persons who are blind, visually impaired or otherwise
print-disabled [2017] OJ L 242/1 (‘Marrakesh Regulation’)
Directive (EU) 2017/1564 of the European Parliament and of the Council of 13 September
2017 on certain permitted uses of certain works and other subject matter protected by
copyright and related rights for the benefit of persons who are blind, visually impaired or
otherwise print-disabled and amending Directive 2001/29/EC on the harmonisation of
certain aspects of copyright and related rights in the information society [2017] OJ L 242/6
(‘Marrakesh Directive’)
Regulation (EU) 2017/1128 of the European Parliament and of the Council of 14 June 2017
on cross-border portability of online content services in the internal market [2017] OJ L
168/1 (‘Portability Regulation’)
Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019
on copyright and related rights in the Digital Single Market and amending Directives
96/9/EC and 2001/29/EC [2019] OJ L 130/92 (‘DSM Directive’)

In addition to these various directives and regulations, the European Union also has an
emerging body of case law in the form of decisions of the Court of Justice of the European
Union (“CJEU”). CJEU is the chief judicial authority of the European Union. As Professor
Eleonora Rosati summarized in a 2019 article, “over one hundred referrals have been made
over the past couple of decades” and the “resulting CJEU decisions have gained in
significance because they have helped shape and further harmonise the EU copyright
framework.”19 Several of these cases are discussed in later chapters of this book.
19 Eleonora Rosati, What Does The European Commission Make Of The EU Copyright Acquis When It Pleads Before The

CJEU? The Legal Service’s Observations In Digital/Online Cases, (working paper), 2019.

41

A quick look at the rights of the copyright owner
Before getting too immersed in the detail of copyright law, it is useful to have a general
appreciation of the kinds of exclusive rights and copyright provides.
The TRIPs Agreement and the Berne Convention both contain some general guidance as to
the rights of the copyright owner. However, it is important to recognize that these
international agreements are not self-executing, at least not in the United States. The rights
of the copyright owner in a particular country only exist by virtue of that country’s domestic
legislation. If that domestic legislation is noncompliant with international norms, that may,
or may not, lead to censure or retaliation through the dispute settlement mechanisms of the
World Trade Organization.
It is also important to recognize that although the TRIPs agreement and the Berne
Convention (and the WIPO Treaties for that matter) use certain language to describe the
rights of the copyright owner, the use of particular terms of art is not as important as the
substance of the rights.
The most significant economic rights of the copyright owner under the Berne Convention
are the rights of reproduction, adaptation and translation, public performance,
communication and broadcast, and public distribution for cinematographic adaptations.
Berne Convention Economic Rights
Article 2bis (collection of speeches)
Article 8 (translations)
Article 9 (reproduction)
Article 11 (public performance of musical works)
Article 11bis (public communication)
Article 11ter (public recitation)
Article 12 (adaptations, arrangements, and alterations)
Article 14 (cinematographic adaptations)
Article l4ter (droit de suite, or resale right)

In addition to these, the TRIPs Agreement also contains a rental right for computer
programs and cinematographic works.
Different jurisdictions have different styles of lawmaking. Some copyright laws contain
specific rights tied to particular categories of works; whereas others state the rights of the
copyright owner more generally. Section 106 of the United States Copyright Act of 1976 (the
“Copyright Act”) sets out six exclusive rights belonging to the copyright owner. These are:
the right to reproduce the work in copies, the right to make a derivative work based on the
copyrighted work, the right to distribute the copyrighted work, the rights of public
performance and public display, and something called a digital audio transmission right.
17 U.S. Code § 106 - Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright under this title has the
exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;

42

(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by
sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes,
and motion pictures and other audiovisual works, to perform the copyrighted work
publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes,
and pictorial, graphic, or sculptural works, including the individual images of a
motion picture or other audiovisual work, to display the copyrighted work publicly;
and
(6) in the case of sound recordings, to perform the copyrighted work publicly by
means of a digital audio transmission.

The first three rights apply to all types of work. Generally, the performance right in Section
106(4) applies to things capable of being performed and the display right in Section 106(5)
applies to things capable of being displayed. However, if you read the section carefully you
will see that there is no public performance right for sound recordings in 106(5), only for
musical works (for the moment, think “musical works” as musical compositions and “sound
recordings” as recordings of performances). There is however, a public performance right
for sound recordings by means of a digital audio transmission, for example, by means of
webcasting or Internet radio.
Sound recordings are a relatively late addition to United States copyright law. In 1972,
Congress included sound recordings within the umbrella of federal copyright, but it gave no
protection to recordings already in existence. In 2018 Congress extended copyright
protection to pre-1972 sound recordings in the “Classics Protection and Access Act” which
was passed as part of the Music Modernization Act of 2018. The method Congress chose to
achieve this objective adds some additional complexity to the structure of the Copyright Act.
The CPA Act adds a new chapter to the Copyright Act (Section 1401) that provides that the
unauthorized use of a sound recording fixed before February 15, 1972 shall be subject to the
same remedies as any other form of copyright infringement. Section 1401 of the Act puts
pre- and post-1972 sound recording on an equal footing, but it does not extend a general
performance right to sound recordings.
Finally, it is worth noting that business terms and legal rights under the Copyright Act are
not always in sync. In fact, so-called “synchronization licenses” are great example of this
phenomenon. According to Kohn On Music Licensing, “synchronizing involves making a piece
of music an integral part of the audiovisual work — by recording the music in ‘timedrelation’ with the moving pictures in an audiovisual work.”20 In reality, a sync license is
simply a license to reproduce the musical work limited to a particular factual context. Usually
the terms of a sync license will include performance rights as well, but not always. There is
nothing special from a legal standpoint about the fact that the music is combined with
video,21 but the terminology is a useful of conveying the limits of the permission and the

20 AL KOHN & BOB KOHN, KOHN ON MUSIC LICENSING 1086 (4th ed. 2010).
21 With one exception. The statutory license in Section 115 of the Copyright Act is only available for fixing

musical works in “phonorecords” and that term is defined to exclude music combined with video.

43

understanding that use of the same musical composition in a different context or in a
different audiovisual work “would require a separate license, carrying an additional fee.”22

22 Kohn On Music Licensing, at 1105–06.

44

2. COPYRIGHT SUBJECT MATTER AND QUESTIONS
ORIGINALITY, AND INTELLECTUAL CREATION

OF

CREATIVITY,

The significance of creativity, originality, and authorship
Creativity, originality, and authorship are the fundamental concepts that determine whether a
work is entitled to copyright protection and which aspects of a work are protected by the
exclusive rights of the copyright owner. The following readings concentrate on how these
concepts influence whether a work is eligible for copyright protection in the first place and
which aspects of the work are protectable.
Suppose a writer locks herself away in a cabin in the woods to produce a new screenplay that
was not based on any pre-existing work. It seems obvious that the screenplay is original and
creative and that the writer should be acknowledged as its author. However, copyright
extends to a broad range of subject matter that is not always so self-evidently creative.
Should copyright protect the producer’s investment of time and effort in collecting facts for
a database or a telephone directory? Should copyright protect a skillfully taken photograph
of a work of art that does nothing more than exactly reproduce the original? Should
copyright protect a photograph that was taken by accident, or photograph that was taken by
a monkey? The answers to these questions should begin to emerge from consideration of the
reading that follows.

International Context
One of the bedrock principles of copyright law in the United States is the concept of
originality: to qualify for copyright protection a work must be a work of authorship in the
sense that it displays some minimal degree of human creativity in its expression. Neither the
TRIPs Agreement nor the Berne Convention clearly express a universal requirement of
authorship or originality, however both agreements refer to works being a product of
“intellectual creation” in the contexts of compilations and collections. This requirement of
“intellectual creation” is arguably implicit in the Berne’s focus on “literary and artistic
works”; after all, if a work does not display any creativity or intellectual creation, how can we
call it a literary or artistic work?
The next few paragraphs highlight some of the key provisions of Berne and TRIPs defining
the subject matter of copyright. The Berne Convention calls for the protection of “literary
and artistic works” and it does so in broad terms.
Berne Convention Article 2.
(1) The expression “literary and artistic works” shall include every production in the
literary, scientific and artistic domain, whatever may be the mode or form of its
expression, such as books, pamphlets and other writings; lectures, addresses,
sermons and other works of the same nature; dramatic or dramatico-musical works;
choreographic works and entertainments in dumb show; musical compositions with
or without words; cinematographic works to which are assimilated works expressed
by a process analogous to cinematography; works of drawing, painting, architecture,
sculpture, engraving and lithography; photographic works to which are assimilated

45

works expressed by a process analogous to photography; works of applied art;
illustrations, maps, plans, sketches and three-dimensional works relative to
geography, topography, architecture or science.
(3) Translations, adaptations, arrangements of music and other alterations of a
literary or artistic work shall be protected as original works without prejudice to the
copyright in the original work.
(5) Collections of literary or artistic works such as encyclopaedias and anthologies
which, by reason of the selection and arrangement of their contents, constitute
intellectual creations shall be protected as such, without prejudice to the copyright in
each of the works forming part of such collections.

Under Article 2(1), the broad category of “literary and artistic works” includes “every
production in the literary, scientific and artistic domain, whatever may be the mode form of
expression,” and the Article then continues with a number of examples to illustrate this
broad definition.
The Berne Convention also treats translations, adaptations, and arrangements as original
works in the sense that they are entitled to copyright protection, even though they are
derived from previous works which may already have their own independent copyright
protection. This is what Article 2(3) means by the phrase: “shall be protected as original works
without prejudice to the copyright in the original work”. Berne Article 2(5) also treats collections of
literary or artistic works as “original works”, but only if they “constitute intellectual creations” “by
reason of the selection and arrangement of their contents”.
The TRIPs Agreement deals with copyright subject matter more succinctly. TRIPs Article
9(2) states simply that “copyright shall extend to expressions and not to ideas, procedures,
methods of operations or mathematical concepts as such.”
TRIPs Article 9(2)
Copyright protection shall extend to expressions and not to ideas, procedures,
methods of operation or mathematical concepts as such.

Article 10(1) of TRIPs represents an important development in the history of copyright law,
the extension of copyright subject matter to include computer programs. There is no parallel
provision in the Berne Convention. TRIPs Article 10(2) covers the same ground as Berne
Article 2(5) discussed above. This provision provides that compilations of data or other
material, “which by reason of the selection or arrangement of the contents constitute
intellectual creations” should be protected as literary works.
TRIPs Article 10. Computer Programs and Compilations of Data
1. Computer programs, whether in source or object code, shall be protected as
literary works under the Berne Convention (1971).
2. Compilations of data or other material, whether in machine readable or other
form, which by reason of the selection or arrangement of their contents constitute
intellectual creations shall be protected as such. Such protection, which shall not
extend to the data or material itself, shall be without prejudice to any copyright
subsisting in the data or material itself.

Neither Berne nor Trips provide any definition of the concept of “intellectual creation”.

46

The originality requirement is expressly included in the majority of copyright statutes worldwide. Section 102 of the United States Copyright Act provides that “Copyright protection subsists,
in accordance with this title, in original works of authorship fixed in any tangible medium of expression …”;
Section 1(1) of the U.K. Copyright, Designs and Patents Act, 1988 provides that “Copyright is
a property right which subsists in … (a) original literary, dramatic, musical or artistic works, (b) sound
recordings, films or broadcasts, and (c) the typographical arrangement of published editions.” The Indian
Copyright Act uses almost identical terms. Section 32 of the Australian Copyright Act also
states that “copyright subsists in an original literary …”
Jurisdictions tend to agree that originality requires some identifiable quantum of contribution
by the person claiming authorship, but they may diverge on the nature of the contribution.

Creativity, originality and copyright subject matter in the United States
Pre-Feist
[Placeholder for discussion of the Trade-Mark cases]
Photography was not listed as copyright subject matter in the Statute of Anne, nor in the
first United States Copyright Act of 1790, probably because photography had not yet been
invented. The invention of the daguerreotype process for capturing images with light
sensitive materials in 1839 is generally accepted as the birth of photography. Photography
was included in copyright subject matter in the English Fine Arts Copyright Act of 1862 and
by a similar provision in the United States in 1865. However, it was not until 1884 that the
Supreme Court had the opportunity to consider whether a mechanical process like
photography truly belonged under the rubric of copyright law.
The Burrow-Giles case extracted below began with a copyright infringement case filed by
Sarony, a photographer, in the Southern District of New York. As quoted in the Supreme
Court’s decision, the trial court made the following findings of fact:
That the plaintiff about the month of January, 1882, under an agreement with Oscar
Wilde, became and was the author, inventor, designer, and proprietor of the
photograph in suit, the title of which is ‘Oscar Wilde No. 18,’ being the number
used to designate this particular photograph and of the negative thereof; that the
same is a useful, new, harmonious, characteristic, and graceful picture, and that said
plaintiff made the same at his place of business in said city of New York, and within
the United States, entirely from his own original mental conception, to which he
gave visible form by posing the said Oscar Wilde in front of the camera, selecting
and arranging the costume, draperies, and other various accessories in said
photograph, arranging the subject so as to present graceful outlines, arranging and
disposing the light and shade, suggesting and evoking the desired expression, and
from such disposition, arrangement, or representation, made entirely by the plaintiff,
he produced the picture in suit, … , and that the terms ‘author,’ ‘inventor,’ and
‘designer,’ as used in the art of photography and in the complaint, mean the person
who so produced the photograph.

The primary issue before the Supreme Court was whether Congress had the constitutional
right to protect photographs and negatives thereof by copyright.

47

Figure 1 Burrow-Giles Lithographic Co. v. Sarony (Photo and Lithograph)

Burrow-Giles Lithographic Co. v. Sarony, 111 US 53 (1884)
Mr. Justice Miller delivered the opinion of the court
The constitutional question is not free from difficulty.
The eighth section of the first article of the Constitution is the great repository of the
powers of Congress, and by the eighth clause of that section Congress is authorized:
To promote the progress of science and useful arts, by securing, for limited times to
authors and inventors, the exclusive right to their respective writings and discoveries.

The argument here is, that a photograph is not a writing nor the production of an
author. Under the acts of Congress designed to give effect to this section, the
persons who are to be benefited are divided into two classes, authors and inventors.
The monopoly which is granted to the former is called a copyright, that given to the
latter, letters patent, or, in the familiar language of the present day, patent right.
We have, then, copyright and patent right, and it is the first of these under which
plaintiff asserts a claim for relief.
It is insisted in argument, that a photograph being a reproduction on paper of the
exact features of some natural object or of some person, is not a writing of which the
producer is the author.
Section 4952 of the Revised Statutes places photographs in the same class as things
which may be copyrighted with “books, maps, charts, dramatic or musical
compositions, engravings, cuts, prints, paintings, drawings, statues, statuary, and
models or designs intended to be perfected as works of the fine arts.” “According to
the practice of legislation in England and America,” says Judge Bouvier, 2 Law
Dictionary, 363, “the copyright is confined to the exclusive right secured to the

48

author or proprietor of a writing or drawing which may be multiplied by the arts of
printing in any of its branches.”
The first Congress of the United States, sitting immediately after the formation of
the Constitution, enacted that the “author or authors of any map, chart, book or
books, being a citizen or resident of the United States, shall have the sole right and
liberty of printing, reprinting, publishing and vending the same for the period of
fourteen years from the recording of the title thereof in the clerk’s office, as
afterwards directed.” 1 Stat. 124, 1.
This statute not only makes maps and charts subjects of copyright, but mentions
them before books in the order of designation. The second section of an act to
amend this act, approved April 29, 1802, 2 Stat. 171, enacts that from the first day of
January thereafter, he who shall invent and design, engrave, etch or work, or from
his own works shall cause to be designed and engraved, etched or worked, any
historical or other print or prints shall have the same exclusive right for the term of
fourteen years from recording the title thereof as prescribed by law.
By the first section of the act of February 3d, 1831, 4 Stat. 436, entitled an act to
amend the several acts respecting copyright, musical compositions and cuts, in
connection with prints and engravings, are added, and the period of protection is
extended to twenty-eight years. The caption or title of this act uses the word
copyright for the first time in the legislation of Congress.
The construction placed upon the Constitution by the first act of 1790, and the act
of 1802, by the men who were contemporary with its formation, many of whom
were members of the convention which framed it, is of itself entitled to very great
weight, and when it is remembered that the rights thus established have not been
disputed during a period of nearly a century, it is almost conclusive.
Unless, therefore, photographs can be distinguished in the classification on this point
from the maps, charts, designs, engravings, etchings, cuts, and other prints, it is
difficult to see why Congress cannot make them the subject of copyright as well as
the others.
These statutes certainly answer the objection that books only, or writing in the
limited sense of a book and its author, are within the constitutional provision. Both
these words are susceptible of a more enlarged definition than this. An author in that
sense is “he to whom anything owes its origin; originator; maker; one who completes
a work of science or literature.” Worcester. So, also, no one would now claim that the
word writing in this clause of the Constitution, though the only word used as to
subjects in regard to which authors are to be secured, is limited to the actual script of
the author, and excludes books and all other printed matter. By writings in that
clause is meant the literary productions of those authors, and Congress very properly
has declared these to include all forms of writing, printing, engraving, etching, &c.,
by which the ideas in the mind of the author are given visible expression. The only
reason why photographs were not included in the extended list in the act of 1802 is
probably that they did not exist, as photography as an art was then unknown, and the
scientific principle on which it rests, and the chemicals and machinery by which it is
operated, have all been discovered long since that statute was enacted.

49

Nor is it to be supposed that the framers of the Constitution did not understand the
nature of copyright and the objects to which it was commonly applied, for copyright,
as the exclusive right of a man to the production of his own genius or intellect,
existed in England at that time, and the contest in the English courts, finally decided
by a very close vote in the House of Lords, whether the statute of 8 Anne, chap. 19,
which authorized copyright for a limited time, was a restraint to that extent on the
common law or not, was then recent. It had attracted much attention, as the
judgment of the King’s Bench, delivered by Lord Mansfield, holding it was not such
a restraint, in Millar v. Taylor, 4 Burrows, 2303, decided in 1769, was overruled on
appeal in the House of Lords in 1774. Ibid. 2408. In this and other cases the whole
question of the exclusive right to literary and intellectual productions had been freely
discussed.
We entertain no doubt that the Constitution is broad enough to cover an act
authorizing copyright of photographs, so far as they are representatives of original
intellectual conceptions of the author.
But it is said that an engraving, a painting, a print, does embody the intellectual
conception of its author, in which there is novelty, invention, originality, and
therefore comes within the purpose of the Constitution in securing its exclusive use
or sale to its author, while the photograph is the mere mechanical reproduction of
the physical features or outlines of some object animate or inanimate, and involves
no originality of thought or any novelty in the intellectual operation connected with
its visible reproduction in shape of a picture. That while the effect of light on the
prepared plate may have been a discovery in the production of these pictures, and
patents could properly be obtained for the combination of the chemicals, for their
application to the paper or other surface, for all the machinery by which the light
reflected from the object was thrown on the prepared plate, and for all the
improvements in this machinery, and in the materials, the remainder of the process is
merely mechanical, with no place for novelty, invention or originality. It is simply the
manual operation, by the use of these instruments and preparations, of transferring
to the plate the visible representation of some existing object, the accuracy of this
representation being its highest merit.
This may be true in regard to the ordinary production of a photograph, and, further,
that in such case a copyright is no protection. On the question as thus stated we
decide nothing.
In regard, however, to the kindred subject of patents for invention, they cannot by
law be issued to the inventor until the novelty, the utility, and the actual discovery or
invention by the claimant have been established by proof before the Commissioner
of Patents; and when he has secured such a patent, and undertakes to obtain redress
for a violation of his right in a court of law, the question of invention, of novelty, of
originality, is always open to examination. Our copyright system has no such
provision for previous examination by a proper tribunal as to the originality of the
book, map, or other matter offered for copyright. A deposit of two copies of the
article or work with the Librarian of Congress, with the name of the author and its
title page, is all that is necessary to secure a copyright. It is, therefore, much more
important that when the supposed author sues for a violation of his copyright, the
existence of those facts of originality, of intellectual production, of thought, and
50

conception on the part of the author should be proved, than in the case of a patent
right.
In the case before us we think this has been done.
The third finding of facts says, in regard to the photograph in question, that it is a
“useful, new, harmonious, characteristic, and graceful picture, and that plaintiff made
the same ... entirely from his own original mental conception, to which he gave
visible form by posing the said Oscar Wilde in front of the camera, selecting and
arranging the costume, draperies, and other various accessories in said photograph,
arranging the subject so as to present graceful outlines, arranging and disposing the
light and shade, suggesting and evoking the desired expression, and from such
disposition, arrangement, or representation, made entirely by plaintiff, he produced
the picture in suit.”
These findings, we think, show this photograph to be an original work of art, the
product of plaintiff’s intellectual invention, of which plaintiff is the author, and of a
class of inventions for which the Constitution intended that Congress should secure
to him the exclusive right to use, publish and sell, as it has done by section 4952 of
the Revised Statutes.
The question here presented is one of first impression under our Constitution, but
an instructive case of the same class is that of Nottage v. Jackson, 11 Q.B.D. 627,
decided in that court on appeal, August, 1883.
The plaintiffs in that case described themselves as the authors of the photograph
which was pirated, in the registration of it. It appeared that they had arranged with
the captain of the Australian cricketers to take a photograph of the whole team in a
group; and they sent one of the artists in their employ from London to some country
town to do it.
The question in the case was whether the plaintiffs, who owned the establishment in
London, where the photographs were made from the negative and were sold, and
who had the negative taken by one of their men, were the authors, or the man who,
for their benefit, took the negative. It was held that the latter was the author, and the
action failed, because plaintiffs had described themselves as authors.
Brett, M.R., said, in regard to who was the author: “The nearest I can come to, is that
it is the person who effectively is as near as he can be, the cause of the picture which
is produced, that is, the person who has superintended the arrangement, who has
actually formed the picture by putting the persons in position, and arranging the
place where the people are to be — the man who is the effective cause of that.”
Lord Justice Cotton said: “In my opinion, ‘author’ involves originating, making,
producing, as the inventive or master mind, the thing which is to be protected,
whether it be a drawing, or a painting, or a photograph;” and Lord Justice Bowen
says that photography is to be treated for the purposes of the act as an art, and the
author is the man who really represents, creates, or gives effect to the idea, fancy, or
imagination.
The appeal of plaintiffs from the original judgment against them was accordingly
dismissed.

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These views of the nature of authorship and of originality, intellectual creation, and
right to protection confirm what we have already said.
The judgment of the Circuit Court is accordingly affirmed.
Notes and Questions
(1) In Burrow-Giles Lithographic Co. v. Sarony, 111 US 53 (1884) the Supreme Court held (at 58)
By writings in that clause is meant the literary productions of those authors, and
Congress very properly has declared these to include all forms of writing, printing,
engraving, etching, &c., by which the ideas in the mind of the author are given
visible expression.

The Court thus concluded that the term “writing” in the Copyright Clause of the U.S.
Constitution was broad enough to include photographs “so far as they are representatives of
original intellectual conceptions of the author.” The Court also noted (at 58) that
The only reason why photographs were not included in the extended list in the act
of 1802 is probably that they did not exist, as photography as an art was then
unknown, and the scientific principle on which it rests, and the chemicals and
machinery by which it is operated, have all been discovered long since that statute
was enacted.

(2) What makes a photo the representation of “original intellectual conceptions of the
author”? Do the references to the English cases help you answer this question? Are there
any circumstances where a photo would not be copyrightable?
Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903)
Justice Holmes delivered the opinion of the court
This case comes here from the United States Circuit Court of Appeals for the Sixth
Circuit by writ of error. It is an action brought by the plaintiffs in error to recover
the penalties prescribed for infringements of copyrights. The alleged infringements
consisted in the copying in reduced form of three chromolithographs prepared by
employees of the plaintiffs for advertisements of a circus owned by one Wallace.
Each of the three contained a portrait of Wallace in the corner and lettering bearing
some slight relation to the scheme of decoration, indicating the subject of the design
and the fact that the reality was to be seen at the circus. One of the designs was of an
ordinary ballet, one of a number of men and women, described as the Stirk family,
performing on bicycles, and one of groups of men and women whitened to represent
statues. The Circuit Court directed a verdict for the defendant on the ground that the
chromolithographs were not within the protection of the copyright law, and this
ruling was sustained by the Circuit Court of Appeals.
We shall do no more than mention the suggestion that painting and engraving unless
for a mechanical end are not among the useful arts, the progress of which Congress
is empowered by the Constitution to promote. The Constitution does not limit the
useful to that which satisfies immediate bodily needs. Burrow-Giles Lithographic Co. v.
Sarony, 111 U.S. 53. It is obvious also that the plaintiffs’ case is not affected by the
fact, if it be one, that the pictures represent actual groups — visible things. They
seem from the testimony to have been composed from hints or description, not
52

from sight of a performance. But even if they had been drawn from the life, that fact
would not deprive them of protection. The opposite proposition would mean that a
portrait by Velasquez or Whistler was common property because others might try
their hand on the same face. Others are free to copy the original. They are not free to
copy the copy. Blunt v. Patten, 2 Paine, 397, 400. See Kelly v. Morris, L.R. 1 Eq. 697;
Morris v. Wright, L.R. 5 Ch. 279. The copy is the personal reaction of an individual
upon nature. Personality always contains something unique. It expresses its
singularity even in handwriting, and a very modest grade of art has in it something
irreducible, which is one man’s alone. That something he may copyright unless there
is a restriction in the words of the act.
If there is a restriction it is not to be found in the limited pretensions of these
particular works. The least pretentious picture has more originality in it than
directories and the like, which may be copyrighted. Drone, Copyright, 153. See
Henderson v. Tomkins, 60 Fed. Rep. 758, 765. The amount of training required for
humbler efforts than those before us is well indicated by Ruskin. “If any young
person, after being taught what is, in polite circles, called ‘drawing,’ will try to copy
the commonest piece of real work, — suppose a lithograph on the title page of a
new opera air, or a woodcut in the cheapest illustrated newspaper of the day — they
will find themselves entirely beaten.” Elements of Drawing, 1st ed. 3.
We assume that the construction of Rev. Stat. § 4952, allowing a copyright to the
“author, inventor, designer, or proprietor . .. of any engraving, cut, print . . . [or]
chromo” is affected by the act of 1874, c. 301, § 3. That section provides that “in the
construction of this act the words ‘engraving,’ ‘cut’ and ‘print’ shall be applied only
to pictorial illustrations or works connected with the fine arts.” We see no reason for
taking the words “connected with the fine arts” as qualifying anything except the
word “works,” but it would not change our decision if we should assume further that
they also qualified “pictorial illustrations,” as the defendant contends.
These chromolithographs are “pictorial illustrations.” The word “illustrations” does
not mean that they must illustrate the text of a book, and that the etchings of
Rembrandt or Steinla’s engraving of the Madonna di San Sisto could not be
protected to-day if any man were able to produce them. Again, the act however
construed, does not mean that ordinary posters are not good enough to be
considered within its scope. The antithesis to “illustrations or works connected with
the fine arts” is not works of little merit or of humble degree, or illustrations
addressed to the less educated classes; it is “prints or labels designed to be used for
any other articles of manufacture.” Certainly works are not the less connected with
the fine arts because their pictorial quality attracts the crowd and therefore gives
them a real use — if use means to increase trade and to help to make money. A
picture is none the less a picture and none the less a subject of copyright that it is
used for an advertisement. And if pictures may be used to advertise soap, or the
theatre, or monthly magazines, as they are, they may be used to advertise a circus. Of
course, the ballet is as legitimate a subject for illustration as any other. A rule cannot
be laid down that would excommunicate the paintings of Degas.
Finally, the special adaptation of these pictures to the advertisement of the Wallace
shows does not prevent a copyright. That may be a circumstance for the jury to
consider in determining the extent of Mr. Wallace’s rights, but it is not a bar.
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Moreover, on the evidence, such prints are used by less pretentious exhibitions when
those for whom they were prepared have given them up.
It would be a dangerous undertaking for persons trained only to the law to constitute
themselves final judges of the worth of pictorial illustrations, outside of the
narrowest and most obvious limits. At the one extreme some works of genius would
be sure to miss appreciation. Their very novelty would make them repulsive until the
public had learned the new language in which their author spoke. It may be more
than doubted, for instance, whether the etchings of Goya or the paintings of Manet
would have been sure of protection when seen for the first time. At the other end,
copyright would be denied to pictures which appealed to a public less educated than
the judge. Yet if they command the interest of any public, they have a commercial
value — it would be bold to say that they have not an aesthetic and educational value
— and the taste of any public is not to be treated with contempt. It is an ultimate
fact for the moment, whatever may be our hopes for a change. That these pictures
had their worth and their success is sufficiently shown by the desire to reproduce
them without regard to the plaintiffs’ rights. See Henderson v. Tomkins, 60 Fed. Rep.
758, 765. We are of opinion that there was evidence that the plaintiffs have rights
entitled to the protection of the law.
The judgment of the Circuit Court of Appeals is reversed; the judgment of the
Circuit Court is also reversed and the cause remanded to that court with directions to
set aside the verdict and grant a new trial.
Justice Harlan, with whom concurred Justice McKenna, dissenting.
Judges Lurton, Day and Severens, of the Circuit Court of Appeals, concurred in
affirming the judgment of the District Court. Their views were thus expressed in an
opinion delivered by Judge Lurton: “What we hold is this: That if a chromo,
lithograph, or other print, engraving, or picture has no other use than that of a mere
advertisement, and no value aside from this function, it would not be promotive of
the useful arts, within the meaning of the constitutional provision, to protect the
‘author’ in the exclusive use thereof, and the copyright statute should not be
construed as including such a publication, if any other construction is admissible. If a
mere label simply designating or describing an article to which it is attached, and
which has no value separated from the article, does not come within the
constitutional clause upon the subject of copyright, it must follow that a pictorial
illustration designed and useful only as an advertisement, and having no intrinsic
value other than its function as an advertisement, must be equally without the
obvious meaning of the Constitution. It must have some connection with the fine
arts to give it intrinsic value, and that it shall have is the meaning which we attach to
the act of June 18, 1874, amending the provisions of the copyright law. We are
unable to discover anything useful or meritorious in the design copyrighted by the
plaintiffs in error other than as an advertisement of acts to be done or exhibited to
the public in Wallace’s show. No evidence, aside from the deductions which are to
be drawn from the prints themselves, was offered to show that these designs had any
original artistic qualities.”
I entirely concur in these views, and therefore dissent from the opinion and
judgment of this court. The clause of the Constitution giving Congress power to

54

promote the progress of science and useful arts, by securing for limited terms to
authors and inventors the exclusive right to their respective works and discoveries,
does not, as I think, embrace a mere advertisement of a circus.
Notes and Questions
(1) Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) is an important case to come to
terms with when addressing the concept of originality and understanding the Constitutional
limits on copyright subject matter more generally. The case concerned the unauthorized
reproduction of a circus poster, pictured below.
Figure 2 Bleistein v. Donaldson Circus Poster

The defendant’s primary argument was that the kind of low art represented in the poster and
its use in advertising meant that it was not the kind of fine art to which the copyright act was
directed. In the course of rejecting this argument Justice Holmes articulated the now famous
Bleistein “anti-discrimination” principle. Justice Holmes warns (at 251-252) that copyright
should not be reserved for works deemed to have a particular importance or quality, or
indeed social value, because these artistic judgments are beyond the institutional competence
of the courts.
It would be a dangerous undertaking for persons trained only to the law to
constitute themselves final judges of the worth of pictorial illustrations, outside of
the narrowest and most obvious limits. At the one extreme some works of genius
would be sure to miss appreciation. Their very novelty would make them repulsive
until the public had learned the new language in which their author spoke. It may be
more than doubted, for instance, whether the etchings of Goya or the paintings of
Manet would have been sure of protection when seen for the first time. At the other
end, copyright would be denied to pictures which appealed to a public less educated
than the judge.

55

(2) In Bleistein, The Problem Of Aesthetic Progress, And The Making Of American Copyright Law,
Barton Beebe (Columbia Law Review, 2017) argues that when Holmes declared that judges
should refrain from judging aesthetic merit he was not speaking to the standard of originality,
but rather to the dissent’s view that a work that has “no other use than that of a mere
advertisement” did not qualify for copyright protection because it did not “promote the
progress of” of knowledge as required by the Constitution. What are the implications of this
argument?
(3) The majority opinion argues that “the least pretentious picture has more originality in it
than directories and the like, which may be copyrighted.” It cites a leading copyright treatise
of the day and caselaw for that proposition, but as discussed further below, most directories
and the like are not in fact copyrightable. See Feist Publications, Inc. v. Rural Telephone Service Co.,
499 US 340 (1991).
Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir.1951)
Alfred Bell & Co was a British print producer and dealer that had secured United States copyrights in eight mezzotint
engravings of certain paintings in the public domain. The plaintiff brought an action against a dealer in lithographs that
produced and sold color lithographs of the eight mezzotints.

Circuit Judge Frank
Congressional power to authorize both patents and copyrights is contained in Article
1, § 8 of the Constitution. In passing on the validity of patents, the Supreme Court
recurrently insists that this constitutional provision governs. On this basis, pointing
to the Supreme Court’s consequent requirement that, to be valid, a patent must
disclose a high degree of uniqueness, ingenuity and inventiveness, the defendants
assert that the same requirement constitutionally governs copyrights. As several
sections of the Copyright Act — e.g., those authorizing copyrights of “reproductions
of works of art,” maps, and compilations — plainly dispense with any such high
standard, defendants are, in effect, attacking the constitutionality of those sections.
But the very language of the Constitution differentiates (a) “authors” and their
“writings” from (b) “inventors” and their “discoveries.” Those who penned the
Constitution, (many of them were themselves authors) of course, knew the difference.
The pre-revolutionary English statutes had made the distinction. In 1783, the
Continental Congress had passed a resolution recommending that the several states
enact legislation to “secure” to authors the “copyright” of their books. Twelve of the
thirteen states (in 1783-1786) enacted such statutes. Those of Connecticut and North
Carolina covered books, pamphlets, maps, and charts.
Moreover, in 1790, in the year after the adoption of the Constitution, the first
Congress enacted two statutes, separately dealing with patents and copyrights. The
patent statute, enacted April 10, 1790, 1 Stat. 109, provided that patents should issue
only if the Secretary of State, Secretary of War and the Attorney General, or any two
of them “shall deem the invention or discovery sufficiently useful and important”;
the applicant for a patent was obliged to file a specification “so particular” as “to
distinguish the invention or discovery from other things before known and used …”;
the patent was to constitute prima facie evidence that the patentee was “the first and
true inventor or … discoverer … of the thing so specified.” The Copyright Act,
enacted May 31, 1790, 1 Stat. 124, covered “maps, charts, and books”. A printed
copy of the title of any map, chart or book was to be recorded in the Clerk’s office
56

of the District Court, and a copy of the map, chart or book was to be delivered to
the Secretary of State within six months after publication. Twelve years later,
Congress in 1802, 2 Stat. 171, added, to matters that might be copyrighted,
engravings, etchings and prints.
Thus legislators peculiarly familiar with the purpose of the Constitutional grant, by
statute, imposed far less exacting standards in the case of copyrights. They
authorized the copyrighting of a mere map which, patently, calls for no considerable
uniqueness. They exacted far more from an inventor. And, while they demanded that
an official should be satisfied as to the character of an invention before a patent
issued, they made no such demand in respect of a copyright. … Accordingly, the
Constitution, as so interpreted, recognizes that the standards for patents and
copyrights are basically different.
“Original” in reference to a copyrighted work means that the particular work “owes
its origin” to the “author.”(Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57-58)
No large measure of novelty is necessary.
It is clear, then, that nothing in the Constitution commands that copyrighted matter
be strikingly unique or novel. Accordingly, we were not ignoring the Constitution
when we stated that a “copy of something in the public domain” will support a
copyright if it is a “distinguishable variation”; or when we rejected the contention
that “like a patent, a copyrighted work must be not only original, but new”, adding,
“That is not the law as is obvious in the case of maps or compendia, where later
works will necessarily be anticipated.”(Sheldon v. Metro-Goldwyn Pictures Corp., 2 Cir., 81
F.2d 49, 53. See also Ricker v. General Electric Co., 2 Cir., 162 F.2d 141, 142.) All that is
needed to satisfy both the Constitution and the statute is that the “author”
contributed something more than a “merely trivial” variation, something
recognizably “his own.” Originality in this context “means little more than a
prohibition of actual copying.” No matter how poor artistically the “author’s”
addition, it is enough if it be his own. Bleistein v. Donaldson Lithographing Co., 188 U.S.
239, 250.
On that account, we have often distinguished between the limited protection
accorded a copyright owner and the extensive protection granted a patent owner. So
we have held that “independent reproduction of a copyrighted work is not
infringement”, (Arnstein v. Edward B. Marks Music Corp., 2 Cir., 82 F.2d 275; Ricker v.
General Electric Co., 2 Cir., 162 F.2d 141, 142) whereas it is vis a vis a patent.
Correlative with the greater immunity of a patentee is the doctrine of anticipation
which does not apply to copyrights: The alleged inventor is chargeable with full
knowledge of all the prior art, although in fact he may be utterly ignorant of it. The
“author” is entitled to a copyright if he independently contrived a work completely
identical with what went before; similarly, although he obtains a valid copyright, he
has no right to prevent another from publishing a work identical with his, if not
copied from his. A patentee, unlike a copyrightee, must not merely produce
something “original”; he must also be “the first inventor or discoverer.” “Hence it is
possible to have a plurality of valid copyrights directed to closely identical or even
identical works. Moreover, none of them, if independently arrived at without copying,
will constitute an infringement of the copyright of the others.”

57

We consider untenable defendants’ suggestion that plaintiff’s mezzotints could not
validly be copyrighted because they are reproductions of works in the public domain.
Not only does the Act include “Reproductions of a work of art”, but — while
prohibiting a copyright of “the original text of any work … in the public domain” —
it explicitly provides for the copyrighting of “translations, or other versions of works
in the public domain”.
The mezzotints were such “versions.” They “originated” with those who made them,
and — on the trial judge’s findings well supported by the evidence — amply met the
standards imposed by the Constitution and the statute. There is evidence that they
were not intended to, and did not, imitate the paintings they reproduced. But even if
their substantial departures from the paintings were inadvertent, the copyrights
would be valid. A copyist’s bad eyesight or defective musculature, or a shock caused
by a clap of thunder, may yield sufficiently distinguishable variations. Having hit
upon such a variation unintentionally, the “author” may adopt it as his and copyright
it.
Accordingly, defendants’ arguments about the public domain become irrelevant.
They could be relevant only in their bearing on the issue of infringement, i.e.,
whether the defendants copied the mezzotints. But on the findings, again well
grounded in the evidence, we see no possible doubt that defendants, who did
deliberately copy the mezzotints, are infringers. For a copyright confers the exclusive
right to copy the copyrighted work — a right not to have others copy it.
Notes and questions
(1) What is a mezzotint? Mezzotint is a printmaking process involving a roughening a metal
plate with thousands of small dots pressed into a metal plate. The dots retain the ink when
the face of the plate is wiped clean. The mezzotint process can be combined with other
similar techniques, such as etching and engraving. The process was widely used in England
from the eighteenth century to reproduce portraits and other paintings, but is not common
today.
Figure 3 Thomas Gainsborough's painting The Blue Boy (left) Mezzotint (right)

(2) In Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir.1951) the Second
Circuit held that a mezzotint based on an original work of art in the public domain was

58

copyrightable under the standards imposed by the Constitution and the Copyright Act. The
District Court had held that the mezzotints were original because they necessarily embodied
the “individual conception, judgment and execution by the engraver” and the Second Circuit
affirmed on the basis that the mezzotints were a “distinguishable variation” of the public
domain originals. The court of appeals said (at 102):
It is clear, then, that nothing in the Constitution commands that copyrighted matter
be strikingly unique or novel. Accordingly, we were not ignoring the Constitution
when we stated that a “copy of something in the public domain” will support a
copyright if it is a “distinguishable variation”[.]

Applying this to the case at hand the court said (at 104-105):
There is evidence that they were not intended to, and did not, imitate the paintings
they reproduced. But even if their substantial departures from the paintings were
inadvertent, the copyrights would be valid. A copyist’s bad eyesight or defective
musculature, or a shock caused by a clap of thunder, may yield sufficiently
distinguishable variations. Having hit upon such a variation unintentionally, the
“author” may adopt it as his and copyright it.

The mezzotints were no mere imitations, according to the court, because the very process of
their production must inexorably involved substantial departures from the original – even if
those departures were inadvertent.
(2) The distinction between originality and novelty was not new to this case. In Sheldon v.
Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir. 1936) Judge Learned Hand invokes a vivid, if
implausible hypothetical to illustrate the distinction. He said (at 54):
… if by some magic a man who had never known it were to compose anew Keats’s
Ode on a Grecian Urn, he would be an ‘author,’ and, if he copyrighted it, others
might not copy that poem, though they might of course copy Keats’s.

(3) In Fred Fisher, Inc. v. Dillingham, D.C., 298 F. 145 Judge Learned Hand said (at 150)
Any subsequent person is, of course, free to use all works in the public domain as
sources for his compositions. No later work, though original, can take that from
him. But there is no reason in justice or law why he should not be compelled to
resort to the earlier works themselves, or why he should be free to use the
composition of another, who himself has not borrowed. If he claims the rights of
the public, let him use them; he picks the brains of the copyright owner as much,
whether his original composition be old or new. The defendant’s concern lest the
public should be shut off from the use of works in the public domain is therefore
illusory; no one suggests it. That domain is open to all who tread it; not to those
who invade the closes of others, however similar.

Is Hand suggesting that it is always improper to copy from a copy of a work in the public
domain, or only when the intervening copy contains some new layer of authorship that will
invariably be reproduced along with the original public domain content? If the former, then
this view obviously cannot be reconciled with Feist v. Rural Telephone (see below).

Feist
The cases addressed so far indicate a fairly relaxed standard of originality or creativity. In
Burrow Giles, a photograph was held to be sufficiently creative because, although the image
was reduced to material form by a mechanical process, the photographer executing that

59

process had made important creative and artistic choices with respect to lighting, shade and
composition. In Bleistein v. Donaldson Lithographing, Justice Holmes forcefully stated that
copyrightability is not a judgment of aesthetic or social value. Low art deployed for
commercial purposes merits the same degree of copyright protection as artistic works of
genius. In Alfred Bell, the Second Circuit held that even a mezzotint reproduction of a work
in the public domain was entitled to copyright protection because, in the course of
translating the work to a new medium, the artist could not help but create a distinguishable
variation.
In light of these cases, is there anything that would not be sufficiently creative to merit
copyright protection? The Supreme Court answered this question in the case that follows.
Figure 4 Rural Telephone Service Phone Books in Feist

Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)
Justice O’Connor delivered the opinion of the Court.
This case requires us to clarify the extent of copyright protection available to
telephone directory white pages.
I
Rural Telephone Service Company, Inc., is a certified public utility that provides
telephone service to several communities in northwest Kansas. It is subject to a state
regulation that requires all telephone companies operating in Kansas to issue
annually an updated telephone directory. Accordingly, as a condition of its monopoly
franchise, Rural publishes a typical telephone directory, consisting of white pages and
yellow pages. The white pages list in alphabetical order the names of Rural’s
subscribers, together with their towns and telephone numbers. The yellow pages list
Rural’s business subscribers alphabetically by category and feature classified

60

advertisements of various sizes. Rural distributes its directory free of charge to its
subscribers, but earns revenue by selling yellow pages advertisements.
Feist Publications, Inc., is a publishing company that specializes in area-wide
telephone directories. Unlike a typical directory, which covers only a particular calling
area, Feist’s area-wide directories cover a much larger geographical range, reducing
the need to call directory assistance or consult multiple directories. The Feist
directory that is the subject of this litigation covers 11 different telephone service
areas in 15 counties and contains 46,878 white pages listings—compared to Rural’s
approximately 7,700 listings. Like Rural’s directory, Feist’s is distributed free of
charge and includes both white pages and yellow pages. Feist and Rural compete
vigorously for yellow pages advertising.
As the sole provider of telephone service in its service area, Rural obtains subscriber
information quite easily. Persons desiring telephone service must apply to Rural and
provide their names and addresses; Rural then assigns them a telephone number.
Feist is not a telephone company, let alone one with monopoly status, and therefore
lacks independent access to any subscriber information. To obtain white pages
listings for its area-wide directory, Feist approached each of the 11 telephone
companies operating in northwest Kansas and offered to pay for the right to use its
white pages listings.
Of the 11 telephone companies, only Rural refused to license its listings to Feist.
Rural’s refusal created a problem for Feist, as omitting these listings would have left
a gaping hole in its area-wide directory, rendering it less attractive to potential yellow
pages advertisers. In a decision subsequent to that which we review here, the District
Court determined that this was precisely the reason Rural refused to license its
listings. The refusal was motivated by an unlawful purpose “to extend its monopoly
in telephone service to a monopoly in yellow pages advertising.” Rural Telephone
Service Co. v. Feist Publications, Inc., 737 F. Supp. 610, 622 (Kan. 1990).
Unable to license Rural’s white pages listings, Feist used them without Rural’s
consent. Feist began by removing several thousand listings that fell outside the
geographic range of its area-wide directory, then hired personnel to investigate the
4,935 that remained. These employees verified the data reported by Rural and sought
to obtain additional information. As a result, a typical Feist listing includes the
individual’s street address; most of Rural’s listings do not. Notwithstanding these
additions, however, 1,309 of the 46,878 listings in Feist’s 1983 directory were
identical to listings in Rural’s 1982-1983 white pages. Four of these were fictitious
listings that Rural had inserted into its directory to detect copying.
Rural sued for copyright infringement in the District Court for the District of
Kansas taking the position that Feist, in compiling its own directory, could not use
the information contained in Rural’s white pages. Rural asserted that Feist’s
employees were obliged to travel door-to-door or conduct a telephone survey to
discover the same information for themselves. Feist responded that such efforts
were economically impractical and, in any event, unnecessary because the
information copied was beyond the scope of copyright protection. The District
Court granted summary judgment to Rural, explaining that “courts have consistently
held that telephone directories are copyrightable” and citing a string of lower court

61

decisions. In an unpublished opinion, the Court of Appeals for the Tenth Circuit
affirmed “for substantially the reasons given by the district court.” We granted
certiorari, to determine whether the copyright in Rural’s directory protects the names,
towns, and telephone numbers copied by Feist.
II
A
This case concerns the interaction of two well-established propositions. The first is
that facts are not copyrightable; the other, that compilations of facts generally are.
Each of these propositions possesses an impeccable pedigree. That there can be no
valid copyright in facts is universally understood. The most fundamental axiom of
copyright law is that “no author may copyright his ideas or the facts he narrates.”
Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 556 (1985). Rural
wisely concedes this point, noting in its brief that “facts and discoveries, of course,
are not themselves subject to copyright protection.” At the same time, however, it is
beyond dispute that compilations of facts are within the subject matter of copyright.
Compilations were expressly mentioned in the Copyright Act of 1909, and again in
the Copyright Act of 1976.
There is an undeniable tension between these two propositions. Many compilations
consist of nothing but raw data— i.e., wholly factual information not accompanied
by any original written expression. On what basis may one claim a copyright in such
a work? Common sense tells us that 100 uncopyrightable facts do not magically
change their status when gathered together in one place. Yet copyright law seems to
contemplate that compilations that consist exclusively of facts are potentially within
its scope.
The key to resolving the tension lies in understanding why facts are not
copyrightable. The sine qua non of copyright is originality. To qualify for copyright
protection, a work must be original to the author. Original, as the term is used in
copyright, means only that the work was independently created by the author (as
opposed to copied from other works), and that it possesses at least some minimal
degree of creativity. To be sure, the requisite level of creativity is extremely low; even
a slight amount will suffice. The vast majority of works make the grade quite easily,
as they possess some creative spark, “no matter how crude, humble or obvious” it
might be. Originality does not signify novelty; a work may be original even though it
closely resembles other works so long as the similarity is fortuitous, not the result of
copying. To illustrate, assume that two poets, each ignorant of the other, compose
identical poems. Neither work is novel, yet both are original and, hence,
copyrightable. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F. 2d 49, 54 (CA2 1936).
Originality is a constitutional requirement. The source of Congress’ power to enact
copyright laws is Article I, § 8, cl. 8, of the Constitution, which authorizes Congress
to “secur[e] for limited Times to Authors . . . the exclusive Right to their respective
Writings.” In two decisions from the late 19th century—The Trade-Mark Cases, 100 U.
S. 82 (1879); and Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)—this
Court defined the crucial terms “authors” and “writings.” In so doing, the Court
made it unmistakably clear that these terms presuppose a degree of originality.

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In The Trade-Mark Cases, the Court addressed the constitutional scope of “writings.”
For a particular work to be classified “under the head of writings of authors,” the
Court determined, “originality is required.” 100 U.S., at 94. The Court explained that
originality requires independent creation plus a modicum of creativity: “While the
word writings may be liberally construed, as it has been, to include original designs
for engraving, prints, &c., it is only such as are original, and are founded in the
creative powers of the mind. The writings which are to be protected are the fruits of
intellectual labor, embodied in the form of books, prints, engravings, and the like.” Ibid.
(emphasis in original).
In Burrow-Giles, the Court distilled the same requirement from the Constitution’s use
of the word “authors.” The Court defined “author,” in a constitutional sense, to
mean “he to whom anything owes its origin; originator; maker.” As in The TradeMark Cases, the Court emphasized the creative component of originality. It described
copyright as being limited to “original intellectual conceptions of the author,”, and
stressed the importance of requiring an author who accuses another of infringement
to prove “the existence of those facts of originality, of intellectual production, of
thought, and conception.”
The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles
remains the touchstone of copyright protection today. It is the very “premise of
copyright law.” Miller v. Universal City Studios, Inc., 650 F. 2d 1365, 1368 (CA5 1981).
Leading scholars agree on this point. As one pair of commentators succinctly puts it:
“The originality requirement is constitutionally mandated for all works.” Patterson &
Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory
Compilations, 36 UCLA LAW REVIEW 719, 763, n. 155 (1989) (emphasis in original).
Accord, Nimmer (“originality is a statutory as well as a constitutional requirement”);
(“a modicum of intellectual labor . . . clearly constitutes an essential constitutional
element”).
It is this bedrock principle of copyright that mandates the law’s seemingly disparate
treatment of facts and factual compilations. “No one may claim originality as to
facts.” This is because facts do not owe their origin to an act of authorship. The
distinction is one between creation and discovery: The first person to find and report
a particular fact has not created the fact; he or she has merely discovered its existence.
To borrow from Burrow-Giles, one who discovers a fact is not its “maker” or
“originator.” The discoverer merely finds and records. Census takers, for example,
do not “create” the population figures that emerge from their efforts; in a sense, they
copy these figures from the world around them. Census data therefore do not trigger
copyright because these data are not “original” in the constitutional sense. The same
is true of all facts—scientific, historical, biographical, and news of the day. “[T]hey
may not be copyrighted and are part of the public domain available to every person.”
Miller, supra, at 1369.
Factual compilations, on the other hand, may possess the requisite originality. The
compilation author typically chooses which facts to include, in what order to place
them, and how to arrange the collected data so that they may be used effectively by
readers. These choices as to selection and arrangement, so long as they are made
independently by the compiler and entail a minimal degree of creativity, are
sufficiently original that Congress may protect such compilations through the
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copyright laws. Thus, even a directory that contains absolutely no protectible written
expression, only facts, meets the constitutional minimum for copyright protection if
it features an original selection or arrangement.
This protection is subject to an important limitation. The mere fact that a work is
copyrighted does not mean that every element of the work may be protected.
Originality remains the sine qua non of copyright; accordingly, copyright protection
may extend only to those components of a work that are original to the author. Thus,
if the compilation author clothes facts with an original collocation of words, he or
she may be able to claim a copyright in this written expression. Others may copy the
underlying facts from the publication, but not the precise words used to present
them. In Harper & Row, for example, we explained that President Ford could not
prevent others from copying bare historical facts from his autobiography, but that he
could prevent others from copying his “subjective descriptions and portraits of
public figures.” Where the compilation author adds no written expression but rather
lets the facts speak for themselves, the expressive element is more elusive. The only
conceivable expression is the manner in which the compiler has selected and
arranged the facts. Thus, if the selection and arrangement are original, these elements
of the work are eligible for copyright protection. No matter how original the format,
however, the facts themselves do not become original through association.
This inevitably means that the copyright in a factual compilation is thin.
Notwithstanding a valid copyright, a subsequent compiler remains free to use the
facts contained in another’s publication to aid in preparing a competing work, so
long as the competing work does not feature the same selection and arrangement. As
one commentator explains it: “[N]o matter how much original authorship the work
displays, the facts and ideas it exposes are free for the taking . . . . [T]he very same
facts and ideas may be divorced from the context imposed by the author, and
restated or reshuffled by second comers, even if the author was the first to discover
the facts or to propose the ideas.” Ginsburg 1868.
It may seem unfair that much of the fruit of the compiler’s labor may be used by
others without compensation. As Justice Brennan has correctly observed, however,
this is not “some unforeseen byproduct of a statutory scheme.” Harper & Row, 471
U. S., at 589 (dissenting opinion). It is, rather, “the essence of copyright,” and a
constitutional requirement. The primary objective of copyright is not to reward the
labor of authors, but “[t]o promote the Progress of Science and useful Arts.” Art. I, §
8, cl. 8. Accord, Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). To
this end, copyright assures authors the right to their original expression, but
encourages others to build freely upon the ideas and information conveyed by a
work. This principle, known as the idea/expression or fact/expression dichotomy,
applies to all works of authorship. As applied to a factual compilation, assuming the
absence of original written expression, only the compiler’s selection and arrangement
may be protected; the raw facts may be copied at will. This result is neither unfair
nor unfortunate. It is the means by which copyright advances the progress of science
and art.
This Court has long recognized that the fact/expression dichotomy limits severely
the scope of protection in fact-based works. More than a century ago, the Court
observed: “The very object of publishing a book on science or the useful arts is to
64

communicate to the world the useful knowledge which it contains. But this object
would be frustrated if the knowledge could not be used without incurring the guilt of
piracy of the book.” Baker v. Selden, 101 U.S. 99, 103 (1880). We reiterated this point
in Harper & Row:
“No author may copyright facts or ideas. The copyright is limited to those aspects
of the work—termed ‘expression’—that display the stamp of the author’s originality.
“Copyright does not prevent subsequent users from copying from a prior author’s
work those constituent elements that are not original—for example . . . facts, or
materials in the public domain—as long as such use does not unfairly appropriate
the author’s original contributions.” 471 U.S., at 547-548 (citation omitted).

This, then, resolves the doctrinal tension: Copyright treats facts and factual
compilations in a wholly consistent manner. Facts, whether alone or as part of a
compilation, are not original and therefore may not be copyrighted. A factual
compilation is eligible for copyright if it features an original selection or arrangement
of facts, but the copyright is limited to the particular selection or arrangement. In no
event may copyright extend to the facts themselves.
B
As we have explained, originality is a constitutionally mandated prerequisite for
copyright protection. The Court’s decisions announcing this rule predate the
Copyright Act of 1909, but ambiguous language in the 1909 Act caused some lower
courts temporarily to lose sight of this requirement.
The 1909 Act embodied the originality requirement, but not as clearly as it might
have. The subject matter of copyright was set out in §§ 3 and 4 of the Act. Section 4
stated that copyright was available to “all the writings of an author.” By using the
words “writings” and “author”—the same words used in Article I, § 8, of the
Constitution and defined by the Court in The Trade-Mark Cases and Burrow-Giles—the
statute necessarily incorporated the originality requirement articulated in the Court’s
decisions. It did so implicitly, however, thereby leaving room for error.
Section 3 was similarly ambiguous. It stated that the copyright in a work protected
only “the copyrightable component parts of the work.” It thus stated an important
copyright principle, but failed to identify the specific characteristic—originality—that
determined which component parts of a work were copyrightable and which were
not.
Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect
statutory language. They understood from this Court’s decisions that there could be
no copyright without originality. As explained in the Nimmer treatise:
“The 1909 Act neither defined originality, nor even expressly required that a work
be ‘original’ in order to command protection. However, the courts uniformly
inferred the requirement from the fact that copyright protection may only be
claimed by ‘authors’. . . . It was reasoned that since an author is ‘the … creator,
originator’ it follows that a work is not the product of an author unless the work is
original.” Nimmer § 2.01.

But some courts misunderstood the statute. See, e.g., Leon v. Pacific Telephone &
Telegraph Co., 91 F. 2d 484 (CA9 1937); Jeweler’s Circular Publishing Co. v. Keystone
65

Publishing Co., 281 F. 83 (CA2 1922). These courts ignored §§ 3 and 4, focusing their
attention instead on § 5 of the Act. Section 5, however, was purely technical in
nature: It provided that a person seeking to register a work should indicate on the
application the type of work, and it listed 14 categories under which the work might
fall. One of these categories was “books, including composite and cyclopædic works,
directories, gazetteers, and other compilations.” § 5(a). Section 5 did not purport to
say that all compilations were automatically copyrightable. Indeed, it expressly
disclaimed any such function, pointing out that “the subject-matter of copyright is
defined in section four.” Nevertheless, the fact that factual compilations were
mentioned specifically in § 5 led some courts to infer erroneously that directories and
the like were copyrightable per se, without any further or precise showing of
original—personal—authorship.
Making matters worse, these courts developed a new theory to justify the protection
of factual compilations. Known alternatively as “sweat of the brow” or “industrious
collection,” the underlying notion was that copyright was a reward for the hard work
that went into compiling facts. The classic formulation of the doctrine appeared in
Jeweler’s Circular Publishing Co., 281 F., at 88:
“The right to copyright a book upon which one has expended labor in its
preparation does not depend upon whether the materials which he has collected
consist or not of matters which are publici juris, or whether such materials show
literary skill or originality, either in thought or in language, or anything more than
industrious collection. The man who goes through the streets of a town and puts
down the names of each of the inhabitants, with their occupations and their street
number, acquires material of which he is the author” (emphasis added).

The “sweat of the brow” doctrine had numerous flaws, the most glaring being that it
extended copyright protection in a compilation beyond selection and arrangement—
the compiler’s original contributions—to the facts themselves. Under the doctrine,
the only defense to infringement was independent creation. A subsequent compiler
was “not entitled to take one word of information previously published,” but rather
had to “independently work out the matter for himself, so as to arrive at the same
result from the same common sources of information.” Id., at 88-89 (internal
quotation marks omitted). “Sweat of the brow” courts thereby eschewed the most
fundamental axiom of copyright law—that no one may copyright facts or ideas.
…
Decisions of this Court applying the 1909 Act make clear that the statute did not
permit the “sweat of the brow” approach. The best example is International News
Service v. Associated Press, 248 U.S. 215 (1918). In that decision, the Court stated
unambiguously that the 1909 Act conferred copyright protection only on those
elements of a work that were original to the author. International News Service had
conceded taking news reported by Associated Press and publishing it in its own
newspapers. Recognizing that § 5 of the Act specifically mentioned “‘periodicals,
including newspapers,’” § 5(b), the Court acknowledged that news articles were
copyrightable. It flatly rejected, however, the notion that the copyright in an article
extended to the factual information it contained: “The news element— the
information respecting current events contained in the literary production—is not

66

the creation of the writer, but is a report of matters that ordinarily are publici juris; it
is the history of the day.”
Without a doubt, the “sweat of the brow” doctrine flouted basic copyright principles.
Throughout history, copyright law has “recognized a greater need to disseminate
factual works than works of fiction or fantasy.” Harper & Row, 471 U.S., at 563. But
“sweat of the brow” courts took a contrary view; they handed out proprietary
interests in facts and declared that authors are absolutely precluded from saving time
and effort by relying upon the facts contained in prior works. In truth, “it is just such
wasted effort that the proscription against the copyright of ideas and facts . . . [is]
designed to prevent.” Rosemont Enterprises, Inc. v. Random House, Inc., 366 F. 2d 303,
310 (CA2 1966), cert. denied, 385 U.S. 1009 (1967). “Protection for the fruits of such
research may in certain circumstances be available under a theory of unfair
competition. But to accord copyright protection on this basis alone distorts basic
copyright principles in that it creates a monopoly in public domain materials without
the necessary justification of protecting and encouraging the creation of ‘writings’ by
‘authors.’” Nimmer § 3.04.
C
“Sweat of the brow” decisions did not escape the attention of the Copyright Office.
When Congress decided to over-haul the copyright statute and asked the Copyright
Office to study existing problems, see Mills Music, Inc. v. Snyder, 469 U.S. 153, 159
(1985), the Copyright Office promptly recommended that Congress clear up the
confusion in the lower courts as to the basic standards of copyrightability. The
Register of Copyrights explained in his first report to Congress that “originality” was
a “basic requisite” of copyright under the 1909 Act, but that “the absence of any
reference to [originality] in the statute seems to have led to misconceptions as to
what is copyrightable matter.” Report of the Register of Copyrights on the General
Revision of the U.S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm.
Print 1961). The Register suggested making the originality requirement explicit. Ibid.
Congress took the Register’s advice. In enacting the Copyright Act of 1976,
Congress dropped the reference to “all the writings of an author” and replaced it
with the phrase “original works of authorship.” 17 U.S.C. § 102(a). In making explicit
the originality requirement, Congress announced that it was merely clarifying existing
law: “The two fundamental criteria of copyright protection [are] originality and
fixation in tangible form . . . . The phrase ‘original works of authorship,’ which is
purposely left undefined, is intended to incorporate without change the standard of
originality established by the courts under the present [1909] copyright statute.”
House Report p. 51 (1976) (emphasis added); Senate Report p. 50 (1975) (emphasis
added). This sentiment was echoed by the Copyright Office: “Our intention here is
to maintain the established standards of originality. . . .” Supplementary Report of
the Register of Copyrights on the General Revision of U.S. Copyright Law, 89th
Cong., 1st Sess., pt. 6, p. 3 (H. Judiciary Comm. Print 1965) (emphasis added).
To ensure that the mistakes of the “sweat of the brow” courts would not be repeated,
Congress took additional measures. For example, § 3 of the 1909 Act had stated that
copyright protected only the “copyrightable component parts” of a work, but had
not identified originality as the basis for distinguishing those component parts that

67

were copyrightable from those that were not. The 1976 Act deleted this section and
replaced it with § 102(b), which identifies specifically those elements of a work for
which copyright is not available: “In no case does copyright protection for an
original work of authorship extend to any idea, procedure, process, system, method
of operation, concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work.” Section 102(b) is
universally understood to prohibit any copyright in facts. As with § 102(a), Congress
emphasized that § 102(b) did not change the law, but merely clarified it: “Section
102(b) in no way enlarges or contracts the scope of copyright protection under the
present law. Its purpose is to restate . . . that the basic dichotomy between expression
and idea remains unchanged.” House Report at 57; Senate Report at 54.
Congress took another step to minimize confusion by deleting the specific mention
of “directories . . . and other compilations” in § 5 of the 1909 Act. As mentioned,
this section had led some courts to conclude that directories were copyrightable per
se and that every element of a directory was protected. In its place, Congress enacted
two new provisions. First, to make clear that compilations were not copyrightable
per se, Congress provided a definition of the term “compilation.” Second, to make
clear that the copyright in a compilation did not extend to the facts themselves,
Congress enacted § 103.
The definition of “compilation” is found in § 101 of the 1976 Act. It defines a
“compilation” in the copyright sense as “a work formed by the collection and
assembling of preexisting materials or of data that are selected, coordinated, or
arranged in such a way that the resulting work as a whole constitutes an original
work of authorship” (emphasis added).
The purpose of the statutory definition is to emphasize that collections of facts are
not copyrightable per se. It conveys this message through its tripartite structure, as
emphasized above by the italics. The statute identifies three distinct elements and
requires each to be met for a work to qualify as a copyrightable compilation: (1) the
collection and assembly of pre-existing material, facts, or data; (2) the selection,
coordination, or arrangement of those materials; and (3) the creation, by virtue of the
particular selection, coordination, or arrangement, of an “original” work of
authorship.
At first glance, the first requirement does not seem to tell us much. It merely
describes what one normally thinks of as a compilation—a collection of pre-existing
material, facts, or data. What makes it significant is that it is not the sole requirement.
It is not enough for copyright purposes that an author collects and assembles facts.
To satisfy the statutory definition, the work must get over two additional hurdles. In
this way, the plain language indicates that not every collection of facts receives
copyright protection. Otherwise, there would be a period after “data.”
The third requirement is also illuminating. It emphasizes that a compilation, like any
other work, is copyrightable only if it satisfies the originality requirement (“an
original work of authorship”). Although § 102 states plainly that the originality
requirement applies to all works, the point was emphasized with regard to
compilations to ensure that courts would not repeat the mistake of the “sweat of the
brow” courts by concluding that fact-based works are treated differently and

68

measured by some other standard. As Congress explained it, the goal was to “make
plain that the criteria of copyrightable subject matter stated in section 102 apply with
full force to works . . . containing preexisting material.” House Report at 57; Senate
Report at 55.
The key to the statutory definition is the second requirement. It instructs courts that,
in determining whether a fact-based work is an original work of authorship, they
should focus on the manner in which the collected facts have been selected,
coordinated, and arranged. This is a straightforward application of the originality
requirement. Facts are never original, so the compilation author can claim originality,
if at all, only in the way the facts are presented. To that end, the statute dictates that
the principal focus should be on whether the selection, coordination, and
arrangement are sufficiently original to merit protection.
Not every selection, coordination, or arrangement will pass muster. This is plain
from the statute. It states that, to merit protection, the facts must be selected,
coordinated, or arranged “in such a way” as to render the work as a whole original.
This implies that some “ways” will trigger copyright, but that others will not.
Otherwise, the phrase “in such a way” is meaningless and Congress should have
defined “compilation” simply as “a work formed by the collection and assembly of
preexisting materials or data that are selected, coordinated, or arranged.” That
Congress did not do so is dispositive. In accordance with the established principle
that a court should give effect, if possible, to every clause and word of a statute, we
conclude that the statute envisions that there will be some fact-based works in which
the selection, coordination, and arrangement are not sufficiently original to trigger
copyright protection.
As discussed earlier, however, the originality requirement is not particularly stringent.
A compiler may settle upon a selection or arrangement that others have used;
novelty is not required. Originality requires only that the author make the selection
or arrangement independently (i.e., without copying that selection or arrangement
from another work), and that it display some minimal level of creativity. Presumably,
the vast majority of compilations will pass this test, but not all will. There remains a
narrow category of works in which the creative spark is utterly lacking or so trivial as
to be virtually nonexistent. See generally Bleistein v. Donaldson Lithographing Co., 188
U.S. 239, 251 (1903) (referring to “the narrowest and most obvious limits”). Such
works are incapable of sustaining a valid copyright.
…
Even if a work qualifies as a copyrightable compilation, it receives only limited
protection. This is the point of § 103 of the Act. Section 103 explains that “[t]he
subject matter of copyright . . . includes compilations,” § 103(a), but that copyright
protects only the author’s original contributions—not the facts or information
conveyed:
“The copyright in a compilation . . . extends only to the material contributed by the
author of such work, as distinguished from the preexisting material employed in the
work, and does not imply any exclusive right in the preexisting material.” § 103(b).

As § 103 makes clear, copyright is not a tool by which a compilation author may
keep others from using the facts or data he or she has collected. “The most
69

important point here is one that is commonly misunderstood today: copyright. . . has
no effect one way or the other on the copyright or public domain status of the
preexisting material.” H. R. Rep., at 57; S. Rep., at 55. The 1909 Act did not require,
as “sweat of the brow” courts mistakenly assumed, that each subsequent compiler
must start from scratch and is precluded from relying on research undertaken by
another. See, e.g., Jeweler’s Circular Publishing Co., 281 F., at 88-89. Rather, the facts
contained in existing works may be freely copied because copyright protects only the
elements that owe their origin to the compiler—the selection, coordination, and
arrangement of facts.
In summary, the 1976 revisions to the Copyright Act leave no doubt that originality,
not “sweat of the brow,” is the touchstone of copyright protection in directories and
other fact-based works. Nor is there any doubt that the same was true under the
1909 Act. The 1976 revisions were a direct response to the Copyright Office’s
concern that many lower courts had misconstrued this basic principle, and Congress
emphasized repeatedly that the purpose of the revisions was to clarify, not change,
existing law. The revisions explain with painstaking clarity that copyright requires
originality, § 102(a); that facts are never original, § 102(b); that the copyright in a
compilation does not extend to the facts it contains, § 103(b); and that a compilation
is copyrightable only to the extent that it features an original selection, coordination,
or arrangement, § 101.
The 1976 revisions have proven largely successful in steering courts in the right
direction. A good example is Miller v. Universal City Studios, Inc., 650 F. 2d, at 13691370: “A copyright in a directory . . . is properly viewed as resting on the originality
of the selection and arrangement of the factual material, rather than on the
industriousness of the efforts to develop the information. Copyright protection does
not extend to the facts themselves, and the mere use of information contained in a
directory without a substantial copying of the format does not constitute
infringement” (citation omitted). Additionally, the Second Circuit, which almost 70
years ago issued the classic formulation of the “sweat of the brow” doctrine in
Jeweler’s Circular Publishing Co., has now fully repudiated the reasoning of that decision.
See, e.g., Financial Information, Inc. v. Moody’s Investors Service, Inc., 808 F. 2d 204, 207
(CA2 1986), cert. denied, 484 U.S. 820 (1987); Financial Information, Inc. v. Moody’s
Investors Service, Inc., 751 F. 2d 501, 510 (CA2 1984) (Newman, J., concurring);
Hoehling v. Universal City Studios, Inc., 618 F. 2d 972, 979 (CA2 1980). Even those
scholars who believe that “industrious collection” should be rewarded seem to
recognize that this is beyond the scope of existing copyright law.
III
There is no doubt that Feist took from the white pages of Rural’s directory a
substantial amount of factual information. At a minimum, Feist copied the names,
towns, and telephone numbers of 1,309 of Rural’s subscribers. Not all copying,
however, is copyright infringement. To establish infringement, two elements must be
proven: (1) ownership of a valid copyright, and (2) copying of constituent elements
of the work that are original. See Harper & Row, 471 U.S., at 548. The first element is
not at issue here; Feist appears to concede that Rural’s directory, considered as a
whole, is subject to a valid copyright because it contains some foreword text, as well
as original material in its yellow pages advertisements.
70

The question is whether Rural has proved the second element. In other words, did
Feist, by taking 1,309 names, towns, and telephone numbers from Rural’s white
pages, copy anything that was “original” to Rural? Certainly, the raw data does not
satisfy the originality requirement. Rural may have been the first to discover and
report the names, towns, and telephone numbers of its subscribers, but this data
does not owe its origin to Rural. Rather, these bits of information are
uncopyrightable facts; they existed before Rural reported them and would have
continued to exist if Rural had never published a telephone directory. The originality
requirement rules out protecting names, addresses, and telephone numbers of which
the plaintiff by no stretch of the imagination could be called the author.
Rural essentially concedes the point by referring to the names, towns, and telephone
numbers as “preexisting material.” Section 103(b) states explicitly that the copyright
in a compilation does not extend to “the preexisting material employed in the work.”
The question that remains is whether Rural selected, coordinated, or arranged these
uncopyrightable facts in an original way. As mentioned, originality is not a stringent
standard; it does not require that facts be presented in an innovative or surprising
way. It is equally true, however, that the selection and arrangement of facts cannot be
so mechanical or routine as to require no creativity whatsoever. The standard of
originality is low, but it does exist. As this Court has explained, the Constitution
mandates some minimal degree of creativity, see The Trade-Mark Cases, 100 U.S., at
94; and an author who claims infringement must prove “the existence of . . .
intellectual production, of thought, and conception.” Burrow-Giles, supra, at 59-60.
The selection, coordination, and arrangement of Rural’s white pages do not satisfy
the minimum constitutional standards for copyright protection. As mentioned at the
outset, Rural’s white pages are entirely typical. Persons desiring’ telephone service in
Rural’s service area fill out an application and Rural issues them a telephone number.
In preparing its white pages, Rural simply takes the data provided by its subscribers
and lists it alphabetically by surname. The end product is a garden-variety white
pages directory, devoid of even the slightest trace of creativity.
Rural’s selection of listings could not be more obvious: It publishes the most basic
information—name, town, and telephone number—about each person who applies
to it for telephone service. This is “selection” of a sort, but it lacks the modicum of
creativity necessary to transform mere selection into copyrightable expression. Rural
expended sufficient effort to make the white pages directory useful, but insufficient
creativity to make it original.
We note in passing that the selection featured in Rural’s white pages may also fail the
originality requirement for another reason. Feist points out that Rural did not truly
“select” to publish the names and telephone numbers of its subscribers; rather, it was
required to do so by the Kansas Corporation Commission as part of its monopoly
franchise. Accordingly, one could plausibly conclude that this selection was dictated
by state law, not by Rural.
Nor can Rural claim originality in its coordination and arrangement of facts. The
white pages do nothing more than list Rural’s subscribers in alphabetical order. This
arrangement may, technically speaking, owe its origin to Rural; no one disputes that
Rural undertook the task of alphabetizing the names itself. But there is nothing
71

remotely creative about arranging names alphabetically in a white pages directory. It
is an age-old practice, firmly rooted in tradition and so commonplace that it has
come to be expected as a matter of course. It is not only unoriginal, it is practically
inevitable. This time-honored tradition does not possess the minimal creative spark
required by the Copyright Act and the Constitution.
We conclude that the names, towns, and telephone numbers copied by Feist were
not original to Rural and therefore were not protected by the copyright in Rural’s
combined white and yellow pages directory. As a constitutional matter, copyright
protects only those constituent elements of a work that possess more than a de
minimis quantum of creativity. Rural’s white pages, limited to basic subscriber
information and arranged alphabetically, fall short of the mark. As a statutory matter,
17 U.S. C. § 101 does not afford protection from copying to a collection of facts that
are selected, coordinated, and arranged in a way that utterly lacks originality. Given
that some works must fail, we cannot imagine a more likely candidate. Indeed, were
we to hold that Rural’s white pages pass muster, it is hard to believe that any
collection of facts could fail.
Because Rural’s white pages lack the requisite originality, Feist’s use of the listings
cannot constitute infringement. This decision should not be construed as demeaning
Rural’s efforts in compiling its directory, but rather as making clear that copyright
rewards originality, not effort. As this Court noted more than a century ago, “great
praise may be due to the plaintiffs for their industry and enterprise in publishing this
paper, yet the law does not contemplate their being rewarded in this way.” Baker v.
Selden, 101 U. S., at 105.
The judgment of the Court of Appeals is Reversed.
Justice Blackmun concurs in the judgment.
Notes and questions
(1) In Feist Publications, Inc. v. Rural Telephone Service Co., 499 US 340 (1991), a unanimous
Supreme Court held that originality is a Constitutional and statutory prerequisite for
copyright protection: indeed, (at 345) “The sine qua non of copyright is originality.”
Originality, as the term is used in copyright law, means that the work was independently
created by the author and possesses “at least some minimal degree of creativity.”
(2) Why does the Court reject the labor theory of copyright reflected in “sweat of the brow
decisions” or “industrious collection,” seen in cases such as the Second Circuit’s 1922
decision in Jeweler’s Circular v. Keystone Publishing?
(3) What is creativity? What degree of creativity is required to make a work original?
(4) What does Feist tell us about the copyrightability of facts and collections of facts?
(5) Was the alphabetical listing of names and addressed unprotectable because it was not
creative, because it was functional, or both?
(6) How broadly should the courts understand the Constitutional term “writings”? Should
we treat writings simply limiting copyright protection to anything fixed in material form, or
does it mean something more than that? Arguably, writing means not just fixed, but also
something that the ability to express. If so, then where do we draw the line between writing
72

that humans can read and instructions to a machine that produce an effect, like the
instructions a computer gives to a processor or the instructions that a piano roll gives to a
player piano?
The implications of thin copyright after Feist
Even if Rural Telephone’s white pages had somehow demonstrated the necessary level of
creativity to obtain copyright protection, it may have still been possible to copy all of the
relevant information in that directory without infringing the copyright.
Justice O’Connor explained that any resulting copyright in a factual compilation was
inevitably thin. The facts in a compilation can be recycled and organized with a different
selection and arrangement with no resulting copyright liability. Justice O’Connor explained
(at 349)
This inevitably means that the copyright in a factual compilation is thin.
Notwithstanding a valid copyright, a subsequent compiler remains free to use the
facts contained in another’s publication to aid in preparing a competing work, so
long as the competing work does not feature the same selection and arrangement.

This is also made clear in the Copyright Act of 1976 itself. The subject matter of copyright
includes compilations, but that copyright protects only the author’s original contributions—
not the facts or information conveyed.
17 U.S. Code § 103(b).
The copyright in a compilation . . . extends only to the material contributed by the
author of such work, as distinguished from the preexisting material employed in the
work, and does not imply any exclusive right in the preexisting material.
As Section 103 makes clear, copyright is not a tool by which a compilation author may keep
others from using the facts or data he or she has collected.

The Monkey Selfie and Computer Generated Works
[Placeholder]

Originality and Derivative Works
The Copyright Act instructs that copyright protection extends to “original works of
authorship fixed in any tangible medium of expression,” see Section 102(a), and we have
already considered the implications of the originality requirement in general terms in the text
above. Here we consider how the originality requirement—apparently the sine qua non of
copyright—relates to derivative works. Derivative works are part of the subject matter of
copyright, they are defined (somewhat imprecisely) as “A work based upon one or more
preexisting works.”
It seems obvious that a derivative work is more than an exact copy of the original, but the
harder question is how much more is required for an inexact copy to be a copyrightable
work itself?

73

L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976)
Oakes, Circuit Judge23
Uncle Sam mechanical banks have been on the American scene at least since June 8,
1886, when Design Patent No. 16,728, issued on a toy savings bank of its type. The
basic delightful design has long since been in the public domain. The banks are well
documented in collectors’ books and known to the average person interested in
Americana. A description of the bank is that Uncle Sam, dressed in his usual stove
pipe hat, blue full dress coat, starred vest and red and white striped trousers, and
leaning on his umbrella, stands on a four- or five-inch wide base, on which sits his
carpetbag. A coin may be placed in Uncle Sam’s extended hand. When a lever is
pressed, the arm lowers, and the coin falls into the bag, while Uncle Sam’s whiskers
move up and down. The base has an embossed American eagle on it with the words
“Uncle Sam” on streamers above it, as well as the word “Bank” on each side. Such a
bank is listed in a number of collectors’ books, the most recent of which may be F.
H. Griffith, Mechanical Banks (1972 ed.) where it was listed as No. 280, and is said to
be not particularly rare.
Appellant Jeffrey Snyder doing business as “J.S.N.Y.” obtained a registration of
copyright on a plastic “Uncle Sam bank” in Class G (“Works of Art”) as “sculpture”
on January 23, 1975. According to Snyder’s affidavit, in January, 1974, he had seen a
cast metal antique Uncle Sam bank with an overall height of the figure and base of
11 inches.1
Footnote 1: No cast iron antique bank was introduced in evidence below. A cast metal replica bank was,
and the court below, the parties, the witnesses, and this court have treated the case as if the appellants’
plastic bank were to be compared to the cast metal replica.

In April, 1974, he flew to Hong Kong to arrange for the design and eventual
manufacture of replicas of the bank as Bicentennial items, taking the cast metal
Uncle Sam bank with him. His Hong Kong buying agent selected a firm, “Unitoy,”
to make the plastic “prototype” because of its price and the quality of its work.
Snyder wanted his bank to be made of plastic and to be shorter than the cast metal
sample “in order to fit into the required price range and quality and quantity of
material to be used.” The figure of Uncle Sam was thus shortened from 11 to nine
inches, and the base shortened and narrowed. It was also decided, Snyder averred, to
change the shape of the carpetbag and to include the umbrella in a one-piece mold
for the Uncle Sam figure, “so as not to have a problem with a loose umbrella or a
separate molding process.” The Unitoy representative made his sketches while
looking at the cast metal bank. After a “clay model” was made, a plastic “prototype”
was approved by Snyder and his order placed in May, 1974. The plastic bank carried
the legend “© Copyright J.S.N.Y.” and was assertedly first “published” on October
15, 1974, before being filed with the Register of Copyrights in January, 1975.
Appellee Batlin is also in the novelty business and as early as August 9, 1974, ordered
30 cartons of cast iron Uncle Sam mechanical banks from Taiwan where its president
had seen the bank made. When he became aware of the existence of a plastic bank,
23 Joined by Chief Judge Kaufman, Judges Feinberg, Mansfield, Mulligan, Gurfein. Judge Meskill dissented,

joined by Judges Timbers and Van Graafeiland.

74

which he considered “an almost identical copy” of the cast iron bank, Batlin’s trading
company in Hong Kong procured a manufacturer and the president of Batlin
ordered plastic copies also. Beginning in April, 1975, Batlin was notified by the
United States Customs Service that the plastic banks it was receiving were covered
by appellants’ copyright. In addition the Customs Service was also refusing entry to
cast iron banks previously ordered, according to the Batlin affidavit. Thus Batlin
instituted suit for a judgment declaring appellants’ copyright void and for damages
for unfair competition and restraint of trade. The sole question on this appeal is
whether Judge Metzner abused his discretion in granting Batlin a preliminary
injunction. We find that he did not.
This court has examined both the appellants’ plastic Uncle Sam bank made under
Snyder’s copyright and the uncopyrighted model cast iron mechanical bank which is
itself a reproduction of the original public domain Uncle Sam bank. Appellant
Snyder claims differences not only of size but also in a number of other very minute
details: the carpetbag shape of the plastic bank is smooth, the iron bank rough; the
metal bank bag is fatter at its base; the eagle on the front of the platform in the metal
bank is holding arrows in his talons while in the plastic bank he clutches leaves, this
change concededly having been made, however, because “the arrows did not
reproduce well in plastic on a smaller size.” The shape of Uncle Sam’s face is
supposedly different, as is the shape and texture of the hats, according to the Snyder
affidavit. In the metal version the umbrella is hanging loose while in the plastic item
it is included in the single mold. The texture of the clothing, the hairline, shape of
the bow ties and of the shirt collar and left arm as well as the flag carrying the name
on the base of the statue are all claimed to be different, along with the shape and
texture of the eagles on the side. Many of these differences are not perceptible to the
casual observer. Appellants make no claim for any difference based on the plastic
mold lines in the Uncle Sam figure which are perceptible.
Our examination of the banks results in the same conclusion as that of Judge
Metzner in Etna Products, the earlier case enjoining Snyder’s copyright, that the
Snyder bank is “extremely similar to the cast iron bank, save in size and material”
with the only other differences, such as the shape of the satchel and the leaves in the
eagle’s talons being “by all appearances, minor.” Similarities include, more
importantly, the appearance and number of stripes on the trousers, buttons on the
coat, and stars on the vest and hat, the attire and pose of Uncle Sam, the decor on
his base and bag, the overall color scheme, the method of carpetbag opening, to
name but a few. After seeing the banks and hearing conflicting testimony from
opposing expert witnesses as to the substantiality or triviality of the variations and as
to the skill necessary to make the plastic model, the court below stated:
I am making a finding of fact that as far as I’m concerned, it is practically an exact
copy and whatever you point to in this [sic] differences are so infinitesimal they
make no difference. All you have proved here by the testimony today is that if you
give a man a seven-inch model and you say I want this to come out in a five-inch
model, and he copies it, the fact that he has to have some artistic ability to make a
model by reducing the seven to the five adds something to it. That is the only issue
in this case.

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… [Copyright treatise author Melville Nimmer] has called “the one pervading
element prerequisite to copyright protection regardless of the form of the work” is
the requirement of originality — that the work be the original product of the
claimant. This derives from the fact that, constitutionally, copyright protection may
be claimed only by “authors.” U.S. Constitution, article I, § 8; Burrow-Giles Lithographic
Co. v. Sarony, 111 U.S. 53, 58 (1884). Thus, one who has slavishly or mechanically
copied from others may not claim to be an author. Since the constitutional
requirement must be read into the Copyright Act, 17 U.S.C. § 1 et seq., the
requirement of originality is also a statutory one. …
Originality is, however, distinguished from novelty; there must be independent
creation, but it need not be invention in the sense of striking uniqueness,
ingeniousness, or novelty, since the Constitution differentiates “authors” and their
“writings” from “inventors” and their “discoveries.” Alfred Bell & Co. v. Catalda Fine
Arts, Inc., supra, 191 F.2d at 100. Originality means that the work owes its creation to
the author and this in turn means that the work must not consist of actual copying.
Alfred Bell & Co. v. Catalda Fine Arts, Inc., supra, 191 F.2d at 102-03; Sheldon v. MetroGoldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936), aff’d, 309 U.S. 390 (1940).3
Footnote 3: The only case that appears to be an exception to this rule is the “Hand of God” case.
Alva Studios, Inc. v. Winninger, 177 F.Supp. 265 (S.D.N.Y.1959) (exact scale artistic reproduction of
highly complicated statue made with great precision was “original” as requiring “great skill and
originality”). This case is discussed in the text infra.

The test of originality is concededly one with a low threshold in that “all that is
needed . . . is that the author contributed something more than a merely trivial
variation, something recognizably his own.” Alfred Bell & Co. v. Catalda Fine Arts, Inc.,
191 F.2d at 103. But as this court said many years ago, “while a copy of something in
the public domain will not, if it be merely a copy, support a copyright, a
distinguishable variation will. . . .” Gerlach-Barklow Co. v. Morris & Bendien, Inc., 23
F.2d 159, 161 (2d Cir. 1927).
Necessarily, none of these underlying principles is different in the case of
“reproductions of a work of art,” 17 U.S.C. § 5(h), from the case of “works of
art . . .,” 17 U.S.C. § 5(g). The requirement of substantial as opposed to trivial
variation and the prohibition of mechanical copying, both of which are inherent in
and subsumed by the concept of originality, apply to both statutory categories. There
is implicit in that concept a minimal element of creativity over and above the
requirement of independent effort. While the quantum of originality that is required
may be modest indeed, Herbert Rosenthal Jewelry Corp. v. Grossbardt, 436 F.2d 315, 316
(2d Cir. 1970), we are not inclined to abandon that requirement, even if in the light
of the constitutional and statutory bases therefor and our precedents we could do so.
A reproduction of a work of art obviously presupposes an underlying work of art.
Since Mazer v. Stein, 347 U.S. 201, 218 (1954) (statuette of Balinese dancer
copyrightable despite intended use as lamp base), it has been established that massproduced commercial objects with a minimal element of artistic craftsmanship may
satisfy the statutory requirement of such a work. … The underlying work of art may
as here be in the public domain. But even to claim the more limited protection given
to a reproduction of a work of art (that to the distinctive features contributed by the

76

reproducer), the reproduction must contain an original contribution not present in
the underlying work of art and be more than a mere copy.
According to Professor Nimmer, moreover, “the mere reproduction of a work of art
in a different medium should not constitute the required originality for the reason
that no one can claim to have independently evolved any particular medium.” See
Millworth Converting Corp. v. Slifka, 276 F.2d 443, 444-45 (2d Cir. 1960). Cf. Gardenia
Flowers, Inc. v. Joseph Markovitz, Inc., 280 F.Supp. 776, 781 (S.D.N.Y.1968). Professor
Nimmer refers to Doran v. Sunset House Distributing Corp., 197 F.Supp. 940
(S.D.Cal.1961), aff’d, 304 F.2d 251 (9th Cir. 1962), as suggesting “the ludicrous result
that the first person to execute a public domain work of art in a different medium
thereafter obtains a monopoly on such work in such medium, at least as to those
persons aware of the first such effort.” We do not follow the Doran case. We do
follow the school of cases in this circuit and elsewhere supporting the proposition
that to support a copyright there must be at least some substantial variation, not
merely a trivial variation such as might occur in the translation to a different medium.
Nor can the requirement of originality be satisfied simply by the demonstration of
“physical skill” or “special training” which, to be sure, Judge Metzner found was
required for the production of the plastic molds that furnished the basis for
appellants’ plastic bank. A considerably higher degree of skill is required, true artistic
skill, to make the reproduction copyrightable. Thus in Alfred Bell Judge Frank pointed
out that the mezzotint engraver’s art there concerned required “great labour and
talent” to effectuate the “management of light and shade . . . produced by different
lines and dots,” means “very different from those employed by the painter or
draughtsman from whom he copies. . . .” See also Millworth Converting Corp. v. Slifka,
supra (fabric designer required one month of work to give three-dimensional color
effect to flat surface). Here on the basis of appellants’ own expert’s testimony it took
the Unitoy representative “about a day and a half, two days work” to produce the
plastic mold sculpture from the metal Uncle Sam bank. If there be a point in the
copyright law pertaining to reproductions at which sheer artistic skill and effort can
act as a substitute for the requirement of substantial variation, it was not reached
here.
Appellants rely heavily upon Alva Studios, Inc. v. Winninger, the “Hand of God” case,
where the court held that “great skill and originality [were required] to produce a
scale reduction of a great work with exactitude.” 177 F.Supp. at 267. There, the
original sculpture was, “one of the most intricate pieces of sculpture ever created”
with “innumerable planes, lines and geometric patterns . . . interdependent in [a]
multi-dimensional work.” Id. Originality was found by the district court to consist
primarily in the fact that “it takes ‘an extremely skilled sculptor’ many hours working
directly in front of the original” to effectuate a scale reduction. Id. at 266. The court,
indeed, found the exact replica to be so original, distinct, and creative as to constitute
a work of art in itself. The complexity and exactitude there involved distinguishes
that case amply from the one at bar. As appellants themselves have pointed out,
there are a number of trivial differences or deviations from the original public
domain cast iron bank in their plastic reproduction. Thus concededly the plastic
version is not, and was scarcely meticulously produced to be, an exactly faithful
reproduction. Nor is the creativity in the underlying work of art of the same order of

77

magnitude as in the case of the “Hand of God.” Rodin’s sculpture is, furthermore, so
unique and rare, and adequate public access to it such a problem that a significant
public benefit accrues from its precise, artistic reproduction. No such benefit can be
imagined to accrue here from the “knock-off” reproduction of the cast iron Uncle
Sam bank. Thus appellants’ plastic bank is neither in the category of exactitude
required by Alva Studios nor in a category of substantial originality; it falls within what
has been suggested by the amicus curiae is a copyright no-man’s land.
Absent a genuine difference between the underlying work of art and the copy of it
for which protection is sought, the public interest in promoting progress in the arts
— indeed, the constitutional demand — could hardly be served. To extend
copyrightability to minuscule variations would simply put a weapon for harassment
in the hands of mischievous copiers intent on appropriating and monopolizing
public domain work. Even in Mazer v. Stein, supra, which held that the statutory
terms “works of art” and “reproduction of works of art” (terms which are clearly
broader than the earlier term “works of the fine arts”) permit copyright of quite
ordinary mass-produced items, the Court expressly held that the objects to be
copyrightable, “must be original, that is, the author’s tangible expression of his ideas.”
347 U.S. at 214. No such originality, no such expression, no such ideas here appear.
To be sure, the test of “originality” may leave a lot to be desired, although it is the
only one we have, in that as one scholar has said, the originality requirement does
not perform the function of excluding commonplace matters in the public domain
from copyright status very effectively. In any event, however, the articles should be
judged on their own merits, and on these merits appellants’ claim must fail. Here as
elsewhere in the copyright law there are lines that must be drawn even though
reasonable men may differ where.
Judgment affirmed.
Notes and questions
(1) Compare the original and the copy as pictured below.

78

Figure 5 Uncle Sam Banks in L. Batlin & Son v. Snyder

(2) Batlin & Son suggests that for a copy of a work in the public domain to merit an
independent copyright as a new derivative work it must satisfy (1) the originality standard in
Feist in general terms—i.e., it must demonstrate a modicum of creativity—and (2) that it
must also constitute a “distinguishable variation” from the original. At 491 the court says:
“to support a copyright there must be at least some substantial variation, not merely a trivial
variation such as might occur in the translation to a different medium.” Is this right? Is there
really a different standard for derivative works?
(3) Probably not. The weight of authority now seems to be that there is no heightened
originality standard for derivative works. To be sure, courts need to be careful not to find
originality in trivial or obligatory differences, but it is hard to justify a separate standard that
applies to derivative works alone. In Schrock v. Learning Curve Int’l, Inc., 586 F.3d 513, 521 (7th
Cir. 2009), the Seventh Circuit rejected the duel standard approach and noted that “the key
inquiry is whether there is sufficient nontrivial expressive variation in the derivative work to
make it distinguishable from the underlying work in some meaningful way.” See also,
Meshworks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258, 1266 n.7 (10th Cir. 2009)
(“[T]he originality analysis ought to be the same.”)
(4) In Entertainment Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211 (9th Cir. 1997) the
Ninth Circuit found that three-dimensional inflatable costumes based on copyrighted
characters were not copyrightable as derivative works. The inflatable costumes were not
exact replicas of the original works, but the changes that had been made were required by
the new medium and did not meet the distinguishable variation standard. See also, Durham
Industries, Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir. 1980) (“[M]ere reproduction of the
Disney characters in plastic, even though the adaptation of the preexisting works to this
medium undoubtedly involved some degree of manufacturing skill, does not constitute
originality as this Court has defined the term.”) See also, Compendium of the U.S. Copyright
Office Practices § 311.2 (“Merely recasting a work from one medium to another alone does
not support a claim in derivative authorship.”)

79

(5) In We Shall Overcome Foundation v. Richmond Organization, Inc., 2017 WL 3981311 (S.D.N.Y.
Sept. 9, 2017) the Southern District of New York found that changes made to the classic
folk/protest song “We Shall Overcome” were insufficient to support a derivative copyright.
The defendant copyright owners relied primarily on a single word change: they argued that
changing the word “will” to “shall” was transformative because the two words have different
meanings. They argued that “In the context of the first person (‘I’ and ‘we’), ‘shall’ is used to
form the simple future tense, while ‘will’ is used to express a strong determination to do
something.” The word “shall”, they contended, carries a sense of solemnity that is absent
from the word “will” and is better fitted to the peaceful, non-violent Civil Rights Movement
that adopted the Song. The district court was unmoved:
This single word substitution is quintessentially trivial and does not raise a question
of fact requiring a trial to assess whether it is more than trivial. The words will and
shall are both common words. Neither is unusual. Grammatically, both words
perform similar functions in a phrase or sentence, as they were here. They can be
readily substituted in a sentence.

(6) In ABS Entertainment, Inc. v. CBS Corporation, 908 F.3d 405 (9th Cir. 2018) the Ninth
Circuit concluded that “a remastered sound recording is not eligible for independent
copyright protection as a derivative work unless its essential character and identity reflect a
level of independent sound recording authorship that makes it a variation distinguishable
from the underlying work.”

3. THE EXCLUSION OF FACTS, IDEAS, FUNCTIONS, AND PROCESSES FROM
COPYRIGHT PROTECTION
Introduction
Copyright law draws a distinction between original expression, which is protectable, and
everything else, which is unprotectable. There are subtle differences of opinion as to what
exactly belongs in the “everything else” bucket, but there is near universal consensus that
copyright does not protect ideas, facts, functions, or processes. The distinction between
copyrightable expression and uncopyrightable ideas, facts, functions, or processes is often
shorthanded to the “idea-expression dichotomy” or the “idea-expression distinction.” At its
simplest, the idea-expression distinction ensures that a copyright owner cannot prevent the
ordinary reader from extracting and reproducing the facts or ideas embodied in the work.
The uncopyrightability of ideas, facts, functions, and processes and the parallel exclusion of
those elements from the scope of copyright protection in expressive works are core
principles of copyright law.

International context
Given that understanding the exclusion of ideas, facts, functions, or processes from the
ambit of copyright protection is fundamental to understanding copyright law, it is somewhat
surprising that the Berne Convention has almost nothing to say about it.
Berne Convention Article 2

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(1) The expression “literary and artistic works” shall include every production in the
literary, scientific and artistic domain, whatever may be the mode or form of its
expression …
(8) The protection of this Convention shall not apply to news of the day or to
miscellaneous facts having the character of mere items of press information.

The Berne Convention makes no reference to the idea-expression distinction, nor to the
concept of functionality. However it does define protectable copyright subject matter in
Article 2(1) as “every production in the literary, scientific and artistic domain, whatever may
be the mode or form of its expression.” Defining the scope of literary and artistic works by
reference to expression certainly suggests that the object of copyright law is expression and
not the information conveyed in that expression, but the implication could be clearer.
The argument in favor of an implied idea-expression distinction is further reinforced by
Berne Article 2(8) which excludes the “news of the day” and “miscellaneous facts having the
character of the item suppress information” from the scope of copyright protection. But
more importantly, whatever ambiguity was left in the Berne Convention was resolved in
1994 with the adoption of the TRIPs Agreement.
TRIPs Agreement Article 9(2)
Copyright protection shall extend to expressions and not to ideas, procedures,
methods of operation or mathematical concepts as such.

This succinct provision constitutes both a mandatory inclusion vis-à-vis expression and a
mandatory exclusion vis-à-vis ideas, procedures, methods of operation and mathematical
concepts. TRIPs Article 9(2) reflects the universal or near-universal acceptance of the ideaexpression distinction, but it does not follow that every jurisdiction understands where the
lines should be drawn between protectable and unprotectable subject matter in the same way.

The idea-expression distinction and levels of generality
One important aspect of the idea-expression distinction to be aware of is the level of
generality at which allegations of unauthorized copying should be assessed.
Copyright protection does not extend to general themes, basic plot devices, conventions of
the genre etc. So, for example, the copyright in the James Bond novels and movies does not
preempt the entire genre of a spy thriller. Other movie studios are perfectly entitled to
recount the exploits of a thrill-seeking, womanizing spy with expensive tastes who rarely
follows orders. However, you don’t need to copy every line of the James Bond screenplay to
infringe the copyright in that work. A lot of copyright litigation boils down to the question
of exactly where on the continuum between ideas and expression the line should be drawn.
The classic statement on the idea expression distinction and the difficulty of focusing on the
correct level of generality appears in Nichols v. Universal Pictures, a decision by the influential
American jurist, Judge Learned Hand in 1930.
In a perceptive article about copyright cases from the silent film era, Silent Similarity (2014),
Jessica Litman recounts some of the background to the Nichols case. Anne Nichols was the
author of hit Broadway play, Abie’s Irish Rose. In 1925, Universal Pictures offered to buy the
film rights to Abie’s Irish Rose, but Nichols refused. Two years later she sold the film rights
to the company that would become Paramount Pictures in a deal that could have been worth
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as much as $1 million (in 1927 dollars!). The resulting film was a commercial success. Not to
be dissuaded, Universal acquired the rights to another play and purported to use it as the
basis for “The Cohens and Kellys.” Perhaps tellingly, Universal advertised and advertised The
Cohens and Kellys as an “Abie’s Irish Rose for the screen.”24
Litman points out that it is easy to miss that fact that The Cohens and Kellys was a silent movie.
The judgment does not mention it, presumably because all films were silent in the 1920s, but
the fact is important because a silent film are mostly comprised of pictures and stage plays
are entirely comprised of words. Thus, the only way a silent film could ever infringe the
copyrighted script for a stage play is by virtue of similarities at a certain level of abstraction.
Litman explains why this made the plaintiff’s case so difficult: “By casting Nichols’s case as
one proved by similarities in the distilled essence of the two works, rather than in particular
expressive details, Nichols’s lawyers invited the conclusion that the works were similar only
at too high a level of abstraction.”25
Nichols v. Universal Pictures 45 F.2d 119 (2d Cir. 1930)
Circuit Judge Learned Hand.
The plaintiff is the author of a play, “Abie’s Irish Rose,” which it may be assumed
was properly copyrighted under section five, subdivision (d), of the Copyright Act.
The defendant produced publicly a motion picture play, “The Cohens and The
Kellys,” which the plaintiff alleges was taken from it. As we think the defendant’s
play too unlike the plaintiff’s to be an infringement, we may assume, arguendo, that
in some details the defendant used the plaintiff’s play, as will subsequently appear,
though we do not so decide. It therefore becomes necessary to give an outline of the
two plays.
“Abie’s Irish Rose” presents a Jewish family living in prosperous circumstances in
New York. The father, a widower, is in business as a merchant, in which his son and
only child helps him. The boy has philandered with young women, who to his
father’s great disgust have always been Gentiles, for he is obsessed with a passion
that his daughter-in-law shall be an orthodox Jewess. When the play opens the son,
who has been courting a young Irish Catholic girl, has already married her secretly
before a Protestant minister, and is concerned to soften the blow for his father, by
securing a favorable impression of his bride, while concealing her faith and race. To
accomplish this he introduces her to his father at his home as a Jewess, and lets it
appear that he is interested in her, though he conceals the marriage. The girl
somewhat reluctantly falls in with the plan; the father takes the bait, becomes
infatuated with the girl, concludes that they must marry, and assumes that of course
they will, if he so decides. He calls in a rabbi, and prepares for the wedding according
to the Jewish rite.
Meanwhile the girl’s father, also a widower, who lives in California, and is as intense
in his own religious antagonism as the Jew, has been called to New York, supposing
that his daughter is to marry an Irishman and a Catholic. Accompanied by a priest,
24 Mark Rose, Criticism in the Courtroom: Nichols v Universal (1930) and the Determination of Infringement, 5 W.I.P.O J.

65, 67 (2013).

25 Jessica Litman, Silent Similarity, 14 CHI.-KENT J. INTELL. PROP. 11, 40 (2014).

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he arrives at the house at the moment when the marriage is being celebrated, but too
late to prevent it, and the two fathers, each infuriated by the proposed union of his
child to a heretic, fall into unseemly and grotesque antics. The priest and the rabbi
become friendly, exchange trite sentiments about religion, and agree that the match
is good. Apparently out of abundant caution, the priest celebrates the marriage for a
third time, while the girl’s father is inveigled away. The second act closes with each
father, still outraged, seeking to find some way by which the union, thus trebly
insured, may be dissolved.
The last act takes place about a year later, the young couple having meanwhile been
abjured by each father, and left to their own resources. They have had twins, a boy
and a girl, but their fathers know no more than that a child has been born. At
Christmas each, led by his craving to see his grandchild, goes separately to the young
folks’ home, where they encounter each other, each laden with gifts, one for a boy,
the other for a girl. After some slapstick comedy, depending upon the insistence of
each that he is right about the sex of the grandchild, they become reconciled when
they learn the truth, and that each child is to bear the given name of a grandparent.
The curtain falls as the fathers are exchanging amenities, and the Jew giving evidence
of an abatement in the strictness of his orthodoxy.
“The Cohens and The Kellys” presents two families, Jewish and Irish, living side by
side in the poorer quarters of New York in a state of perpetual enmity. The wives in
both cases are still living, and share in the mutual animosity, as do two small sons,
and even the respective dogs. The Jews have a daughter, the Irish a son; the Jewish
father is in the clothing business; the Irishman is a policeman. The children are in
love with each other, and secretly marry, apparently after the play opens. The Jew,
being in great financial straits, learns from a lawyer that he has fallen heir to a large
fortune from a great-aunt, and moves into a great house, fitted luxuriously. Here he
and his family live in vulgar ostentation, and here the Irish boy seeks out his Jewish
bride, and is chased away by the angry father. The Jew then abuses the Irishman over
the telephone, and both become hysterically excited. The extremity of his feelings
makes the Jew sick, so that he must go to Florida for a rest, just before which the
daughter discloses her marriage to her mother.
On his return the Jew finds that his daughter has borne a child; at first he suspects
the lawyer, but eventually learns the truth and is overcome with anger at such a low
alliance. Meanwhile, the Irish family who have been forbidden to see the grandchild,
go to the Jew’s house, and after a violent scene between the two fathers in which the
Jew disowns his daughter, who decides to go back with her husband, the Irishman
takes her back with her baby to his own poor lodgings. The lawyer, who had hoped
to marry the Jew’s daughter, seeing his plan foiled, tells the Jew that his fortune really
belongs to the Irishman, who was also related to the dead woman, but offers to
conceal his knowledge, if the Jew will share the loot. This the Jew repudiates, and,
leaving the astonished lawyer, walks through the rain to his enemy’s house to
surrender the property. He arrives in great dejection, tells the truth, and abjectly
turns to leave. A reconciliation ensues, the Irishman agreeing to share with him
equally. The Jew shows some interest in his grandchild, though this is at most a
minor motive in the reconciliation, and the curtain falls while the two are in their

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cups, the Jew insisting that in the firm name for the business, which they are to carry
on jointly, his name shall stand first.
It 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
plagiarist would escape by immaterial variations. That has never been the law, but, as
soon as literal appropriation ceases to be the test, the whole matter is necessarily at
large, so that, as was recently well said by a distinguished judge, the decisions cannot
help much in a new case. When plays are concerned, the plagiarist may excise a
separate scene; or he may appropriate part of the dialogue. Then the question is
whether the part so taken is “substantial,” and therefore not a “fair use” of the
copyrighted work; it is the same question as arises in the case of any other
copyrighted work. But when the plagiarist does not take out a block in situ, but an
abstract of the whole, decision is more troublesome. Upon any work, and especially
upon a play, a great number of patterns of increasing generality will fit equally well,
as more and more of the incident is left out. The last may perhaps be no more than
the most general statement of what the play is about, and at times might consist only
of its title; but there is a point in this series of abstractions where they are no longer
protected, since otherwise the playwright could prevent the use of his “ideas,” to
which, apart from their expression, his property is never extended. Nobody has ever
been able to fix that boundary, and nobody ever can. In some cases the question has
been treated as though it were analogous to lifting a portion out of the copyrighted
work; but the analogy is not a good one, because, though the skeleton is a part of the
body, it pervades and supports the whole. In such cases we are rather concerned
with the line between expression and what is expressed. As respects plays, the
controversy chiefly centers upon the characters and sequence of incident, these being
the substance.
We did not in Dymow v. Bolton, 11 F. (2d) 690, hold that a plagiarist was never liable
for stealing a plot; that would have been flatly against our rulings in Dam v. Kirk La
Shelle Co., 175 F. 902, and Stodart v. Mutual Film Co., 249 F. 513, affirming my decision
in (D.C.) 249 F. 507; neither of which we meant to overrule. We found the plot of
the second play was too different to infringe, because the most detailed pattern,
common to both, eliminated so much from each that its content went into the public
domain; and for this reason we said, “this mere subsection of a plot was not
susceptible of copyright.” But we do not doubt that two plays may correspond in
plot closely enough for infringement. How far that correspondence must go is
another matter. Nor need we hold that the same may not be true as to the characters,
quite independently of the “plot” proper, though, as far as we know, such a case has
never arisen. If Twelfth Night were copyrighted, it is quite possible that a second
comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it
would not be enough that for one of his characters he cast a riotous knight who kept
wassail to the discomfort of the household, or a vain and foppish steward who
became amorous of his mistress. These would be no more than Shakespeare’s “ideas”
in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or
Darwin’s theory of the Origin of Species. It follows that the less developed the
characters, the less they can be copyrighted; that is the penalty an author must bear
for marking them too indistinctly.

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In the two plays at bar we think both as to incident and character, the defendant
took no more — assuming that it took anything at all — than the law allowed. The
stories are quite different. One is of a religious zealot who insists upon his child’s
marrying no one outside his faith; opposed by another who is in this respect just like
him, and is his foil. Their difference in race is merely an obbligato to the main theme,
religion. They sink their differences through grandparental pride and affection. In the
other, zealotry is wholly absent; religion does not even appear. It is true that the
parents are hostile to each other in part because they differ in race; but the marriage
of their son to a Jew does not apparently offend the Irish family at all, and it
exacerbates the existing animosity of the Jew, principally because he has become rich,
when he learns it. They are reconciled through the honesty of the Jew and the
generosity of the Irishman; the grandchild has nothing whatever to do with it. The
only matter common to the two is a quarrel between a Jewish and an Irish father, the
marriage of their children, the birth of grandchildren and a reconciliation.
If the defendant took so much from the plaintiff, it may well have been because her
amazing success seemed to prove that this was a subject of enduring popularity.
Even so, granting that the plaintiff’s play was wholly original, and assuming that
novelty is not essential to a copyright, there is no monopoly in such a background.
Though the plaintiff discovered the vein, she could not keep it to herself; so defined,
the theme was too generalized an abstraction from what she wrote. It was only a part
of her “ideas.”
Nor does she fare better as to her characters. It is indeed scarcely credible that she
should not have been aware of those stock figures, the low comedy Jew and
Irishman. The defendant has not taken from her more than their prototypes have
contained for many decades. If so, obviously so to generalize her copyright, would
allow her to cover what was not original with her. But we need not hold this as
matter of fact, much as we might be justified. Even though we take it that she
devised her figures out of her brain de novo, still the defendant was within its rights.
There are but four characters common to both plays, the lovers and the fathers. The
lovers are so faintly indicated as to be no more than stage properties. They are loving
and fertile; that is really all that can be said of them, and anyone else is quite within
his rights if he puts loving and fertile lovers in a play of his own, wherever he gets
the cue. The plaintiff’s Jew is quite unlike the defendant’s. His obsession is his
religion, on which depends such racial animosity as he has. He is affectionate, warm
and patriarchal. None of these fit the defendant’s Jew, who shows affection for his
daughter only once, and who has none but the most superficial interest in his
grandchild. He is tricky, ostentatious and vulgar, only by misfortune redeemed into
honesty. Both are grotesque, extravagant and quarrelsome; both are fond of display;
but these common qualities make up only a small part of their simple pictures, no
more than any one might lift if he chose. The Irish fathers are even more unlike; the
plaintiff’s a mere symbol for religious fanaticism and patriarchal pride, scarcely a
character at all. Neither quality appears in the defendant’s, for while he goes to get
his grandchild, it is rather out of a truculent determination not to be forbidden, than
from pride in his progeny. For the rest he is only a grotesque hobbledehoy, used for
low comedy of the most conventional sort, which any one might borrow, if he
chanced not to know the exemplar.

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The defendant argues that the case is controlled by my decision in Fisher v. Dillingham
(D.C.) 298 F. 145. Neither my brothers nor I wish to throw doubt upon the doctrine
of that case, but it is not applicable here. We assume that the plaintiff’s play is
altogether original, even to an extent that in fact it is hard to believe. We assume
further that, so far as it has been anticipated by earlier plays of which she knew
nothing, that fact is immaterial. Still, as we have already said, her copyright did not
cover everything that might be drawn from her play; its content went to some extent
into the public domain. We have to decide how much, and while we are as aware as
any one that the line, whereever it is drawn, will seem arbitrary, that is no excuse for
not drawing it; it is a question such as courts must answer in nearly all cases.
Whatever may be the difficulties a priori, we have no question on which side of the
line this case falls. A comedy based upon conflicts between Irish and Jews, into
which the marriage of their children enters, is no more susceptible of copyright than
the outline of Romeo and Juliet.
The plaintiff has prepared an elaborate analysis of the two plays, showing a
“quadrangle” of the common characters, in which each is represented by the
emotions which he discovers. She presents the resulting parallelism as proof of
infringement, but the adjectives employed are so general as to be quite useless. Take
for example the attribute of “love” ascribed to both Jews. The plaintiff has depicted
her father as deeply attached to his son, who is his hope and joy; not so, the
defendant, whose father’s conduct is throughout not actuated by any affection for
his daughter, and who is merely once overcome for the moment by her distress
when he has violently dismissed her lover. “Anger” covers emotions aroused by
quite different occasions in each case; so do “anxiety,” “despondency” and “disgust.”
It is unnecessary to go through the catalogue for emotions are too much colored by
their causes to be a test when used so broadly. This is not the proper approach to a
solution; it must be more ingenuous, more like that of a spectator, who would rely
upon the complex of his impressions of each character.
We cannot approve the length of the record, which was due chiefly to the use of
expert witnesses. Argument is argument whether in the box or at the bar, and its
proper place is the last. The testimony of an expert upon such issues, especially his
cross-examination, greatly extends the trial and contributes nothing which cannot be
better heard after the evidence is all submitted. It ought not to be allowed at all; and
while its admission is not a ground for reversal, it cumbers the case and tends to
confusion, for the more the court is led into the intricacies of dramatic craftsmanship,
the less likely it is to stand upon the firmer, if more naïve, ground of its considered
impressions upon its own perusal. We hope that in this class of cases such evidence
may in the future be entirely excluded, and the case confined to the actual issues; that
is, whether the copyrighted work was original, and whether the defendant copied it,
so far as the supposed infringement is identical.
Decree affirmed.
Notes and questions
(1) Nichols v. Universal Pictures 45 F.2d 119 (2d Cir. 1930) provides a canonical explanation of
why the scope of copyright goes beyond literal cut-and-paste infringement and of the

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problems courts will face in drawing a line between ideas and their expression in cases of
non-literal infringement. Judge Hand says (at 121):
It 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
plagiarist would escape by immaterial variations. That has never been the law, but, as
soon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that,
as was recently well said by a distinguished judge, the decisions cannot help much in
a new case. (emphasis added)

(2) Hand continues (at 121) with the classic statement of the abstraction problem in
copyright law:
Upon any work, and especially upon a play, a great number of patterns of increasing
generality will fit equally well, as more and more of the incident is left out. The last
may perhaps be no more than the most general statement of what the play is about,
and at times might consist only of its title; but there is a point in this series of
abstractions where they are no longer protected, since otherwise the playwright
could prevent the use of his “ideas,” to which, apart from their expression, his
property is never extended. Nobody has ever been able to fix that boundary, and
nobody ever can.

(3) Is Hand really suggesting that drawing a line between ideas and their expression is a
pointless endeavor when he says: “Nobody has ever been able to fix that boundary [between
idea and expression], and nobody ever can”? If so, how do we reconcile that with his
comment later in the case (at 122):
We have to decide how much, and while we are as aware as any one that the line,
whereever it is drawn, will seem arbitrary, that is no excuse for not drawing it; it is a
question such as courts must answer in nearly all cases. Whatever may be the
difficulties a priori, we have no question on which side of the line this case falls.
(emphasis added)

Illustrations of the idea-expression distinction at work
The Copyright Office routinely denies registration for very simple works consisting of
common or standard design elements. Such building blocks are too far along the idea end of
the continuum between idea and expression to be protectable. The juxtaposition or
arrangement of a few common or standard design elements may contain sufficient creativity
support a copyright, but not always. Although Feist (extracted in the previous chapter)
indicates that the threshold of copyrightability is low, it also states (at 358) the Copyright Act
“implies that some ‘ways’ [of selecting, coordinating, or arranging uncopyrightable material]
will trigger copyright, but that others will not.” (emphasis added).
Coach, Inc. v. Peters, 386 F. Supp. 2d 495 (S.D.N.Y. 2005).
The United States District Court for the Southern District of New York upheld the
Copyright Office’s refusal to register simple designs consisting of two linked letter “C”
shapes “facing each other in a mirrored relationship” and two unlinked letter “C” shapes “in
a mirrored relationship and positioned perpendicular to the linked elements.”

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Satava v. Lowry, 323 F.3d 805 (9th Cir. 2003)
In Satava v. Lowrey, the Ninth Circuit held that a glass sculpture of a jellyfish consisting of
clear glass, an oblong shroud, bright colors, vertical orientation, and the stereotypical jellyfish
form did not merit copyright protection. The court said:
It is true, of course, that a combination of unprotectable elements may qualify for
copyright protection. But it is not true that any combination of unprotectable
elements automatically qualifies for copyright protection. Our case law suggests, and
we hold today, that a combination of unprotectable elements is eligible for copyright
protection only if those elements are numerous enough and their selection and arrangement
original enough that their combination constitutes an original work of authorship. (emphasis
added)
Figure 6 Jellyfish

The exclusion of facts, ideas, functions, and processes
Baker v. Selden, 101 US 99 (1880)
Mr. Justice Bradley delivered the opinion of the court.
Charles Selden, the testator of the complainant in this case, in the year 1859 took the
requisite steps for obtaining the copyright of a book, entitled “Selden’s Condensed
Ledger, or Book-keeping Simplified,” the object of which was to exhibit and explain
a peculiar system of book-keeping. In 1860 and 1861, he took the copyright of
several other books, containing additions to and improvements upon the said system.
The bill of complaint was filed against the defendant, Baker, for an alleged
infringement of these copyrights. The latter, in his answer, denied that Selden was
the author or designer of the books, and denied the infringement charged, and
contends on the argument that the matter alleged to be infringed is not a lawful
subject of copyright.
The parties went into proofs, and the various books of the complainant, as well as
those sold and used by the defendant, were exhibited before the examiner, and
witnesses were examined on both sides. A decree was rendered for the complainant,
and the defendant appealed.

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The book or series of books of which the complainant claims the copyright consists
of an introductory essay explaining the system of book-keeping referred to, to which
are annexed certain forms or blanks, consisting of ruled lines, and headings,
illustrating the system and showing how it is to be used and carried out in practice.
This system effects the same results as book-keeping by double entry; but, by a
peculiar arrangement of columns and headings, presents the entire operation, of a
day, a week, or a month, on a single page, or on two pages facing each other, in an
account-book.
Figure 1. Baker’s Form

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Figure 2. Selden’s Form

The defendant uses a similar plan so far as results are concerned; but makes a
different arrangement of the columns, and uses different headings. If the
complainant’s testator had the exclusive right to the use of the system explained in
his book, it would be difficult to contend that the defendant does not infringe it,
notwithstanding the difference in his form of arrangement; but if it be assumed that
the system is open to public use, it seems to be equally difficult to contend that the
books made and sold by the defendant are a violation of the copyright of the
complainant’s book considered merely as a book explanatory of the system. Where
the truths of a science or the methods of an art are the common property of the
whole world, any author has the right to express the one, or explain and use the
other, in his own way. As an author, Selden explained the system in a particular way.
It may be conceded that Baker makes and uses account-books arranged on
substantially the same system; but the proof fails to show that he has violated the
copyright of Selden’s book, regarding the latter merely as an explanatory work; or
that he has infringed Selden’s right in any way, unless the latter became entitled to an
exclusive right in the system.
The evidence of the complainant is principally directed to the object of showing that
Baker uses the same system as that which is explained and illustrated in Selden’s
books. It becomes important, therefore, to determine whether, in obtaining the
copyright of his books, he secured the exclusive right to the use of the system or
method of book-keeping which the said books are intended to illustrate and explain.
It is contended that he has secured such exclusive right, because no one can use the
system without using substantially the same ruled lines and headings which he has
appended to his books in illustration of it. In other words, it is contended that the
ruled lines and headings, given to illustrate the system, are a part of the book, and, as
such, are secured by the copyright; and that no one can make or use similar ruled
lines and headings, or ruled lines and headings made and arranged on substantially
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the same system, without violating the copyright. And this is really the question to be
decided in this case. Stated in another form, the question is, whether the exclusive
property in a system of book-keeping can be claimed, under the law of copyright, by
means of a book in which that system is explained? The complainant’s bill, and the
case made under it, are based on the hypothesis that it can be.
It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of the
complainant’s account-book can be claimed under any special class of objects, other
than books, named in the law of copyright existing in 1859. The law then in force
was that of 1831, and specified only books, maps, charts, musical compositions,
prints, and engravings. An account-book, consisting of ruled lines and blank columns,
cannot be called by any of these names unless by that of a book.
There is no doubt that a work on the subject of book-keeping, though only
explanatory of well-known systems, may be the subject of a copyright; but, then, it is
claimed only as a book. Such a book may be explanatory either of old systems, or of
an entirely new system; and, considered as a book, as the work of an author,
conveying information on the subject of book-keeping, and containing detailed
explanations of the art, it may be a very valuable acquisition to the practical
knowledge of the community. But there is a clear distinction between the book, as
such, and the art which it is intended to illustrate. The mere statement of the
proposition is so evident, that it requires hardly any argument to support it. The
same distinction may be predicated of every other art as well as that of book-keeping.
A treatise on the composition and use of medicines, be they old or new; on the
construction and use of ploughs, or watches, or churns; or on the mixture and
application of colors for painting or dyeing; or on the mode of drawing lines to
produce the effect of perspective, — would be the subject of copyright; but no one
would contend that the copyright of the treatise would give the exclusive right to the
art or manufacture described therein. The copyright of the book, if not pirated from
other works, would be valid without regard to the novelty, or want of novelty, of its
subject-matter. The novelty of the art or thing described or explained has nothing to
do with the validity of the copyright. To give to the author of the book an exclusive
property in the art described therein, when no examination of its novelty has ever
been officially made, would be a surprise and a fraud upon the public. That is the
province of letters-patent, not of copyright. The claim to an invention or discovery
of an art or manufacture must be subjected to the examination of the Patent Office
before an exclusive right therein can be obtained; and it can only be secured by a
patent from the government.
The difference between the two things, letters-patent and copyright, may be
illustrated by reference to the subjects just enumerated. Take the case of medicines.
Certain mixtures are found to be of great value in the healing art. If the discoverer
writes and publishes a book on the subject (as regular physicians generally do), he
gains no exclusive right to the manufacture and sale of the medicine; he gives that to
the public. If he desires to acquire such exclusive right, he must obtain a patent for
the mixture as a new art, manufacture, or composition of matter. He may copyright
his book, if he pleases; but that only secures to him the exclusive right of printing
and publishing his book. So of all other inventions or discoveries.

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The copyright of a book on perspective, no matter how many drawings and
illustrations it may contain, gives no exclusive right to the modes of drawing
described, though they may never have been known or used before. By publishing
the book, without getting a patent for the art, the latter is given to the public. The
fact that the art described in the book by illustrations of lines and figures which are
reproduced in practice in the application of the art, makes no difference. Those
illustrations are the mere language employed by the author to convey his ideas more
clearly. Had he used words of description instead of diagrams (which merely stand in
the place of words), there could not be the slightest doubt that others, applying the
art to practical use, might lawfully draw the lines and diagrams which were in the
author’s mind, and which he thus described by words in his book.
The copyright of a work on mathematical science cannot give to the author an
exclusive right to the methods of operation which he propounds, or to the diagrams
which he employs to explain them, so as to prevent an engineer from using them
whenever occasion requires. The very object of publishing a book on science or the
useful arts is to communicate to the world the useful knowledge which it contains.
But this object would be frustrated if the knowledge could not be used without
incurring the guilt of piracy of the book. And where the art it teaches cannot be used
without employing the methods and diagrams used to illustrate the book, or such as
are similar to them, such methods and diagrams are to be considered as necessary
incidents to the art, and given therewith to the public; not given for the purpose of
publication in other works explanatory of the art, but for the purpose of practical
application.
Of course, these observations are not intended to apply to ornamental designs, or
pictorial illustrations addressed to the taste. Of these it may be said, that their form is
their essence, and their object, the production of pleasure in their contemplation.
This is their final end. They are as much the product of genius and the result of
composition, as are the lines of the poet or the historian’s periods. On the other
hand, the teachings of science and the rules and methods of useful art have their
final end in application and use; and this application and use are what the public
derive from the publication of a book which teaches them. But as embodied and
taught in a literary composition or book, their essence consists only in their
statement. This alone is what is secured by the copyright. The use by another of the
same methods of statement, whether in words or illustrations, in a book published
for teaching the art, would undoubtedly be an infringement of the copyright.
Recurring to the case before us, we observe that Charles Selden, by his books,
explained and described a peculiar system of book-keeping, and illustrated his
method by means of ruled lines and blank columns, with proper headings on a page,
or on successive pages. Now, whilst no one has a right to print or publish his book,
or any material part thereof, as a book intended to convey instruction in the art, any
person may practise and use the art itself which he has described and illustrated
therein. The use of the art is a totally different thing from a publication of the book
explaining it. The copyright of a book on book-keeping cannot secure the exclusive
right to make, sell, and use account-books prepared upon the plan set forth in such
book. Whether the art might or might not have been patented, is a question which is
not before us. It was not patented, and is open and free to the use of the public. And,

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of course, in using the art, the ruled lines and headings of accounts must necessarily
be used as incident to it.
The plausibility of the claim put forward by the complainant in this case arises from
a confusion of ideas produced by the peculiar nature of the art described in the
books which have been made the subject of copyright. In describing the art, the
illustrations and diagrams employed happen to correspond more closely than usual
with the actual work performed by the operator who uses the art. Those illustrations
and diagrams consist of ruled lines and headings of accounts; and it is similar ruled
lines and headings of accounts which, in the application of the art, the book-keeper
makes with his pen, or the stationer with his press; whilst in most other cases the
diagrams and illustrations can only be represented in concrete forms of wood, metal,
stone, or some other physical embodiment. But the principle is the same in all. The
description of the art in a book, though entitled to the benefit of copyright, lays no
foundation for an exclusive claim to the art itself. The object of the one is
explanation; the object of the other is use. The former may be secured by copyright.
The latter can only be secured, if it can be secured at all, by letters-patent.
The case of Cobbett v. Woodward (Law Rep. 14 Eq. 407) was a claim to copyright in a
catalogue of furniture which the publisher had on sale in his establishment,
illustrated with many drawings of furniture and decorations. The defendants, being
dealers in the same business, published a similar book, and copied many of the
plaintiff’s drawings, though it was shown that they had for sale the articles
represented thereby. The court held that these drawings were not subjects of
copyright. Lord Romilly, M.R., said:
“This is a mere advertisement for the sale of particular articles which any one might
imitate, and any one might advertise for sale. If a man not being a vendor of any of
the articles in question were to publish a work for the purpose of informing the
public of what was the most convenient species of articles for household furniture,
or the most graceful species of decorations for articles of home furniture, what they
ought to cost, and where they might be bought, and were to illustrate his work with
designs of each article he described, — such a work as this could not be pirated with
impunity, and the attempt to do so would be stopped by the injunction of the Court
of Chancery; yet if it were done with no such object, but solely for the purpose of
advertising particular articles for sale, and promoting the private trade of the
publisher by the sale of articles which any other person might sell as well as the first
advertiser, and if in fact it contained little more than an illustrated inventory of the
contents of a warehouse, I know of no law which, while it would not prevent the
second advertiser from selling the same articles, would prevent him from using the
same advertisement; provided he did not in such advertisement by any device
suggest that he was selling the works and designs of the first advertiser.”

Another 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
was claimed in a cricket scoring-sheet, and the Vice-Chancellor held that it was not a
fit subject for copyright, partly because it was not new, but also because “to say that
a particular mode of ruling a book constituted an object for a copyright is absurd.”
These cases, if not precisely in point, come near to the matter in hand, and, in our
view, corroborate the general proposition which we have laid down.

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In Drury v. Ewing (1 Bond, 540), which is much relied on by the complainant, a
copyright was claimed in a chart of patterns for cutting dresses and basques for
ladies, and coats, jackets, &c., for boys. It is obvious that such designs could only be
printed and published for information, and not for use in themselves. Their practical
use could only be exemplified in cloth on the tailor’s board and under his shears; in
other words, by the application of a mechanical operation to the cutting of cloth in
certain patterns and forms. Surely the exclusive right to this practical use was not
reserved to the publisher by his copyright of the chart. Without undertaking to say
whether we should or should not concur in the decision in that case, we think it
cannot control the present.
The conclusion to which we have come is, that blank account-books are not the
subject of copyright; and that the mere copyright of Selden’s book did not confer
upon him the exclusive right to make and use account-books, ruled and arranged as
designated by him and described and illustrated in said book.
The decree of the Circuit Court must be reversed, and the cause remanded with
instructions to dismiss the complainant’s bill; and it is
So ordered.
Notes and questions
(1) In Baker v. Selden 101 U.S. 99 (1879), the Supreme Court famously held that copyright in
an explanatory text on bookkeeping gave the author no exclusive rights to the novel system
of accounting disclosed therein. As the Court explained at (105):
The description of the art in a book, though entitled to the benefit of copyright, lays
no foundation for an exclusive claim to the art itself.

(2) Baker v. Selden is often thought of as an illustration of the line between idea and
expression, but the forms at the back of Selden’s book were not uncopyrightable because
they were too abstract or generic; they were uncopyrightable because they embodied a
functional system. Read in this light, Baker is a case about merger, specifically the merger of
function and expression. The merger doctrine is discussed in more detail below.
(3) The principle that copyright in an expressive work does not give the author any rights in
the facts, ideas, or methods of operation communicated in that work is longstanding at
common law and was expressly incorporated into the 1976 revision of the Copyright Act.
17 U.S. Code § 102(b)
In no case does copyright protection for an original work of authorship extend to
any idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or
embodied in such a work.

How much of Section 102(b) can be traced directly back to Baker v. Selden?
(4) Copyright law clearly distinguishes between facts and the expression of facts, providing
no protection for the former and only limited protection for the latter. Recall that in Feist v.
Rural Telephone, the Supreme Court ruled that copying listings from a telephone directory did
not infringe the copyright in that directory because the information itself was not
copyrightable. In Feist, the Court described the uncopyrightability of facts as “universally
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understood” and the “most fundamental axiom of copyright law.” It explained this feature
of copyright law in terms of the requirement of originality (at 345, 347):
The sine qua non of copyright is originality. To qualify for copyright protection, a
work must be original to the author. …
It is this bedrock principle of copyright that mandates the law’s seemingly disparate
treatment of facts and factual compilations. No one may claim originality as to facts.
This is because facts do not owe their origin to an act of authorship. The distinction
is one between creation and discovery: The first person to find and report a
particular fact has not created the fact; he or she has merely discovered its
existence.

Does the idea-expression distinction apply the same way to facts as it does to ideas? How
should we treat false facts? Is the fact that someone’s opinion is X the same as fact X for
copyright law purposes?

Rationales for the idea-expression distinction
Why does copyright law draw a distinction between protectable expression and
unprotectable ideas, facts, functions, and processes? The longstanding distinction between
protectable expression and unprotectable facts and ideas is an essential part of the balance of
copyright law. The distinction ensures that protection of the expressive elements of the
author’s work does not deny subsequent authors the ability to make their own contributions
by adding to, reusing, or reinterpreting the facts and ideas embodied in the original work.
The essential idea behind copyright is that subsequent authors may not compete with the
copyright owner by offering her original expression to the public as a substitute for the
copyright owner’s work, but they are free to compete with their own expression of the same
facts, concepts, and ideas.
The idea-expression distinction is essential for any copyright system that aims to foster a
vibrant and creative intellectual ecosystem. In the United States, it is also constitutionally
required. As the Supreme Court explained in Harper & Row, “copyright’s idea/expression
dichotomy strikes a definitional balance between the First Amendment and the Copyright
Act by permitting free communication of facts while still protecting an author’s
expression.”26 The Court later added, in Eldred v. Ashcroft, that the idea-expression distinction
is one of copyright’s “built-in First Amendment accommodations” and that as a result of the
idea-expression distinction “every idea, theory, and fact in a copyrighted work becomes
instantly available for public exploitation at the moment of publication.”27

Rationales for the Exclusion of Functionality from Copyright Protection
There are different fields of intellectual property law, each of which is directed to protecting
particular interests and addressing particular problems. Briefly, copyright protects original
expression, utility patents grant rights in relation to useful inventions, design patents protect
the ornamental features of useful objects or articles of manufacture, and trademark law
protects marks or signs that convey the source of goods or services.

26 Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985).
27 Eldred v. Ashcroft, 537 US 186, 291 (2003)

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To illustrate more concretely, consider a new bottle designed to pour specific liquids more
evenly and also to look more attractive. The pouring function of the bottle design could
conceivably be a new and useful invention (utility patent), the graceful shape of the bottle
could be aesthetically appealing (design patent, copyright sculpture), and the shape could be
distinctive, such that consumers understand that bottles of this shape are associated with a
particular beverage seller (trademark). In addition, the way the bottle is made could be
valuable trade secret.
The most problematic area of overlap relates to functionality. Utility patents confer the
broadest possible set of exclusive rights (the exclusive right to make, use, and sell the
claimed invention), but they are difficult to obtain, short in duration, and usually narrow in
scope. Patents must be novel and non-obvious compared to the prior art. Utility patents last
for 20 years from the date of application and they are only infringed if the “accused device”
features every single element of the relevant patent claim. In contrast to utility patents,
copyright protects a work of authorship from the moment of its creation.
Moreover, patents are subject to examination to ensure they meet demanding standards with
respect to novelty, inventiveness, utility, written description, and enablement. In contrast,
although certain additional rights come with registration, trademark law protects distinctive
signs from the moment of adoption and it protects trade dress (and descriptive signs) from
the moment it comes to be understood by the public as a sign of origin. Trademark rights
continue as long as the trademark is being used to signify a source of origin. Copyright lasts
for the life of the author plus 70 years.
Design patents are a peculiar hybrid of copyright, trademark, and patent law. Design patents
require examination, but the examination threshold is so low in practice as to resemble a
registration system. In theory, design patents only protect the ornamental features of a
product and not its functional attributes. This is similar to the way trademark law protects
trade dress—the design of a product can amount to protectable trade dress, but that
protection covers only those aspects of a design that signal source to consumers, and the law
refuses protection for functional design features even if they signal source.
Should the law allow overlapping protection?
It would be going to far to suggest that the law should never allow any overlaps between the
different regimes of IP but we should begin with the assumption that the different fields of
IP are different for a reason—each reflects a different set of policies and trade-offs. In
general, patent-like protection of function should come from patent law; trademark-like
protection of brand, reputation, and signaling to consumers should come from trademark
law; etc. Even if occasionally different aspects of a single object cross boundaries from one
field to the next, that does not mean that trademark law should give copyright-like
protection of expression, that design patents should be used to police consumer confusion,
or that copyright law should be used to confer patent-like rights of exclusion with respect to
function and utility.
Utility patents are a significant exception to the norm of free competition. Although IP
regimes can and do sometimes overlap, it is vital that regimes in which rights are easier to
obtain and/or longer lasting are not used to achieve a kind of backdoor patent protection.28
28 See generally, Viva

R. Moffat, Mutant Copyrights and Backdoor Patents: The Problem of Overlapping Intellectual
Property Protection, 19 BERKELEY TECH. L.J. 1473 (2004)

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To this end, every other regime has doctrines designed to deny protection of functionality.29
The barriers between utility patents and other regimes need to carefully maintained, whereas
overlaps between non-utility regimes present less fundamental concerns.
The Supreme Court made a particularly strong statement in this regard in Baker v. Selden, 101
U.S. 99 (1879) (at 102):
The novelty of the art or thing described or explained has nothing to do with the
validity of the copyright. To give to the author of the book an exclusive property in
the art described therein, when no examination of its novelty has ever been officially
made, would be a surprise and a fraud upon the public. That is the province of letterspatent, not of copyright. The claim to an invention or discovery of an art or manufacture
must be subjected to the examination of the Patent Office before an exclusive right
therein can be obtained; and it can only be secured by a patent from the government.
(emphasis added)

Section 102(b) of the Copyright Act
17 U.S. Code § 102
(a) Copyright protection subsists, in accordance with this title, in original works of
authorship fixed in any tangible medium of expression, now known or later
developed, from which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device. Works of
authorship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.
(b) In no case does copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or
embodied in such work.

Section 102(a) of the US copyright act provides the copyright subsists in original works of
authorship fixed in any tangible medium of expression, and then proceeds to list eight
categories of works of authorship. Section 102(b) of the Copyright Act of 1976 embodies
29 The most prominent case differentiating patents from trademarks is TrafFix Devices, Inc. v. Marketing Displays,

Inc., 532 U.S. 23, 28-35 (2001) (elaborating on trademark law’s statutory prohibition on protecting functional
matter, and the existence of a utility patent on that matter being strong evidence of such functionality);
Buccafusco and Lemley call these “functionality screens”. Note also that patent law preempts state laws that
seek to protect unpatentable inventions. Sears, Roebuck & Co. v. Sears Fin. Network, 576 F. Supp. 857 (D.D.C.
1983); Tiffany & Co. v. Costco Wholesale Corp., 127 F. Supp. 3d 241 (S.D.N.Y. 2015); Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141 (1989)

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the approach that the Supreme Court took in Baker v. Selden. Section 102(b) provides that in
no case does copyright protection “extend to any idea, procedure, process, system, method of
operation, concept, principle, or discovery.”
How to Read Section 102(b)
Some commentators treat Baker v. Selden as confined to the idea-expression distinction, but a
more careful reading shows that the case was as much to do with the exclusion of
functionality from copyright subject matter and copyright protection as it was the distinction
between ideas and their expression.30 Likewise, some courts and commentators have treated
Section 102(b) as synonymous with the idea-expression distinction, and no more. A fair
reading of Baker v. Selden, and even a cursory reading of Section 102(b) show these courts
and commentators to be in error.31
Baker v. Selden is obviously not just about the exclusion of ideas from copyright subject
matter and Section 102(b) contains many words that are not easily equated with ideas.
Section 102(b) applies to ideas as a general category, as well as the more specific
subcategories of concepts and principles. The reference in 102(b) to “discovery” includes
facts, but it could also be a subset of ideas in the sense of the discovery of principles or
philosophical and scientific concepts. But there are key words in the statute that don’t have
much to do with facts or ideas. Section 102(b) also excludes procedures, processes, systems, and
methods of operation—these words must mean something.
Section 102(b) is not merely a restatement of the common law distinction between ideas and
their expression; it is also a restatement of the common law or exclusion of procedures and
methods of operation from the scope of copyright protection.32
How to Apply Section 102(b)
Applying Section 102(b) faithfully while preserving meaningful copyright protection can be
quite challenging in certain contexts.
For literary works, the non-protection of ideas is mostly just a feature of the level of
similarity required to establish infringement. If B is similar to A in terms of ideas, but not in
the expression or manifestation of those ideas, then we say that B is not an infringing copy
of A. In other words, B might be similar to A on one level, but it is not substantially similar to
A in any relevant sense.
However, sometimes idea and expression are closely intertwined. In rare cases in which there
is virtually complete overlap between original expression and unprotectable facts, ideas, or
methods, courts must choose between protecting original expression and constraining
important freedoms. The merger doctrine holds that the freedom of facts, ideas, functions, and
methods wins out.
30 Pamela Samuelson, The Story of Baker v. Selden: Sharpening the Distinction Between Authorship and Invention at 180-

92 in INTELLECTUAL PROPERTY STORIES (Jane C. Ginsburg & Rochelle Cooper Dreyfuss, eds. 2006).
31 Professor Pamela Samuelson has made this point in a number of articles.

32 Pamela Samuelson, Why Copyright Law Excludes Systems and Processes from the Scope of Its Protection, 85 TEX. L.

REV. 1921 (2007).

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Also, copyright extends far beyond classic literary works. The first United States Copyright
Act, in 1790, protected only “maps, charts, and books.”33 But even then, maps were clearly
both ornamental and functional. Copyright today protects computer software, architecture,
sculptures, and certain compilations of data; many of these works raise difficult issues about
separating idea and function from expression. Many of these works do something, as well as
say something.
Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir.
2015)
Circuit Judge Wardlaw
We must decide whether a sequence of twenty-six yoga poses and two breathing
exercises developed by Bikram Choudhury and described in his 1979 book, Bikram’s
Beginning Yoga Class, is entitled to copyright protection. This question implicates a
fundamental principle underlying constitutional and statutory copyright protection
— the idea/expression dichotomy. Because copyright protection is limited to the
expression of ideas, and does not extend to the ideas themselves, the Bikram Yoga
Sequence is not a proper subject of copyright protection.
I. Factual and Procedural History
The Indian practice and philosophy of yoga date back thousands of years. See Linda
Sparrowe, Yoga 9 (2002). Derived from ancient Hindu scriptures, including the
Bhagavad Gita, the practice of yoga teaches students to attain spiritual fulfillment
through control of the mind and body. See Stefanie Syman, The Subtle Body: The
Story of Yoga in America 4 (2010). Yoga has evolved into a diverse set of spiritual,
philosophical, and physical disciplines. Some students practice yoga to transcend the
physical body and unite with divine powers; others focus on improving strength,
flexibility, and overall physical fitness.
The history of yoga in the United States reflects its wide-ranging appeal. Some of
yoga’s first American adherents included nineteenth-century transcendentalists, such
as Henry David Thoreau and Ralph Waldo Emerson, who were fascinated by yoga’s
approach to achieving enlightenment. In the early twentieth century, yoga grew more
popular as scientists and physicians began to study the physical benefits of the
practice.
In 1971, Bikram Choudhury, the self-proclaimed ‘Yogi to the stars,” arrived in
Beverly Hills, California. He soon became a central figure in the growing popularity
of yoga in the United States. Born and raised in Calcutta, India, Choudhury began
studying yoga at age four and learned hundreds of traditional Hatha yoga “asanas,”
or individual poses. Hatha yoga places particular emphasis on the physical
components of yoga. Choudhury developed a sequence of twenty-six asanas and two
breathing exercises, arranged in a particular order, which he calls the “Sequence.” See
Bikram Choudhury, Bikram’s Beginning Yoga Class (1979). Choudhury opened his
own studio, where he began offering “Bikram Yoga” classes. In a Bikram Yoga class,
33 See Act of May 31, 1790, ch. 15, 1 Stat. 124 (entitled “An Act for the encouragement of learning”) (repealed

1802).

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the Sequence is practiced over the course of ninety minutes, to a series of
instructions (the “Dialogue”), in a room heated to 105 degrees Fahrenheit to
simulate Choudhury’s native Indian climate.
Choudhury popularized the Sequence by marketing the many health and fitness
benefits it provides. Choudhury informs prospective students that his “system of
Hatha Yoga is capable of helping you avoid, correct, cure, heal, or at least alleviate
the symptoms of almost any illness or injury.” He claims that he developed the
Sequence after “many of years of research and verification ... using modern medical
measurement techniques.” He tells reporters that he extended the careers of
professional athletes, including Kareem Abdul-Jabbar and John McEnroe. This
message has resonated with an American audience: as the complaint in this action
explains, “[p]ublic demand for Bikram Yoga classes grew steadily once Bikram Yoga
participants realized that Bikram’s unique yoga style and method offered them
tremendous physical, mental and other benefits.”
In 1979, Choudhury published the book Bikram’s Beginning Yoga Class, which
includes descriptions, photographs, and drawings of the Sequence’s twenty-six poses
and two breathing exercises. Choudhury registered the book with the U.S. Copyright
Office in 1979. In 2002, he also registered the “compilation of exercises” contained
in the book, using a supplementary registration form that referenced back to the
1979 book.
In 1994, Choudhury introduced the “Bikram Yoga Teacher Training Course.” In
2002 and 2005, respectively, Mark Drost and Zefea Samson enrolled in and
successfully completed the three-month Bikram Yoga Teacher Training course. In
2009, Drost and Samson founded Evolation Yoga, LLC. Evolation Yoga offers
several types and styles of yoga, including “hot yoga,” which is similar to “Bikram’s
Basic Yoga System.” Evolation acknowledges that hot yoga “includes 26 postures
and two breathing exercises and is done for 90 minutes, accompanied by a series of
oral instructions, in a room heated to approximately 105 degrees Fahrenheit.”
On July 1, 2011, Choudhury and Bikram’s Yoga College of India, L.P.
(“Choudhury”) filed a complaint in the Central District of California alleging, inter
alia, that defendants Evolation Yoga, LLC, Mark Drost, and Zefea Samson
(“Evolation”) infringed “Bikram’s Copyrighted Works through substantial use of
Bikram’s Copyrighted Works in and as part of Defendants’ offering of yoga classes.”
On November 12, 2012, Evolation moved for partial summary judgment as to
Choudhury’s claim of copyright infringement of the “Sequence.” The district court
granted Evolation’s motion, ruling that the “Sequence is a collection of facts and
ideas” that is not entitled to copyright protection. The parties settled all remaining
claims against each other, and Choudhury timely appealed as to the “Sequence.”
III. Discussion
Though Choudhury emphasizes the aesthetic attributes of the Sequence’s “graceful
flow,” at bottom, the Sequence is an idea, process, or system designed to improve
health. Copyright protects only the expression of this idea — the words and pictures
used to describe the Sequence — and not the idea of the Sequence itself. Because the
Sequence is an unprotectable idea, it is also ineligible for copyright protection as a
“compilation” or “choreographic work.” The district court properly granted partial
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summary judgment in favor of Evolation because the Sequence is not a proper
subject of copyright.
A. The Sequence Is an Unprotectable Idea.
Section 102(a) of the Copyright Act of 1976 sets forth the proper subjects of
copyright protection. Section 102(b) expressly excludes protection for “any idea,
procedure, process, system, method of operation, concept, principle, or discovery,
regardless of the form in which it is described, explained, illustrated, or embodied in
such work.” Section 102(b) codifies the “idea/expression dichotomy,” under which
“every idea, theory, and fact in a copyrighted work becomes instantly available for
public exploitation at the moment of publication.” Golan v. Holder, 132 S.Ct. 873, 890
(2012).
The idea/expression dichotomy has two constitutional foundations: the Copyright
Clause and the First Amendment. Under the Copyright Clause, “the primary
objective of copyright is not to reward the labor of authors, but to promote the
Progress of Science and useful Arts.” Feist Publications, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 349 (1991) (quoting U.S. Const. art. I, § 8, cl. 8). “To this end, copyright
assures authors the right to their original expression, but encourages others to build
freely upon the ideas and information conveyed by a work.” Feist, 499 U.S. at 349-50.
At the same time, the idea/expression dichotomy “strikes a definitional balance
between the First Amendment and the Copyright Act by permitting free
communication of facts while still protecting an author’s expression.” Harper & Row
Publishers v. Nation Enters., 471 U.S. 539, 556 (1985); see also Eldred, 537 U.S. at 219
(describing the idea/expression dichotomy as a “built-in First Amendment
accommodation”); L.A. News Serv. v. Tullo, 973 F.2d 791, 795 (9th Cir.1992)
(“Copyright law incorporates First Amendment goals by ensuring that copyright
protection extends only to the forms in which ideas and information are expressed
and not to the ideas and information themselves.”).
In Baker v. Selden, 101 U.S. 99 (1879), the Supreme Court addressed the protection
copyright law provided to a book, a classic subject of copyright protection,
explaining a system of book-keeping. The Court held that the book’s expression of
the book-keeping system was protected, but the system of book-keeping itself was
not entitled to copyright protection. The Court explained:
The description of the art in a book, though entitled to the benefit of copyright, lays
no foundation for an exclusive claim to the art itself. The object of the one is
explanation; the object of the other is use. The former may be secured by copyright.
The latter can only be secured, if it can be secured at all, by letters-patent.

Id. at 105.
Following Baker, and recognizing this vital distinction between ideas and expression,
courts have routinely held that the copyright for a work describing how to perform a
process does not extend to the process itself. In Palmer v. Braun, 287 F.3d 1325 (11th
Cir.2002), for example, the Eleventh Circuit held that meditation exercises described
in a copyrighted manual on exploring the consciousness were “a process” unentitled
to copyright protection. The court explained that the “exercises, while undoubtedly
the product of much time and effort, are, at bottom, simply a process for achieving
increased consciousness. Such processes, even if original, cannot be protected by
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copyright.” Similarly, in Publications International, Ltd. v. Meredith Corp., 88 F.3d 473
(7th Cir.1996), the Seventh Circuit held that recipes contained in a copyrighted
cookbook are not entitled to copyright protection, for they merely “describe a
procedure by which the reader may produce many dishes,” and “there can be no
monopoly in the copyright sense in the ideas for producing certain foodstuffs.”
Finally, in Seltzer v. Sunbrock, 22 F.Supp. 621 (S.D.Cal.1938), which predates the
Copyright Act of 1976 but applies Baker, the court held that the copyright in a
manual describing how to organize roller-skating races does not extend to the rules
for the races themselves. The court explained, “[w]hat [the author] really composed
was a description of a system for conducting races on roller skates. A system, as such,
can never be copyrighted. If it finds any protection, it must come from the patent
laws.”
Here, we must similarly determine not the validity of a copyright but rather its scope.
Footnote 5: As noted above, Choudhury obtained a copyright for a “compilation of exercises”
through his 2002 supplementary registration to Bikram’s Beginning Yoga Class, which was first
published in 1979. Choudhury claims that the 2002 supplementary registration relates back to the
1979 registration. In Choudhury’s view, the supplementary registration thus issued within five years of
first publication and therefore serves as “prima facie evidence of the validity of the copyright.” 17
U.S.C. § 410(c). Here, however, we need not decide whether Choudhury’s supplementary registration
is prima facie evidence of the validity of the copyright, for even if it were, the undisputed facts are
sufficient to overcome any presumption of validity.

Does Choudhury’s copyright protection for his 1979 book extend to the Sequence
itself? Under the fundamental tenets of copyright law and consistent with the
precedents discussed above, the answer is no.
As Choudhury describes it, the Sequence is a “system” or a “method” designed to
“systematically work every part of the body, to give all internal organs, all the veins,
all the ligaments, and all the muscles everything they need to maintain optimum
health and maximum function.” In Bikram’s Beginning Yoga Class, Choudhury
explains that he “arrived at the sequence of postures” after “[researching] the
diseases and the postures and after many years of research and verification... using
modern medical measurement techniques.” The book tells readers that “Bikram’s
twenty-six exercises systematically move fresh, oxygenated blood to one hundred
percent of your body, to each organ and fiber, restoring all systems to healthy
working order, just as Nature intended.” Bonnie Jones Reynolds, Introduction to
Bikram’s Beginning Yoga Class, at xi (1979). This text promises readers that
Choudhury’s “system of Hatha Yoga is capable of helping you avoid, correct, cure,
heal, or at least alleviate the symptoms of almost any illness or injury.”
Also illuminating is Choudhury’s spoken Dialogue, which accompanies the Sequence.
Before the Sequence’s first breathing exercise, for example, the instructor tells
students, “[The exercise] is good for the lungs and respiratory system. This exercise
expands your lungs to their maximum expansion capacity. And it improves the
elasticity of your lungs.” Before the twelfth pose, the instructor explains:
Every exercise in the world you do, you burn energy/calories like driving a car burns
gas. The tank is empty, you need to fill it up again. Hatha Yoga class is a gas station,
it is the only place in the world where you gain energy instead of burning energy.

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Asana is the only natural physical activity in the world because it is scientific [and]
with the help of science, we can explain nature.

An essential element of this “system” is the order in which the yoga poses and
breathing exercises are arranged. Bikram’s Beginning Yoga Class instructs readers,
“Do the poses in the strict order given in this book. Nothing about Bikram’s
Beginning Yoga Class is haphazard. It is designed to scientifically warm and stretch
muscles, ligaments, and tendons in the order in which they should be stretched.”
Bikram’s Beginning Yoga Class, supra, at xi. For instance, Choudhury explains, “Camel
Pose (Ustrasana) stretches the abdomen and compresses the spine; so for the next
posture, I chose the Rabbit Pose (Sasangasana), which does the converse: stretches
the back and compresses the abdomen.” One Yoga Journal article explains that
“[a]ccording to Bikram, each posture in his series forms the perfect basis for the next,
warming and stretching the appropriate muscles, ligaments and tendons.”
Choudhury thus attempts to secure copyright protection for a healing art: a system
designed to yield physical benefits and a sense of well-being. Simply put, this attempt
is precluded by copyright’s idea/expression dichotomy, codified by Section 102(b).
As the Supreme Court explained in Baker, “Certain mixtures are found to be of great
value in the healing art. If the discoverer writes and publishes a book on the subject
(as regular physicians generally do), he gains no exclusive right to the manufacture
and sale of the medicine; he gives that to the public.” 101 U.S. at 102-03. Thus, for
example, the copyright for a book describing how to perform a complicated surgery
does not give the holder the exclusive right to perform the surgery. Like the series of
movements a surgeon makes, the Sequence is, as Choudhury tells readers, a method
designed to “cure, heal, or at least alleviate” physical injuries and illness. Monopoly
protection for such a method “can only be secured, if it can be secured at all, by
letters-patent.” Id. at 105; see also Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510,
1526 (9th Cir.1992), as amended (Jan. 6, 1993) (“In order to enjoy a lawful monopoly
over the idea or functional principle underlying a work, the creator of the work must
satisfy the more stringent standards imposed by the patent laws.”). In light of Baker
and its progeny, Choudhury’s healing methodology is not eligible for protection by
copyright. Indeed, if it is entitled to protection at all, that protection is more properly
sought through the patent process.8
Footnote 8: We do not opine on whether the Sequence is, in fact, patentable.

That the Sequence may produce spiritual and psychological benefits makes it no less
an idea, system, or process and no more amenable to copyright protection.
Choudhury’s personal declaration explains that the Sequence offers “spiritual
benefits” to his students and “leads to a general sense of peace and well-being that is
undoubtedly of benefit to all of us.” Like the meditation exercises designed to
achieve greater consciousness in Braun, 287 F.3d at 1334, the Sequence sets forth a
method to attain identifiable, if spiritual and psychological, results: a “sense of wellbeing” and “boundless energy.” Bikram’s Beginning Yoga Class, supra, at xi. As such, it
falls within the Copyright Act’s definition of an idea, process, or system excluded
from copyright protection. See 17 U.S.C. § 102(b).
Choudhury contends that the Sequence’s arrangement of postures is “particularly
beautiful and graceful.” But beauty is not a basis for copyright protection. The

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performance of many ideas, systems, or processes may be beautiful: a surgeon’s
intricate movements, a book-keeper’s careful notations, or a baker’s kneading might
each possess a certain grace for at least some viewers. Indeed, from Vermeer’s
milkmaid to Lewis Hine’s power house mechanic, the individual engrossed in a
process has long attracted artistic attention. But the beauty of the process does not
permit one who describes it to gain, through copyright, the monopolistic power to
exclude all others from practicing it. This is true even where, as here, the process was
conceived with at least some aesthetic considerations in mind. Just as some steps in a
recipe may reflect no more than the author’s belief that a particular ingredient is
beautiful or that a particular cooking technique is impressive to watch and
empowering to practice, some elements in Choudhury’s Sequence may reflect his
aesthetic preferences. Yet just like the recipe, the Sequence remains unprotectable as
a process the design of which primarily reflects function, not expression.
In drawing the “difficult” line between idea and expression in this case, we are
mindful of the “guiding consideration” of the idea/expression dichotomy: “the
preservation of the balance between competition and protection reflected in the
patent and copyright laws.” CDN Inc. v. Kapes, 197 F.3d 1256, 1262 (9th Cir.1999)
(quoting Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971)).
As in Baker, the “object” of the book Bikram’s Beginning Yoga Class is
“explanation”: it tells readers how to perform the Sequence and encourages them to
try it. Baker, 101 U.S. at 105. The introduction to Bikram’s Beginning Yoga Class, for
example, urges the audience to: (i) “turn to the Contents page,” (ii) “read through
the book,” (iii) “build gradually,” and (iv) “do the poses in the strict order given in
this book.” Like a book explaining “Book-keeping Simplified,” 101 U.S. at 100,
Bikram’s Beginning Yoga Class sets out to “communicate to the world the useful
knowledge which it contains.” Id. at 103. It invites readers to practice the method it
describes. “But this object would be frustrated if the knowledge could not be used
without incurring the guilt of piracy of the book.” Id. Consumers would have little
reason to buy Choudhury’s book if Choudhury held a monopoly on the practice of
the very activity he sought to popularize. Rather than “stimulat[ing] artistic creativity
for the general public good,” copyright protection for the Sequence would prevent
the public from engaging with Choudhury’s idea and building upon it.
B. The Sequence Is Not a Copyrightable Compilation.
Choudhury contends that the Sequence is entitled to copyright protection as a
“compilation.” Specifically, Choudhury claims that the Sequence qualifies for
copyright protection because his “selection, coordination, and arrangement” of
twenty-six poses and two breathing exercises create a coherent and expressive
composition. The district court correctly rejected this argument.
The Copyright Act identifies compilations as a proper subject of copyright. Section
103 of the Copyright Act provides that “[t]he subject matter of copyright as specified
in section 102 includes compilations.” 17 U.S.C. § 103(a). A “compilation” is “a
work formed by the collection and assembling of preexisting materials or of data that
are selected, coordinated, or arranged in such a way that the resulting work as a
whole constitutes an original work of authorship.” Id. § 101. It essential to recognize,
however, that Section 103 complements Section 102. Thus, while a compilation may
be eligible for copyright protection, it must nevertheless satisfy the requirements of
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Section 102. A compilation must, in other words, represent an “original work[] of
authorship,” and “[i]n no case” may copyright protection “extend to any idea,
procedure, process, [or] system.” Id. § 102. The availability of copyright protection
for compilations, therefore, does not eliminate Section 102’s categorical bar on
copyright protection for ideas.
The Supreme Court addressed the relationship between these “two well-established
propositions” — that compilations are eligible for copyright but facts and ideas are
not — in Feist, 499 U.S. 340. In Feist, the Court considered whether the collection of
names, towns, and telephone numbers in a telephone directory is eligible for
copyright protection as a compilation. The Court held that “[a] factual compilation is
eligible for copyright if it features an original selection or arrangement of facts, but
the copyright is limited to the particular selection or arrangement. In no event may
copyright extend to the facts themselves.” Id. at 350-51.
By claiming copyright protection for the Sequence as a compilation, Choudhury
misconstrues the scope of copyright protection for compilations. As we have
explained, the Sequence is an idea, process, or system; therefore, it is not eligible for
copyright protection. That the Sequence may possess many constituent parts does
not transform it into a proper subject of copyright protection. Virtually any process
or system could be dissected in a similar fashion. Baker’s examples of “how-to”
treatises are instructive: “A treatise on the construction and use of ploughs, or
watches, or churns, or on the mode of drawing lines to produce the effect of
perspective” would likely list the steps necessary to perform the process it describes.
101 U.S. at 102. The watchmaking treatise’s author could not claim a copyright in the
process of making a watch, however, by breaking down the process into multiple
steps and labeling it a “compilation.” Recipes further illustrate the point: a cake
recipe could be viewed as a “compilation” of carefully arranged and selected steps —
which may, of course, reflect the personal preferences and tastes of the recipe’s
author — yet the recipe would remain, in most instances, a process that is not
eligible for copyright protection. See Meredith, 88 F.3d at 480-81. Likewise,
Choudhury cannot obtain copyright protection for the Sequence as a compilation by
separately identifying the poses and breathing exercises it contains.
Moreover, according to Choudhury himself, the medical and functional
considerations at the heart of the Sequence compel the very selection and
arrangement of poses and breathing exercises for which he claims copyright
protection. According to Bikram’s Beginning Yoga Class, the “strict order” of the
poses “is designed to scientifically warm and stretch muscles, ligaments, and tendons
in the order in which they should be stretched.” Bikram’s Beginning Yoga Class,
supra, at xi. Read in the light most favorable to Choudhury, the record demonstrates
that the overarching reason for the organization of the poses and breathing exercises
in the Sequence is to further the basic goals of the method: to attain “[p]roper weight,
muscle tone, glowing complexion, boundless energy, vibrant good health, and a
sense of well-being.” Id. The Sequence’s composition renders it more effective as a
process or system, but not any more suitable for copyright protection as an original
work of authorship.
It makes no difference that similar results could be achieved through a different
organization of yoga poses and breathing exercises. Choudhury argues that he could
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have chosen from “hundreds of postures” and “countless arrangements of these
postures” in developing the Sequence. But the possibility of attaining a particular end
through multiple different methods does not render the uncopyrightable a proper
subject of copyright. See BellSouth Advert. & Publ’g Corp. v. Donnelley Info. Publ’g, Inc.,
999 F.2d 1436, 1443 (11th Cir.1993) (“The relevant inquiry [under Feist] is not
whether there is some imaginable, although manifestly less useful, method of
arranging business telephone listings.”); see also ATC Distrib. Grp., Inc. v. Whatever It
Takes Transmissions & Parts, Inc., 402 F.3d 700, 711-12 (6th Cir.2005) (“To be sure,
[the publisher of a catalog describing a transmission parts numbering system] could
have arranged the parts information in other ways that were potentially less clear or
useful, but this fact alone is insufficient to demonstrate the creativity necessary for
copyright protection.”). Though it may be one of many possible yoga sequences
capable of attaining similar results, the Sequence is nevertheless a process and is
therefore ineligible for copyright protection.
[The court also held that the Sequence was not a copyrightable choreographic work.]
IV. Conclusion
Although there is no cause to dispute the many health, fitness, spiritual, and aesthetic
benefits of yoga, and Bikram Yoga in particular, they do not bring the Sequence into
the realm of copyright protection. The Sequence falls squarely within Section
102(b)’s exclusions from copyright protection, no matter how it is labeled or how
ably the label is argued. Therefore, the district court properly granted Evolation’s
motion for partial summary judgment.
AFFIRMED.
Notes and questions
(1) In Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir. 2015),
the Ninth Circuit addressed whether a sequence of twenty-six yoga poses and two breathing
exercises developed by Bikram Choudhury and described in his book were entitled to
copyright protection. Bikram’s Yoga sued defendant Evolation Yoga and two individuals
for copyright infringement based on their use of Bikram’s Yoga sequence in their yoga
classes. The defendants did not challenge Choudhury’s copyright protection for his 1979
book explaining his yoga sequence, but they did challenge the notion that copyright in the
book extended to the sequence itself or that the Sequence was independently copyrighted as
compilation. The court held that the Sequence of poses itself was an unprotectable idea by
virtue of section 102(b) and applying Baker v. Selden. Choudhury’s own declarations of health
benefits appeared to be fatal in this respect.
Following Baker, and recognizing this vital distinction between ideas and expression,
courts have routinely held that the copyright for a work describing how to perform
a process does not extend to the process itself.

(2) Note that the court did not discount the aesthetic qualities of the Sequence:
Though Choudhury emphasizes the aesthetic attributes of the Sequence’s “graceful
flow,” at bottom, the Sequence is an idea, process, or system designed to improve
health. … the beauty of the process does not permit one who describes it to gain,

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through copyright, the monopolistic power to exclude all others from practicing it
…

But those aesthetic considerations were subordinate to the functional aspects of the
Sequence:
Yet just like the recipe, the Sequence remains unprotectable as a process the design
of which primarily reflects function, not expression.

(3) Choudhury tried to argue that the Sequence qualified for copyright protection as a
compilation because his “selection, coordination, and arrangement” of twenty-six poses and
two breathing exercises created a coherent and expressive composition. This is a common
tactic by copyright plaintiffs and the court rightly rejected it.
It is true that the Copyright Act identifies compilations as a proper subject of copyright.
Section 103(a) of the Copyright Act provides that “[t]he subject matter of copyright as
specified in section 102 includes compilations.” Compilation is defined in section 101 as “a
work formed by the collection and assembling of preexisting materials or of data that are
selected, coordinated, or arranged in such a way that the resulting work as a whole
constitutes an original work of authorship.”
But as the court was quick to point out, Section 103 must be read in conjunction with
Section 102. The court concluded that the mere fact that the Sequence possessed many
constituent parts did not transform it into a proper subject of copyright protection. After all,
“Virtually any process or system could be dissected in a similar fashion.”
(4) Another noteworthy aspect of the decision is what the court says about the existence of
alternatives.
It makes no difference that similar results could be achieved through a different
organization of yoga poses and breathing exercises. Choudhury argues that he could
have chosen from “hundreds of postures” and “countless arrangements of these
postures” in developing the Sequence. But the possibility of attaining a particular
end through multiple different methods does not render the uncopyrightable a
proper subject of copyright. …
Though it may be one of many possible yoga sequences capable of attaining similar
results, the Sequence is nevertheless a process and is therefore ineligible for
copyright protection.

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Review Question
Section 102(b) draws a distinction between the expression in an original work of authorship
and ideas, procedures, processes, systems, methods of operation, concepts, principles, and
discoveries.
Not Protected

Protected

Ideas
Concepts
Principles
Discoveries

Original expression

Procedures
Processes
Systems
Methods of operation
On which side of the line would you place the following?
•
•
•
•
•
•
•
•
•
•
•
•

Plot
Theme
Setting
Genre
Mood
Style
A yoga sequence
A choreographed dance
Laws
Rules of a game
Historical discoveries
Theories about history

Merger and scènes à faire
The Merger Doctrine
Very occasionally a literary work will fail to qualify for copyright protection because it lacks
the modicum of creativity required by Feist. Telephone directories and works based on the
public domain with no recognizable authorial changes are not eligible for copyright
protection and may be copied at will. However, sometimes even works that display that
modicum of creativity will also be ineligible for copyright protection because potentially
copyrightable expression has merged with uncopyrightable facts, ideas, or functions. The
uncopyrightability of the forms in Baker v. Selden is an early example the merger doctrine at
work, although the Court did not expressly invoke the doctrine by name.

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Every copyrightable work contains unprotectable elements. In very rare cases, there is
complete overlap between original expression and unprotectable facts, ideas, or methods. In
such cases, the merger doctrine holds that the freedom of facts, ideas, and methods wins out.
Under the merger doctrine, when “there is only one feasible way of expressing an idea, so
that if the expression were copyrightable it would mean that the idea was copyrightable,” the
expression is not protected.34 Or to put in another way, the “merger doctrine” holds that, in
certain circumstances, where authors have only one or very few ways of expressing an idea
or function, the expression and the idea are merged, and the expression is treated as
unprotectable.35
In Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967) for example, the plaintiff was
the copyright owner of a set of rules for a sales promotional contest of the ‘sweepstakes’
type involving the social security numbers of the participants. Morrissey alleged that the
defendant, Procter & Gamble, had copied and thus infringed Rule 1 of its rules.
Plaintiff’s Rule
1. Entrants should print name, address and social security number on a boxtop, or a
plain paper. Entries must be accompanied by * * * boxtop or by plain paper on
which the name * * * is copied from any source. Official rules are explained on * * *
packages or leaflets obtained from dealer. If you do not have a social security
number you may use the name and number of any member of your immediate
family living with you. Only the person named on the entry will be deemed an
entrant and may qualify for prize.
‘Use the correct social security number belonging to the person named on entry * *
* wrong number will be disqualified.’
Defendant’s Rule
1. Entrants should print name, address and Social Security number on a Tide
boxtop, or on (a) plain paper. Entries must be accompanied by Tide boxtop (any
size) or by plain paper on which the name ‘Tide’ is copied from any source. Official
rules are available on Tide Sweepstakes packages, or on leaflets at Tide dealers, or
you can send a stamped, self-addressed envelope to: Tide ‘Shopping Fling’
Sweepstakes, P.O. Box 4459, Chicago 77, Illinois.
‘If you do not have a Social Security number, you may use the name and number of
any member of your immediate family living with you. Only the person named on
the entry will be deemed an entrant and may qualify for a prize.
‘Use the correct Social Security number, belonging to the person named on the
entry - wrong numbers will be disqualified.’

Holding for the defendant, the Ninth Circuit said (at 678–679) that:
When the uncopyrightable subject matter is very narrow, so that ‘the topic
necessarily requires,’ …, if not only one form of expression, at best only a limited
number, to permit copyrighting would mean that a party or parties, by copyrighting
a mere handful of forms, could exhaust all possibilities of future use of the
substance.

34 See Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 928 (7th Cir. 2003)

35 See Pamela Samuelson, Reconceptualizing Copyright’s Merger Doctrine, 63 J. COPYRIGHT SOC’Y (2016).

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In such circumstances it does not seem accurate to say that any particular form of
expression comes from the subject matter. However, it is necessary to say that the
subject matter would be appropriated by permitting the copyrighting of its
expression. We cannot recognize copyright as a game of chess in which the public
can be checkmated.

Three points are worth keeping in mind in relation to merger. First, the merger is not a sui
generis or ad hoc principle, it is one manifestation of the broader principle that copyright
protection does not extend to the protection of facts, ideas, functions, or processes. Second,
the merger doctrine operates to exclude what might have otherwise been protectable
expression from the ambit of copyright protection. Third, the merger doctrine can deny
copyright to a work in total, but merger analysis is also used by courts to identify
unprotectable elements within protectable expression that must be filtered in any
infringement analysis.

Scènes à Faire
Stock themes and conventions belong in the public domain.
Like the merger doctrine, the scènes à faire doctrine also polices the idea-expression distinction.
Under the scènes à faire doctrine stock or standard literary devices are not considered
protectable, even if they are expressive. The doctrine’s name is borrowed from the French
who “use a very expressive phrase in dramatic literature: ‘scènes à faire’ that is, scenes which
‘must’ be done.”36
As the Seventh Circuit explained in Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 929
(7th Cir. 2003):
… copyright owner can’t prove infringement by pointing to features of his work
that are found in the defendant’s work as well but that are so rudimentary,
commonplace, standard, or unavoidable that they do not serve to distinguish one
work within a class of works from another.
… Every expressive work can be decomposed into elements not themselves
copyrightable—the cars in a car chase, the kiss in a love scene, the dive bombers in
a movie about Pearl Harbor, or for that matter the letters of the alphabet in any
written work. The presence of such elements obviously does not forfeit copyright
protection of the work as a whole, but infringement cannot be found on the basis of
such elements alone; it is the combination of elements, or particular novel twists
given to them, that supply the minimal originality required for copyright protection.

As the Second Circuit explained in Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d
Cir. 1980), the scènes à faire doctrine is justified on the basis that “it is virtually impossible to
write about a particular historical era or fictional theme without employing certain ‘stock’ or
standard literary devices.”
How stock-standard does a stock character have to be to constitute scènes à faire? Some courts
put this in terms of whether expression is “indispensable,” but that is an overstatement. An
element can be “standard” or “customary” without being indispensable. See, e.g., Hoehling v.
Universal (at 979): “incidents, characters or settings which are as a practical matter indispensable,
or at least standard, in the treatment of a given topic.”
36 Schwarz v. Universal Pictures Co., 85 F. Supp. 270, 275 (S.D. Cal. 1945)

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Scènes à faire will not usually make a work uncopyrightable, but it will make aspects of the
work irrelevant for infringement analysis. Like an unprotectable idea, any aspect of the work
that is scènes à faire is unprotectable as such. The fact that work A and work B both contain
the same scènes à faire elements does not go very far to prove one was copied from the other
in the usual case, and it certainly does not establish that any such copying was wrongful,
even if proven or admitted.
Lexmark International, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir.
2004)
At the time of this litigation, Lexmark made and sold printers and printer cartridges. Lexmark print cartridges contained a
simple computer program (the Toner Loading Program) and an authentication code stored on an embedded microchip. For
a Lexmark printer to accept a print cartridge, it would have to receive an authentication code from the chip inside the
cartridge. The printers were designed this was so that Lexmark could sell toner cartridges as single-use items, or that could
only be refurbished by Lexmark. Static Control supplied its own chips that would defeat the Lexmark authentication
sequence and thus allow third parties sell remanufactured Lexmark toner cartridges. Each of Static Control’s SMARTEK
chips also contained an exact copy of Lexmark’s Toner Loading Program, which was necessary to make its product
compatible with Lexmark’s printers.
Lexmark alleged that Static Control violated its copyright in the Toner Loading Program and that it violated the DMCA by
circumventing Lexmark’s access controls. This extract focuses on the copyright issues in the case. DMCA anticircumvention issues are addressed in a later chapter.

Circuit Judge Sutton
… As this case comes to the court, the parties agree that computer programs may be
entitled to copyright protection as “literary works” under 17 U.S.C. § 101 and may be
protected from infringement under 17 U.S.C. § 106. And that is true with respect to
a computer program’s object code (the binary code — a series of zeros and ones —
that computers can read) and its source code (the spelled-out program commands
that humans can read).
The parties also agree that Lexmark has registered the Toner Loading Program with
the Copyright Office, which is an infringement suit prerequisite, see 17 U.S.C. §
411(a), and which constitutes prima facie evidence of the copyright’s validity, see id.
§ 410(c). And the parties agree that SCC shoulders the burden of rebutting the
presumptive validity of Lexmark’s copyright.
The parties also share common ground when it comes to most of the general
principles of copyright infringement applicable to this case. A plaintiff may establish
a claim of copyright infringement by showing (1) ownership of a valid copyright in
the computer program at issue (here, the Toner Loading Program) and (2) that the
defendant copied protectable elements of the work. See Feist Publ’ns, Inc. v. Rural Tel.
Serv. 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,
1139 (6th Cir.1973), both of which are presumptively established by the copyright
registration. The second prong tests whether any copying occurred (a factual matter)
and whether the portions of the work copied were entitled to copyright protection (a
legal matter). If no direct evidence of copying is available, a claimant may establish
this element by showing that the defendant had access to the copyrighted work and
that the copyrighted work and the allegedly copied work are substantially similar.
As to the first prong, the Supreme Court has instructed that “original ... means only
that the work was independently created by the author (as opposed to copied from
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other works), and that it possesses at least some minimal degree of creativity,” even
if the work is not a “novel” one. Feist, 499 U.S. at 345-46 (originality requires both
“independent creation plus a modicum of creativity”). And although constitutionally
mandated, the threshold showing of originality is not a demanding one. Id. at 345
(“To be sure, the requisite level of creativity is extremely low; even a slight amount
will suffice.”).
But even if a work is in some sense “original” under § 102(a), it still may not be
copyrightable because § 102(b) provides that “[i]n no case does copyright protection
for an original work of authorship extend to any idea, procedure, process, system,
method of operation, concept, principle, or discovery, regardless of [its] form.” This
provision embodies the common-law idea-expression dichotomy that distinguishes
the spheres of copyright and patent law. “Unlike a patent, a copyright gives no
exclusive right to the art disclosed; protection is given only to the expression of the
idea — not the idea itself.” Mazer v. Stein, 347 U.S. 201, 217 (1954); see also Baker v.
Selden, 101 U.S. 99, 101-02 (1879) (explaining that while a book describing a
bookkeeping system is worthy of copyright protection, the underlying method
described is not); Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 703 (2d
Cir.1992) (“It is a fundamental principle of copyright law that a copyright does not
protect an idea, but only the expression of the idea.”). While this general principle
applies equally to computer programs, id.; see also House Report at 5667 (extending
copyright protection to computer programs only “to the extent that they incorporate
authorship in programmer’s expression of original ideas, as distinguished from ideas
themselves”), the task of separating expression from idea in this setting is a vexing
one, see Altai, 982 F.2d at 704 (“The essentially utilitarian nature of a computer
program further complicates the task of distilling its idea from its expression.”); Sega
Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir.1992); see also Lotus Dev.
Corp. v. Borland Int’l, Inc., 49 F.3d 807, 819-20 (1st Cir.1995) (Boudin, J., concurring).
“Compared to aesthetic works, computer programs hover even more closely to the
elusive boundary line described in § 102(b).” Altai, 982 F.2d at 704.
In ascertaining this “elusive boundary line” between idea and expression, between
process and non-functional expression, courts have looked to two other staples of
copyright law — the doctrines of merger and scènes à faire. Where the “expression is
essential to the statement of the idea,” CCC Info. Servs., Inc. v. Maclean Hunter Mkt.
Reports, Inc., 44 F.3d 61, 68 (2d Cir.1994); see also Lotus Dev., 49 F.3d at 816 (“If
specific words are essential to operating something, then they are part of a ‘method
of operation’ and, as such, are unprotectable.”), or where there is only one way or
very few ways of expressing the idea, Warren Publ’g, Inc. v. Microdos Data Corp., 115
F.3d 1509, 1519 n. 27 (11th Cir.1997), the idea and expression are said to have
“merged.” In these instances, copyright protection does not exist because granting
protection to the expressive component of the work necessarily would extend
protection to the work’s uncopyrightable ideas as well. See Gates Rubber Co. v. Bando
Chem. Indus., Ltd., 9 F.3d 823, 838 (10th Cir.1993); see also Murray Hill Publ’ns, Inc. v.
Twentieth Century Fox Film Corp., 361 F.3d 312, 319 n. 2 (6th Cir.2004) (noting that
where idea and expression are intertwined and where non-protectable ideas
predominate, expression is not protected). For computer programs, “if the
patentable process is embodied inextricably in the line-by-line instructions of the

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computer program, [] then the process merges with the expression and precludes
copyright protection.” Atari I, 975 F.2d at 839-40.
For similar reasons, when external factors constrain the choice of expressive vehicle,
the doctrine of “scènes à faire” — “scenes,” in other words, “that must be done” —
precludes copyright protection. See Twentieth Century Fox Film, 361 F.3d at 319-20. In
the literary context, the doctrine means that certain phrases that are “standard,
stock, ... or that necessarily follow from a common theme or setting” may not obtain
copyright protection. Gates Rubber, 9 F.3d at 838. In the computer-software context,
the doctrine means that the elements of a program dictated by practical realities —
e.g., by hardware standards and mechanical specifications, software standards and
compatibility requirements, computer manufacturer design standards, target industry
practices, and standard computer programming practices — may not obtain
protection. Id. (citing case examples); see Sega Enters., 977 F.2d at 1524 (“To the
extent that a work is functional or factual, it may be copied.”); Brown Bag Software v.
Symantec Corp., 960 F.2d 1465, 1473 (9th Cir.1992) (affirming district court’s finding
that “plaintiffs may not claim copyright protection of an expression that is, if not
standard, then commonplace in the computer software industry”). As “an industrywide goal,” programming “efficiency” represents an external constraint that figures
prominently in the copyrightability of computer programs. Altai, 982 F.2d at 708.
Generally speaking, “lock-out” codes fall on the functional-idea rather than the
original-expression side of the copyright line. Manufacturers of interoperable devices
such as computers and software, game consoles and video games, printers and toner
cartridges, or automobiles and replacement parts may employ a security system to
bar the use of unauthorized components. To “unlock” and permit operation of the
primary device (i.e., the computer, the game console, the printer, the car), the
component must contain either a certain code sequence or be able to respond
appropriately to an authentication process. To the extent compatibility requires that a
particular code sequence be included in the component device to permit its use, the
merger and scènes à faire doctrines generally preclude the code sequence from
obtaining copyright protection. See Sega Enters., 977 F.2d at 1524 (“When specific
instructions, even though previously copyrighted, are the only and essential means of
accomplishing a given task, their later use by another will not amount to infringement.”)
(quoting National Commission on New Technological Uses of Copyrighted Works,
Final Report 20 (1979)) (emphasis added); Atari Games Corp. v. Nintendo of Am., Inc.,
1993 WL 207548, at *1 (N.D.Cal. May 18, 1993) (“Atari III”) (“Program code that is
strictly necessary to achieve current compatibility presents a merger problem, almost
by definition, and is thus excluded from the scope of any copyright.”).
In trying to discern whether these doctrines apply, courts tend to “focus on whether
the idea is capable of various modes of expression.” Mason v. Montgomery Data, Inc.,
967 F.2d 135, 138 (5th Cir.1992) (quoting Franklin Computer, 714 F.2d at 1253); Atari
I, 975 F.2d at 840 (“The unique arrangement of computer program expression which
generates the data stream does not merge with the process so long as alternate
expressions are available.”). The question, however, is not whether any alternatives
theoretically exist; it is whether other options practically exist under the
circumstances. See Altai, 982 F.2d at 708 (“While, hypothetically, there might be a
myriad of ways in which a programmer may effectuate certain functions within a

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program ... efficiency concerns may so narrow the practical range of choice as to
make only one or two forms of expression workable options.”); Atari I, 975 F.2d at
840 (noting that “no external factor dictated the bulk of the program” and finding
the program copyrightable). In order to characterize a choice between alleged
programming alternatives as expressive, in short, the alternatives must be feasible
within real-world constraints.
The Supreme Court’s decision in Feist helps to illustrate the point. In Feist, the
alleged infringer had included 1,309 of the plaintiff’s alphabetically-organized
telephone book listings in its own telephone directory. 499 U.S. at 344. The facts
comprising these listings, it was clear, theoretically could have been organized in
other ways — for instance, by street address or phone number, or by the age or
height of the individual. But by virtue of tradition and settled expectations, the
familiar alphabetical structure copied by the defendant amounted to the only
organizational option available to the defendant. Id. at 363. For these reasons, the
Supreme Court determined that alphabetical phone listings did not satisfy the low
threshold of originality for copyright protection. Id.; see Altai, 982 F.2d at 711
(noting that although Feist dealt with factual compilations under 17 U.S.C. § 101, the
decision’s “underlying tenets apply to much of the work involved in computer
programming” under 17 U.S.C. § 102(a)).
***
In applying these requirements to this case, it helps to clarify the terms of debate
between the parties. Lexmark claims copyright protection in, and infringement of,
the code that composes its Toner Loading Program. It has not alleged that SCC
copied any other portion of its chip, including any of the data on which the SHA-1
algorithm — the authentication sequence or “secret handshake” — appear.
Presumably that is because SCC replaced Lexmark’s SHA-1 function with a different
publicly available encryption program to enable interoperability of its chip with
Lexmark’s printers. When it comes to the merits of the infringement claim, the
parties primarily debate whether the Toner Loading Program satisfies the originality
requirement (prong one), as distinct from whether any copying by SCC is
substantially similar to the Lexmark chip (prong two). That is because the parties
agree that SCC’s SMARTEK chip copied all aspects of the Toner Loading Program.
In our view, the district court committed three related legal errors in determining
that Lexmark had a likelihood of prevailing on its copyright claim with respect to the
Toner Loading Program. First, the district court concluded that, because the Toner
Loading Program “could be written in a number of different ways,” it was entitled to
copyright protection. In refusing to consider whether “external factors such as
compatibility requirements, industry standards, and efficiency” circumscribed the
number of forms that the Toner Loading Program could take, the district court
believed that the idea-expression divide and accompanying principles of merger and
scènes à faire play a role only in the “substantial similarity” analysis and do not apply
when the first prong of the infringement test (copyrightability) is primarily at issue.
In taking this path, the district court relied on cases invoking the pronouncement [in
Nimmer on Copyright] that the idea-expression divide “constitutes not so much a
limitation on the copyrightability of works, as it is a measure of the degree of
similarity that must exist between a copyrightable work and an unauthorized copy.”
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And in concluding more generally that the copyrightability of a computer program
turns solely on the availability of other options for writing the program, the court
relied on several cases from other circuits. See, e.g., Apple Computer, Inc. v. Formula
Int’l, Inc., 725 F.2d 521, 525 (9th Cir.1984); Franklin Computer, 714 F.2d at 1253;
Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1240 (3d Cir. 1986); E.F.
Johnson Co. v. Uniden Corp. of Am., 623 F.Supp. 1485, 1502 (D.Minn. 1985).
This reasoning, to start with, conflicts with Feist. As the Supreme Court’s recent
decision suggests, one does not satisfy the originality requirement for copyright
protection merely by showing that the work could have been put together in
different ways. Just as it failed to suffice in Feist that the author of the competing
telephone book could have organized the listings in some manner other than the
individual’s last name, so it does not suffice here that SCC could have written the
Toner Loading Program in some other way. As in Feist, the court must ask whether
the alternative ways of putting together the competing work are feasible in that
setting.
Nor does Nimmer support the district court’s “a number of different ways”
reasoning. As a matter of practice, Nimmer is correct that courts most commonly
discuss the idea-expression dichotomy in considering whether an original work and a
partial copy of that work are “substantially similar” (as part of prong two of the
infringement test), since the copyrightability of a work as a whole (prong one) is less
frequently contested. But the idea-expression divide figures into the substantial
similarity test not as a measure of “similarity”; it distinguishes the original work’s
protectable elements from its unprotectable ones, a distinction that allows courts to
determine whether any of the former have been copied in substantial enough part to
constitute infringement. Both prongs of the infringement test, in other words,
consider “copyrightability,” which at its heart turns on the principle that copyright
protection extends to expression, not to ideas. See Brown Bag Software, 960 F.2d at
1475-76 (noting that copyrightability is an aspect of both parts of the infringement
test); see also Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1545 (11th Cir.1996) (deciding
that district court erred by not permitting consideration of merger, scènes à faire
doctrines in instance of literal copying); Lotus Dev., 49 F.3d at 815 (assessing whether
the literally copied menu command structure is copyrightable in light of § 102(b)’s
limitation); Whelan Assocs., 797 F.2d at 1236-37 (discussing scènes à faire doctrine in
considering copyrightability of computer program structure); Franklin Computer, 714
F.2d at 1253 (discussing merger in context of copyrightability of computer operating
system program). When a work itself constitutes merely an idea, process or method
of operation, or when any discernible expression is inseparable from the idea itself,
or when external factors dictate the form of expression, copyright protection does
not extend to the work. See Bateman, 79 F.3d at 1546 n. 28 (“Compatibility and other
functionality challenges to originality ... are applied so as to deny copyright
protection to a particular work or portion of a work.”) (emphasis added); Mason, 967
F.2d at 138 n. 5 (rejecting argument that merger doctrine applies only to question of
infringement and noting that “this court has applied the merger doctrine to the
question of copyrightability”).
Neither do the cited cases support the district court’s initial frame of reference.
Franklin Computer, 714 F.2d 1240, and Formula International, 725 F.2d 521, involved

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copies of Apple’s operating system program — a program whose size and
complexity is to the Toner Loading Program what the Sears Tower is to a lamppost.
Given the nature of the Apple program, it would have been exceedingly difficult to
say that practical alternative means of expression did not exist and indeed no
defendant in the cases advanced that argument. And Franklin Computer, 714 F.2d at
1253, and Whelan Assocs., 797 F.2d at 1236-37, do not establish that any variation in
the modes of expression establishes copyrightability, as they acknowledge the
potential relevance of the merger and scènes à faire doctrines. While E.F. Johnson
rejected the defendant’s argument that the computer software program at issue was
not protectable because it was needed for “compatibility” with a certain radio system,
it did so only after finding that “the exact duplication of the program was not the
‘only and essential’ means of achieving compatibility.” 623 F.Supp. at 1502.
Second, given the district court’s mistaken view of the legal standard for
distinguishing protectable expression from unprotectable ideas, the constraints on
the Toner Loading Program established by the evidence need to be reconsidered. To
discern whether “originality” exists in the work, the court should ask whether the
ideas, methods of operation and facts of the program could have been expressed in
any form other than that chosen by the programmer, taking into consideration the
functionality, compatibility and efficiency demanded of the program.
In presenting evidence in support of its motion for a preliminary injunction,
Lexmark focused on establishing that the Toner Loading Program could have been
written in other ways. Dr. Maggs, Lexmark’s expert, described several possible
alternatives in his declaration: (1) different constants and equations could be used; (2)
a lookup table could be used in lieu of equations; (3) some measure other than
torque could be used to approximate toner level (e.g., the number of pages printed);
or (4) the same equations could be used in a different sequence. He concluded that
over 50 different programs could be written to substitute for the Toner Loading
Program.
Dr. Goldberg, SCC’s expert, acknowledged that certain changes could be made to
the program, for example, by changing the sequence of elements in the program, or
by writing the Toner Loading Program in a different programming language
altogether. But Dr. Goldberg conceded this point only as a theoretical matter, as he
concluded that functionality and efficiency considerations precluded any material
changes to the Toner Loading Program.
Dr. Goldberg concluded that several external constraints limit the options available
in designing the Toner Loading Program. For one, the Printer Engine Program that
downloads and executes the program understands only a single programming
language composed of eight simple commands. For another, the program must
consist of only 55 bytes because the printer downloads only these particular bytes.
Efficiency considerations and the physical realities of the printer and toner cartridge
also restrict the forms that the Toner Loading Program could take. As a result, Dr.
Goldberg concluded, these external factors together “dictate the way that the simple
toner loading program looks,” and the resulting program is a “no-thought translation
of the formulas to the language that the internal loading program must be written in,
and the programmer doesn’t have much choice.” Dr. Goldberg responded to Dr.
Maggs’ testimony that the Toner Loading Program could take alternative forms by
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noting that Dr. Maggs’ proposed changes were trivial — that they did not make any
“substantial difference to the nature of the program” — or that they were so
inefficient and repetitive as to be “ridiculous.” Instead, Dr. Goldberg concluded, the
Toner Loading Program as it is written is the most “straightforward, efficient, natural
way to express the program.” By contrast, Dr. Maggs’ testimony did not reference
any of these functional considerations discussed by Goldberg, meaning that the
record fails to establish any affirmative support for the contention that Dr. Maggs’
proposed alternatives satisfy the memory restrictions of the program.
Even aside from Dr. Goldberg’s testimony that the Toner Loading Program is the
most efficient means of calculating toner levels, the alternatives suggested by Dr.
Maggs do not appear to support the district court’s initial conclusion that the
program is expressive. Dr. Maggs’ first and third suggestions — that different
equations and values or a different means of measuring toner level altogether could
have been used — do not appear to represent alternative means of expressing the
ideas or methods of operations embodied in the Toner Loading Program; they
appear to be different ideas or methods of operation altogether. Selection from
among competing ideas or methods of operation generally does not result in
copyright-protectable expression. See Bateman, 79 F.3d at 1546 n.29 (“Generally
there is more than one method of operation or process that can be used to perform a
particular computer program function. However, methods of operation and
processes are not copyrightable.”); see also Am. Dental Ass’n v. Delta Dental Plans
Ass’n, 126 F.3d 977, 980 (7th Cir.1997) (“A lamp may be entirely original, but if the
novel elements are also functional the lamp cannot be copyrighted.”). Nor would the
use of a “lookup table” appear to differ meaningfully from the use of other equations
directly. Instead of executing a mathematical formula on a given input, this program
merely “looks up” in a data table the output of that same formula for the given input
value. Finally, Dr. Maggs’ fourth suggestion — that the same equations could be
reordered — does not appear to show originality because such alterations may be
too trivial to support a finding of creative expression. See M.M. Bus. Forms, 472 F.2d
at 1140 (holding that paraphrasing of words on legal forms does not contain the
requisite originality for copyright protection).
To the extent these alternatives suggest any originality in the Toner Loading Program,
at any rate, the quantum of originality may well be de minimis and accordingly
insufficient to support the validity of Lexmark’s copyright in the work. See Mitel, Inc.
v. Iqtel, Inc., 124 F.3d 1366, 1373-74 (10th Cir.1997) (determining that plaintiff’s
“arbitrary selection” of several numbers required only “de minimis creative effort”
and did not “evince enough originality to distinguish authorship”); cf. Sega Enters.,
977 F.2d at 1524 n. 7 (noting that 20-byte code is of de minimis length and therefore
likely a “word” or “short phrase” that is not protected by copyright law); Murray Hill
Publ’ns, Inc. v. ABC Comm’ns, Inc., 264 F.3d 622, 633 (6th Cir.2001) (noting that short
movie line was “a phrase or slogan not worthy of copyright protection in its own
right”). Because the district court initially looked at these issues and this evidence
through the wrong frame of reference, its conclusion that the Toner Loading
Program had sufficient originality to obtain copyright protection does not support
the preliminary injunction. At the permanent injunction stage of this dispute, we
leave it to the district court in the first instance to decide whether the Toner Loading
Program has sufficient originality to warrant copyright protection.
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Third, and perhaps most significantly, the district court erred in assessing whether
the Toner Loading Program functions as a lock-out code. Even if the constraints
described by Dr. Goldberg — the programming language, the program size,
efficiency concerns — did not dictate the content of the Toner Loading Program,
the fact that it also functions as a lock-out code undermines the conclusion that
Lexmark had a probability of success on its infringement claim.
The Toner Loading Program, recall, serves as input to the checksum operation that
is performed each time the printer is powered on or the printer door is opened and
closed (i.e., for toner cartridge replacement). After downloading a copy of the Toner
Loading Program to calculate toner levels, the Printer Engine Program runs a
calculation — the checksum — using every data byte of the Toner Loading Program
as input. The program then compares the result of that calculation with a “checksum
value” that is located elsewhere on Lexmark’s toner cartridge chip. If any single byte
of the Toner Loading Program is altered, the checksum value will not match the
checksum calculation result. Only if the checksum value is correspondingly changed
to accommodate any alterations in the data bytes will the printer function.
In addition to its general conclusion that external constraints on the program were
not relevant, the district court concluded that the checksum operation did not
operate as a strict constraint on the content of the Toner Loading Program because
“SCC’s identical copying of Lexmark’s Toner Loading Programs went beyond that
which was necessary for compatibility.” According to the district court, the program
could be altered rather simply, even in view of the checksum operation, because
reasonable trial and error of no more than 256 different data combinations would
have enabled SCC to discover and encode the correct checksum value on its chip. In
reaching this conclusion, the court downplayed the significance of Dr. Goldberg’s
testimony regarding the importance of contextual information to the ease or
difficulty of guessing the correct checksum value, saying that Dr. Goldberg called the
task “extraordinarily difficult,” then dismissing his testimony without further
explanation. Dr. Goldberg, however, did not describe this endeavor as
“extraordinarily difficult” but as “computationally impossible,” (emphasis added) — a
point that Lexmark did not then, and does not now, refute. Contrary to Judge
Feikens’ suggestion, moreover, Lexmark offered no evidence to show that the task
of “turning off” the checksum operation altogether (without contextual information)
would be any different from, or any less arduous than, the task of altering the
checksum value to accommodate another program.
The difficulty of deriving the proper checksum value and the corresponding degree
to which the checksum operation acts as a constraint on the content of the bytes
comprising the Toner Loading Program may be an open question at the permanent
injunction phase. But for purposes of the preliminary injunction, Dr. Goldberg’s
unchallenged testimony that it would be “computationally impossible” to modify the
checksum value without contextual information suffices to establish that the
checksum operation imposes a compatibility constraint in the most literal sense
possible: if any single byte of the Toner Loading Program is altered, the printer will
not function. On this record, pure compatibility requirements justified SCC’s
copying of the Toner Loading Program.
***
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In defense of the district court’s decision, Lexmark raises several other arguments, all
unavailing. First, Lexmark notes that it “creatively inserted” in the Toner Loading
Program a computer code representation of its stock ticker symbol, “LXK.”
Lexmark describes this segment as “non-functional” because it does not translate
into source code contributing to the toner-calculating program. It is not clear
whether these three letters would support a finding of creative expression in the
work as a whole. See Sega Enters., 977 F.2d at 1524 n. 7 (noting that Sega’s 20-byte
initialization code is of de minimis length and therefore likely a “word” or “short
phrase” that is not protected by copyright law as described in 37 C.F.R. § 202.1(a));
see also Feist, 499 U.S. at 344 (concluding that phone book listings are not
copyrightable even though the listings contained four fictitious listings that the
plaintiff included for infringement detection purposes). What is clear is that the bytes
containing the “LXK” reference are functional in the sense that they, like the rest of
the Toner Loading Program, also serve as input to the checksum operation and as a
result amount to a lock-out code that the merger and scènes à faire doctrines preclude
from obtaining protection.
Second, Lexmark argues that if the Toner Loading Program is not copyrightable,
then “most computer programs would not be copyrightable.” But the slope of this
decision is neither as slippery nor as steep as Lexmark suggests. Most computer
programs do not simultaneously operate as a lock-out code that is “computationally
impossible” to alter without input from the programmer; and most programs are not
as brief as this one.
In reaching this conclusion, we do not mean to say that brief computer programs are
ineligible for copyright protection. Short programs may reveal high levels of
creativity and may present simple, yet unique, solutions to programming quandaries.
Just as a mathematician may develop an elegant proof, or an author may express
ideas in a spare, simple, but creative manner, see, e.g., e.e. cummings, Selected Poems
(Richard S. Kennedy ed., 1994), so a computer programmer may develop a program
that is brief and eligible for protection. But unless a creative flair is shown, a very
brief program is less likely to be copyrightable because it affords fewer opportunities
for original expression.
Third, invoking the Federal Circuit’s decision in Atari I, 975 F.2d at 840, Lexmark
argues that even if the Toner Loading Program amounts to a lock-out code, it still
may be eligible for protection. In Atari I, Nintendo developed a program (known as
“10NES”) that blocked its game console from accepting unauthorized game
cartridges. Relying on this program, Nintendo sold game cartridges that generated a
data stream that “unlocked” the game console, allowing it to load and run the game.
The Federal Circuit determined that the 10NES program was copyrightable despite
arguments that the program constituted unprotectable ideas rather than expression
and that the merger doctrine precluded copyright protection.
The Federal Circuit’s rationale for accepting copyright protection for the 10NES
program does not undermine our conclusion because the 10NES program was not a
“lock out” code in the same sense that the Toner Loading Program is. In Atari, the
data bytes of the 10NES program did not themselves do the “unlocking” of the
game console; the program, when executed, generated an arbitrary stream of data
that in turn enabled the console to function. That same data stream, the court
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concluded, could have been produced by a number of alternative programs; for this
reason, the expression contained in the computer program did not “merge” with the
process. Id. (“The unique arrangement of computer program expression which
generates that data stream does not merge with the process so long as alternate
expressions are available. In this case, Nintendo has produced expert testimony
showing a multitude of different ways to generate a data stream which unlocks the
NES console.”) id. (“[N]o external factor dictated the bulk of the [10NES]
program.”). Here, by contrast, the data bytes comprising the Toner Loading Program
themselves act as the input to the checksum operation that must be successfully
completed for the printer to operate. None of these bytes of the program can be
altered without impeding printer functionality given the compatibility requirements
created by the checksum operation. See Atari III, 1993 WL 207548, at *1
(distinguishing current compatibility requirements from future ones, and excluding
program code “that is strictly necessary” to comply with the former from copyright
protection under the merger concept). Compatibility requirements in Atari, in short,
did not preclude the possibility of substituting other programs for the 10NES, while
they do here.
For like reasons, Judge Feikens is correct that a poem in the abstract could be
copyrightable. But that does not mean that the poem receives copyright protection
when it is used in the context of a lock-out code. Similarly, a computer program may
be protectable in the abstract but not generally entitled to protection when used
necessarily as a lock-out device.
Notes and questions
(1) In Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004), the
Sixth Circuit held that a simple computer program used as a lock-out device was not
copyrightable because of the merger and scènes à faire doctrines. In a part of the decision not
extracted here, the court also indicated that even if it were copyrightable the defendant’s use
to enable compatible printer cartridges to work in Lexmark printers would have been fair use.
(2) The Sixth Circuit treats merger and scènes à faire as a matter of whether feasible
alternatives exist within “real-world constraints” and not simply whether alternatives exist in
theory. The court of appeals faulted the district court (at 537) for “refusing consider whether
external factors such as compatibility requirements, industry standards, and efficiency
circumscribed the number of forms that the Toner Loading Program could take.”
(3) Notice that the Sixth Circuit treats merger and scènes à faire as limitations on copyright
scope that can arise after the work has been created. The court says (at 536) that the question
is not simply “whether any alternatives theoretically exist” but rather “whether other options
practically exist under the circumstances” and of course, circumstances change over time.
This is consistent with Baker v. Selden. Recall that in the Court in Baker held that Baker did
not infringe the copyright in Selden’s book on a novel bookkeeping system, even though
Baker copied the forms used to implement the system. When Selden devised his
bookkeeping system initially he no doubt had many choices to make and some of these
choices might be thought of as creative, after a fashion. And yet when Baker came to
implement the same system he was left with relatively few choices. This is not to say that

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Baker had literally no choice but to copy the forms exactly, indeed Baker’s forms were
somewhat different to Selden’s.
(4) In a more recent computer software case, Oracle America, Inc. v. Google Inc., 750 F.3d at
1363-1364, the Federal Circuit held (arguably, against the weight of authority), takes the
position that a court must focus on the choices available to the author of the copyrighted
work at the time of creation; thus constraints faced by the later author and concerns such as
compatibility and interoperability are irrelevant to a merge or scènes à faire analysis.
(5) The Lexmark court rejects the position of the Nimmer treatise that merger and scènes à
faire are only applicable to assessing substantial similarity. The court held that an analysis of
copyrightability informed by the doctrines of merger and scènes à faire is required to establish
the existence of a valid copyright and to determine whether a particular act of reproduction
amounts to infringement.
(6) Does the court’s conclusion in Lexmark (at 538) that “when external factors dictate the
form of expression, copyright protection does not extend to the work” make sense in
absolute terms? What if Lexmark had a poem that functioned as a lock-out code, would the
poem be uncopyrightable for all purposes, or simply when used in that one functionally
constrained manner?
At 544 the court notes that:
a poem in the abstract could be copyrightable. But that does not mean that the
poem receives copyright protection when it is used in the context of a lock-out code.
Similarly, a computer program may be protectable in the abstract but not generally
entitled to protection when used necessarily as a lock-out device.

Is the court saying that when a poem used as a lock-out device it loses copyright protection,
or that it retains copyright generally, but is not infringed by use for a similar function?

The law itself is not copyrightable
In Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 668 (1834) the Supreme Court held unanimously,
although with very little explanation, that “no reporter has or can have any copyright in the
written opinions delivered by this Court; and that the judges thereof cannot confer on any
reporter any such right.”
In Banks v. Manchester, 128 U.S. 244 (1888) the Court addressed the same issue with respect
to the opinions of state court judges. In Banks the Supreme Court held that court reporter
for the Ohio Supreme Court could not hold copyright in the opinions of the Court. The
court said (at 253) that as a matter of public policy “no copyright could under the statutes
passed by Congress, be secured in the products of the labor done by judicial officers in the
discharge of their judicial duties.” Justice Blatchford further explained (at 253-254) that:
The whole work done by the judges constitutes the authentic exposition and
interpretation of the law, which, binding every citizen, is free for publication to all,
whether it is a declaration of unwritten law, or an interpretation of a constitution or
a statute.

However, less than a month later in Callaghan v. Myers, 128 U.S. 617 (1888) the Court held
that although “there can be no copyright in the opinions of the judges, or in the work done

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by them in their official capacity as judges,” the additional intellectual contribution of the
court reporter—things such as organizing the cases; writing annotations such as headnotes
and syllabi to appear alongside the opinions in the reports—may be entitled to copyright
protection in the hands of the reporter as a private individual. The Court said (at 647) that
there was “no ground of public policy on which a reporter who prepares a volume of law
reports, of the character of those in this case, can ... be debarred from obtaining a copyright
for the volume which will cover the matter which is the result of his intellectual labor.”
The Supreme Court returned to this issue in the following case:
Georgia v. Public.Resource.Org, Inc. 140 S.Ct. 1498 (2020)
Chief Justice Roberts delivered the opinion of the Court.
The Copyright Act grants potent, decades-long monopoly protection for “original
works of authorship.” 17 U.S.C. § 102(a). The question in this case is whether that
protection extends to the annotations contained in Georgia’s official annotated code.
We hold that it does not. Over a century ago, we recognized a limitation on
copyright protection for certain government work product, rooted in the Copyright
Act’s “authorship” requirement. Under what has been dubbed the government edicts
doctrine, officials empowered to speak with the force of law cannot be the authors
of—and therefore cannot copyright —the works they create in the course of their
official duties.
We have previously applied that doctrine to hold that non-binding, explanatory legal
materials are not copyrightable when created by judges who possess the authority to
make and interpret the law. See Banks v. Manchester, 128 U.S. 244 (1888). We now
recognize that the same logic applies to non-binding, explanatory legal materials
created by a legislative body vested with the authority to make law. Because
Georgia’s annotations are authored by an arm of the legislature in the course of its
legislative duties, the government edicts doctrine puts them outside the reach of
copyright protection.
I
A
The State of Georgia has one official code—the “Official Code of Georgia
Annotated,” or OCGA. The first page of each volume of the OCGA boasts the
State’s official seal and announces to readers that it is “Published Under Authority of
the State.”
The OCGA includes the text of every Georgia statute currently in force, as well as
various non-binding supplementary materials. At issue in this case is a set of
annotations that appear beneath each statutory provision. The annotations generally
include summaries of judicial decisions applying a given provision, summaries of any
pertinent opinions of the state attorney general, and a list of related law review
articles and similar reference materials. In addition, the annotations often include
editor’s notes that provide information about the origins of the statutory text, such
as whether it derives from a particular judicial decision or resembles an older
provision that has been construed by Georgia courts.

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The OCGA is assembled by a state entity called the Code Revision Commission. In
1977, the Georgia Legislature established the Commission to recodify Georgia law
for the first time in decades. The Commission was (and remains) tasked with
consolidating disparate bills into a single Code for reenactment by the legislature and
contracting with a third party to produce the annotations. A majority of the
Commission’s 15 members must be members of the Georgia Senate or House of
Representatives. The Commission receives funding through appropriations
“provided for the legislative branch of state government.” OCGA § 28-9-2(c) (2018).
And it is staffed by the Office of Legislative Counsel, which is obligated by statute to
provide services “for the legislative branch of government.” §§ 28-4-3(c)(4), 28-9-4.
Under the Georgia Constitution, the Commission’s role in compiling the statutory
text and accompanying annotations falls “within the sphere of legislative authority.”
Harrison Co. v. Code Revision Commission, 244 Ga. 325, 330 (1979).
Each year, the Commission submits its proposed statutory text and accompanying
annotations to the legislature for approval. The legislature then votes to do three
things: (1) “enact[]” the “statutory portion of the codification of Georgia laws”; (2)
“merge[]” the statutory portion “with [the] annotations”; and (3) “publish[]” the final
merged product “by authority of the state” as “the ‘Official Code of Georgia
Annotated.’“ OCGA § 1-1-1 (2019).
The annotations in the current OCGA were prepared in the first instance by
Matthew Bender & Co., Inc., a division of the LexisNexis Group, pursuant to a
work-for-hire agreement with the Commission. The agreement between Lexis and
the Commission states that any copyright in the OCGA vests exclusively in “the
State of Georgia, acting through the Commission.” Lexis and its army of researchers
perform the lion’s share of the work in drafting the annotations, but the Commission
supervises that work and specifies what the annotations must include in exacting
detail. Under the agreement, Lexis enjoys the exclusive right to publish, distribute,
and sell the OCGA. In exchange, Lexis has agreed to limit the price it may charge for
the OCGA and to make an unannotated version of the statutory text available to the
public online for free. A hard copy of the complete OCGA currently retails for
$412.00.
B
Public.Resource.Org (PRO) is a nonprofit organization that aims to facilitate public
access to government records and legal materials. Without permission, PRO posted a
digital version of the OCGA on various websites, where it could be downloaded by
the public without charge. PRO also distributed copies of the OCGA to various
organizations and Georgia officials.
In response, the Commission sent PRO several cease-and-desist letters asserting that
PRO’s actions constituted unlawful copyright infringement. When PRO refused to
halt its distribution activities, the Commission sued PRO on behalf of the Georgia
Legislature and the State of Georgia for copyright infringement. The Commission
limited its assertion of copyright to the annotations described above; it did not claim
copyright in the statutory text or numbering. PRO counterclaimed, seeking a
declaratory judgment that the entire OCGA, including the annotations, fell in the
public domain. …

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II
We hold that the annotations in Georgia’s Official Code are ineligible for copyright
protection, though for reasons distinct from those relied on by the Court of Appeals.
A careful examination of our government edicts precedents reveals a straightforward
rule based on the identity of the author. Under the government edicts doctrine,
judges—and, we now confirm, legislators—may not be considered the “authors” of
the works they produce in the course of their official duties as judges and legislators.
That rule applies regardless of whether a given material carries the force of law. And
it applies to the annotations here because they are authored by an arm of the
legislature in the course of its official duties.
A
We begin with precedent. The government edicts doctrine traces back to a trio of
cases decided in the 19th century. In this Court’s first copyright case, Wheaton v. Peters,
8 Pet. 591 (1834), the Court’s third Reporter of Decisions, Wheaton, sued the fourth,
Peters, unsuccessfully asserting a copyright interest in the Justices’ opinions. In
Wheaton’s view, the opinions “must have belonged to some one” because “they
were new, original,” and much more “elaborate” than law or custom required. Id., at
615 (argument). Wheaton argued that the Justices were the authors and had assigned
their ownership interests to him through a tacit “gift.” Id., at 614. The Court
unanimously rejected that argument, concluding that “no reporter has or can have
any copyright in the written opinions delivered by this court” and that “the judges
thereof cannot confer on any reporter any such right.” Id., at 668 (opinion).
That conclusion apparently seemed too obvious to adorn with further explanation,
but the Court provided one a half century later in Banks v. Manchester, 128 U.S. 244
(1888). That case concerned whether Wheaton’s state-court counterpart, the official
reporter of the Ohio Supreme Court, held a copyright in the judges’ opinions and
several non-binding explanatory materials prepared by the judges. Id., at 249-251.
The Court concluded that he did not, explaining that “the judge who, in his judicial
capacity, prepares the opinion or decision, the statement of the case and the syllabus
or head note” cannot “be regarded as their author or their proprietor, in the sense of
[the Copyright Act].” Id., at 253. Pursuant to “a judicial consensus” dating back to
Wheaton, judges could not assert copyright in “whatever work they perform in their
capacity as judges.” Banks, 128 U.S. at 253 (emphasis in original). Rather, “the whole
work done by the judges constitutes the authentic exposition and interpretation of
the law, which, binding every citizen, is free for publication to all.” Ibid. (citing Nash
v. Lathrop, 142 Mass. 29 (1886)).
In a companion case decided later that Term, Callaghan v. Myers, 128 U.S. 617 (1888),
the Court identified an important limiting principle. As in Wheaton and Banks, the
Court rejected the claim that an official reporter held a copyright interest in the
judges’ opinions. But, resolving an issue not addressed in Wheaton and Banks, the
Court upheld the reporter’s copyright interest in several explanatory materials that
the reporter had created himself: headnotes, syllabi, tables of contents, and the like.
Callaghan, 128 U.S. at 645. Although these works mirrored the judge-made materials
rejected in Banks, they came from an author who had no authority to speak with the
force of law. Because the reporter was not a judge, he was free to “obtain[] a

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copyright” for the materials that were “the result of his [own] intellectual labor.” 128
U.S. at 647.
These cases establish a straightforward rule: Because judges are vested with the
authority to make and interpret the law, they cannot be the “author” of the works
they prepare “in the discharge of their judicial duties.” Banks, 128 U.S. at 253. This
rule applies both to binding works (such as opinions) and to non-binding works
(such as headnotes and syllabi). It does not apply, however, to works created by
government officials (or private parties) who lack the authority to make or interpret
the law, such as court reporters.
The animating principle behind this rule is that no one can own the law. “Every
citizen is presumed to know the law,” and “it needs no argument to show... that all
should have free access” to its contents. Nash, 142 Mass. at 35 (cited by Banks, 128
U.S. at 253-254). Our cases give effect to that principle in the copyright context
through construction of the statutory term “author.” Id., at 253. Rather than
attempting to catalog the materials that constitute “the law,” the doctrine bars the
officials responsible for creating the law from being considered the “author[s]” of
“whatever work they perform in their capacity” as lawmakers. Ibid. (emphasis added).
Because these officials are generally empowered to make and interpret law, their
“whole work” is deemed part of the “authentic exposition and interpretation of the
law” and must be “free for publication to all.” Ibid.
If judges, acting as judges, cannot be “authors” because of their authority to make
and interpret the law, it follows that legislators, acting as legislators, cannot be either.
Courts have thus long understood the government edicts doctrine to apply to
legislative materials. See, e.g., Nash, 142 Mass. at 35, 6 N.E. at 560 (judicial opinions
and statutes stand “on substantially the same footing” for purposes of the
government edicts doctrine); Howell v. Miller, 91 F. 129, 130-131, 137-138 (CA6 1898)
(Harlan, J., Circuit Justice, joined by then-Circuit Judge Taft) (analyzing statutes and
supplementary materials under Banks and Callaghan and concluding that the
materials were copyrightable because they were prepared by a private compiler).
Moreover, just as the doctrine applies to “whatever work [judges] perform in their
capacity as judges,” Banks, 128 U.S., at 253, it applies to whatever work legislators
perform in their capacity as legislators. That of course includes final legislation, but it
also includes explanatory and procedural materials legislators create in the discharge
of their legislative duties. In the same way that judges cannot be the authors of their
headnotes and syllabi, legislators cannot be the authors of (for example) their floor
statements, committee reports, and proposed bills. These materials are part of the
“whole work done by [legislators],” so they must be “free for publication to all.” Ibid.
Under our precedents, therefore, copyright does not vest in works that are (1)
created by judges and legislators (2) in the course of their judicial and legislative
duties.
B
1
Applying that framework, Georgia’s annotations are not copyrightable. The first step
is to examine whether their purported author qualifies as a legislator.
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As we have explained, the annotations were prepared in the first instance by a private
company (Lexis) pursuant to a work-for-hire agreement with Georgia’s Code
Revision Commission. The Copyright Act therefore deems the Commission the sole
“author” of the work. 17 U.S.C. § 201(b). Although Lexis expends considerable
effort preparing the annotations, for purposes of copyright that labor redounds to
the Commission as the statutory author. Georgia agrees that the author is the
Commission.
The Commission is not identical to the Georgia Legislature, but functions as an arm
of it for the purpose of producing the annotations. The Commission is created by
the legislature, for the legislature, and consists largely of legislators. The Commission
receives funding and staff designated by law for the legislative branch. Significantly,
the annotations the Commission creates are approved by the legislature before being
“merged” with the statutory text and published in the official code alongside that
text at the legislature’s direction. …
2
The second step is to determine whether the Commission creates the annotations in
the “discharge” of its legislative “duties.” Banks, 128 U.S. at 253. It does. Although
the annotations are not enacted into law through bicameralism and presentment, the
Commission’s preparation of the annotations is under Georgia law an act of
legislative authority, and the annotations provide commentary and resources that the
legislature has deemed relevant to understanding its laws. Georgia and Justice
GINSBURG emphasize that the annotations do not purport to provide authoritative
explanations of the law and largely summarize other materials, such as judicial
decisions and law review articles. But that does not take them outside the exercise of
legislative duty by the Commission and legislature. Just as we have held that the
“statement of the case and the syllabus or head note” prepared by judges fall within
the “work they perform in their capacity as judges,” Banks, 128 U.S. at 253, so too
annotations published by legislators alongside the statutory text fall within the work
legislators perform in their capacity as legislators.
In light of the Commission’s role as an adjunct to the legislature and the fact that the
Commission authors the annotations in the course of its legislative responsibilities,
the annotations in Georgia’s Official Code fall within the government edicts doctrine
and are not copyrightable.
III
Georgia resists this conclusion on several grounds. … Georgia suggests that we
should resist applying our government edicts precedents to the OCGA annotations
because our 19th-century forebears interpreted the statutory term author by
reference to “public policy”—an approach that Georgia believes is incongruous with
the “modern era” of statutory interpretation. But we are particularly reluctant to
disrupt precedents interpreting language that Congress has since reenacted. As we
explained last Term in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc., 139
S.Ct. 628 (2019), when Congress adopts the language used in an earlier act, we
presume that Congress adopted also the construction given by this Court to such
language, and made it a part of the enactment. A century of cases have rooted the
government edicts doctrine in the word “author,” and Congress has repeatedly
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reused that term without abrogating the doctrine. The term now carries this settled
meaning, and “critics of our ruling can take their objections across the street, [where]
Congress can correct any mistake it sees.” Kimble v. Marvel Entertainment, LLC, 576
U.S. 446, 456 (2015).
…
Turning to our government edicts precedents, Georgia insists that they can and
should be read to focus exclusively on whether a particular work has “the force of
law.” Justice Thomas appears to endorse the same view. But that framing has
multiple flaws.
Most obviously, it cannot be squared with the reasoning or results of our cases—
especially Banks. Banks, following Wheaton and the “judicial consensus” it inspired,
denied copyright protection to judicial opinions without excepting concurrences and
dissents that carry no legal force. 128 U.S. at 253 (emphasis deleted). As every judge
learns the hard way, “comments in [a] dissenting opinion” about legal principles and
precedents “are just that: comments in a dissenting opinion.” Railroad Retirement Bd. v.
Fritz, 449 U.S. 166, 177, n. 10 (1980). Yet such comments are covered by the
government edicts doctrine because they come from an official with authority to
make and interpret the law.
Indeed, Banks went even further and withheld copyright protection from headnotes
and syllabi produced by judges. 128 U.S. at 253. Surely these supplementary materials
do not have the force of law, yet they are covered by the doctrine. The simplest
explanation is the one Banks provided: These non-binding works are not
copyrightable because of who creates them—judges acting in their judicial capacity.
See ibid.
The same goes for non-binding legislative materials produced by legislative bodies
acting in a legislative capacity. There is a broad array of such works ranging from
floor statements to proposed bills to committee reports. Under the logic of Georgia’s
“force of law” test, States would own such materials and could charge the public for
access to them. …
Georgia minimizes the OCGA annotations as non-binding and non-authoritative,
but that description undersells their practical significance. Imagine a Georgia citizen
interested in learning his legal rights and duties. If he reads the economy-class
version of the Georgia Code available online, he will see laws requiring political
candidates to pay hefty qualification fees (with no indigency exception), criminalizing
broad categories of consensual sexual conduct, and exempting certain key evidence
in criminal trials from standard evidentiary limitations—with no hint that important
aspects of those laws have been held unconstitutional by the Georgia Supreme Court.
See OCGA §§ 21-2-131, 16-6-2, 16-6-18, 16-15-9 (available at www.legis.ga.gov).
Meanwhile, first-class readers with access to the annotations will be assured that
these laws are, in crucial respects, unenforceable relics that the legislature has not
bothered to narrow or repeal. See §§ 21-2-131, 16-6-2, 16-6-18, 16-15-9 (available at
https://store.lexisnexis.com/products/official-code-of-georgia-annotatedskuSKU6647 for $412.00).

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If everything short of statutes and opinions were copyrightable, then States would
be free to offer a whole range of premium legal works for those who can afford the
extra benefit. A State could monetize its entire suite of legislative history. With
today’s digital tools, States might even launch a subscription or pay-per-law service.
There is no need to assume inventive or nefarious behavior for these concerns to
become a reality. Unlike other forms of intellectual property, copyright protection is
both instant and automatic. It vests as soon as a work is captured in a tangible form,
triggering a panoply of exclusive rights that can last over a century. 17 U.S.C. §§ 102,
106, 302. If Georgia were correct, then unless a State took the affirmative step of
transferring its copyrights to the public domain, all of its judges’ and legislators’ nonbinding legal works would be copyrighted. And citizens, attorneys, nonprofits, and
private research companies would have to cease all copying, distribution, and display
of those works or risk severe and potentially criminal penalties. §§ 501-506. Some
affected parties might be willing to roll the dice with a potential fair use defense. But
that defense, designed to accommodate First Amendment concerns, is notoriously
fact sensitive and often cannot be resolved without a trial. Cf. Harper & Row,
Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 552 (1985). The less bold among us
would have to think twice before using official legal works that illuminate the law we
are all presumed to know and understand.
Thankfully, there is a clear path forward that avoids these concerns—the one we are
already on. Instead of examining whether given material carries “the force of law,”
we ask only whether the author of the work is a judge or a legislator. If so, then
whatever work that judge or legislator produces in the course of his judicial or
legislative duties is not copyrightable. That is the framework our precedents long ago
established, and we adhere to those precedents today.
Justice GINSBURG, with whom Justice BREYER joins, dissenting.
Beyond doubt, state laws are not copyrightable. Nor are other materials created by
state legislators in the course of performing their lawmaking responsibilities, e.g.,
legislative committee reports, floor statements, unenacted bills. Not all that
legislators do, however, is ineligible for copyright protection; the government edicts
doctrine shields only “works that are (1) created by judges and legislators (2) in the
course of their judicial and legislative duties.” Ante, at 1508 (emphasis added). The core
question this case presents, as I see it: Are the annotations in the Official Code of
Georgia Annotated (OCGA) done in a legislative capacity? The answer, I am
persuaded, should be no.
To explain why, I proceed from common ground. All agree that headnotes and
syllabi for judicial opinions—both a kind of annotation—are copyrightable when
created by a reporter of decisions, Callaghan v. Myers, 128 U.S. 617 (1888), but are not
copyrightable when created by judges, Banks v. Manchester, 128 U.S. 244, 253 (1888).
That is so because “[t]he whole work done by ... judges,” ibid., including dissenting
and concurring opinions, ranks as work performed in their judicial capacity. Judges
do not outsource their writings to arms or adjuncts, to be composed in their stead.
Accordingly, the judicial opinion-drafting process in its entirety—including the

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drafting of headnotes and syllabi, in jurisdictions where that is done by judges—falls
outside the reach of copyright protection.
One might ask: If a judge’s annotations are not copyrightable, why are those created
by legislators? The answer lies in the difference between the role of a judge and the
role of a legislator. “[T]o the judiciary” we assign “the duty of interpreting and
applying” the law, Massachusetts v. Mellon, 262 U.S. 447, 488 (1923), and sometimes
making the applicable law, see Friendly, In Praise of Erie—and of the New Federal
Common Law, 39 N. Y. U. L. Rev. 383 (1964). See also Marbury v. Madison, 1 Cranch
137, 177 (1803) (“It is emphatically the province and duty of the judicial department
to say what the law is.”). In contrast, the role of the legislature encompasses the
process of “making laws”—not construing statutes after their enactment. Mellon, 262
U.S. at 488; see Patchak v. Zinke, 138 S.Ct. 897, 905 (2018) (plurality opinion) (“The
legislative power is the power to make law.”). The OCGA annotations, in my
appraisal, do not rank as part of the Georgia Legislature’s lawmaking process for
three reasons.
First, the annotations are not created contemporaneously with the statutes to which
they pertain; instead, the annotations comment on statutes already enacted. … In
short, annotating begins only after lawmaking ends. This sets the OCGA annotations
apart from uncopyrightable legislative materials like committee reports, generated
before a law’s enactment, and tied tightly to the task of law-formulation.
Second, the OCGA annotations are descriptive rather than prescriptive. Instead of
stating the legislature’s perception of what a law conveys, the annotations summarize
writings in which others express their views on a given statute. For example, the
OCGA contains “case annotations” for “all decisions of the Supreme Court of
Georgia and the Court of Appeals of Georgia and all decisions of the federal courts
in cases which arose in Georgia construing any portion of the general statutory law
of the state.” Id., at 403. Per the Code Revision Commission’s instructions, each
annotation should “accurately reflect the facts, holding, and statutory construction”
adopted by the court. Id., at 404. The annotations are neutrally cast; they do not
opine on whether the summarized case was correctly decided. See, e.g., OCGA § 177-50 (2013) (case annotation summarizing facts and holdings of nine cases
construing right to grand jury hearing). This characteristic of the annotations
distinguishes them from preenactment legislative materials that touch or concern the
correct interpretation of the legislature’s work.
Third, and of prime importance, the OCGA annotations are “given for the purpose
of convenient reference” by the public, § 1-1-7 (2019); they aim to inform the
citizenry at large, they do not address, particularly, those seated in legislative
chambers.2
Footnote 2: Suppose a committee of Georgia’s legislature, to inform the public, instructs a staffer to
write a guide titled “The Workways of the Georgia Legislature.” The final text describing how the
legislature operates is circulated to members of the legislature and approved by a majority. Contrary to
the Court’s decision, I take it that such a work, which entails no lawmaking, would be copyrightable.

Annotations are thus unlike, for example, surveys, work commissioned by a
legislature to aid in determining whether existing law should be amended.

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The requirement that the statutory portions of the OCGA “shall be merged with
annotations,” § 1-1-1, does not render the annotations anything other than
explanatory, referential, or commentarial material. Annotations aid the legal
researcher, and that aid is enhanced when annotations are printed beneath or
alongside the relevant statutory text. But the placement of annotations in the OCGA
does not alter their auxiliary, nonlegislative character.
***
Because summarizing judicial decisions and commentary bearing on enacted statutes,
in contrast to, for example, drafting a committee report to accompany proposed
legislation, is not done in a legislator’s law-shaping capacity, I would hold the OCGA
annotations copyrightable and therefore reverse the judgment of the Court of
Appeals for the Eleventh Circuit.
[Justice THOMAS, with whom Justice ALITO joined, and with whom Justice
BREYER joined in part, also dissented.]
Notes and questions
(1) In Georgia v. Public.Resource.Org, Inc. 140 S.Ct. 1498 (2020) the Supreme Court held that the
Official Code of Georgia Annotated, a document that was published under the authority of
the state and yet contained non-binding annotations on and summaries of Georgia law, was
ineligible for copyright protection under the “government edicts doctrine.” Writing for the
majority, Chief Justice Roberts explained that “officials empowered to speak with the force
of law cannot be the authors of—and therefore cannot copyright —the works they create in
the course of their official duties.”
(2) Section 8 of the Copyright Act of 1909 provided that “no copyright shall subsist in the
original text of any work which is in the public domain ... or in any publication of the United
States Government, or any reprint, in whole or in part, thereof.” A similar provision persists
in section 105 of the current Act.
17 U.S. Code § 105. Subject matter of copyright: United States Government
works
Copyright protection under this title is not available for any work of the United
States Government, but the United States Government is not precluded from
receiving and holding copyrights transferred to it by assignment, bequest, or
otherwise.

Although section 105 only applies to the federal government, it is understood that the
government edicts doctrine applies with respect to state laws, municipal ordinances, court
decisions, and similar official documents.37
(3) In Veeck v. Southern Building Code Congress International, Inc., 293 F.3d 791 (5th Cir. 2002) (en
banc), the Fifth Circuit held that privately authored building codes lost their copyright status
once they were incorporated into law. However, various other courts have declined to
extend the rule in other similar contexts.38 This issue was addressed in another case involving
37 See Copyright Office’s 1961 Register’s Report, at 129-30.
38 See e.g. See, e.g., CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61 (2d Cir. 1994);

Practice Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d 516 (9th Cir. 1997), amended, 133 F.3d 1140 (9th Cir.

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PRO, American Society For Testing And Materials v. Public.Resource.Org, Inc. 896 F.3d 437 (D.C.
Cir. 2018)
The issue in ASTM v. Pub.Resource.Org was whether and to what extent privately developed
codes and standards retain the copyright protection once they become incorporated into
federal, state, or municipal law. As part of its self-proclaimed mission is “to make the law
and other government materials more widely available,” Public.Resource.Org (“PRO”)
posted copies of a number of incorporate standards to its public website. Between 2012 and
2014, PRO uploaded hundreds of technical standards, which, collectively, were downloaded
tens of thousands of times. In mid-2013, several standards organizations, including the
American Society for Testing & Materials sued PRO, asserting claims of copyright
infringement, among other things.
Tens of thousands of technical standards developed by private organizations are
incorporated into or referenced by law in different ways and with varying consequences. As
the court explained:
When agencies or legislatures incorporate private standards into law, they often do
so by reference—that is, instead of spelling out the requirements of a standard
within legislative or regulatory text, they reference the standard being incorporated
and direct interested parties to consult that standard in order to understand their
obligations. … Just as the incorporation process varies, so too—and this is central
to the issues before us—do the legal consequences of any given incorporation. This
is hardly surprising, given that federal, state, and local legislatures and agencies have
incorporated by reference thousands of technical standards. Indeed, by ASTM’s
own count, the Code of Federal Regulations alone has incorporated by reference
over 1,200 of its standards. This appeal, which concerns ten standards incorporated
by reference into law, reflects just a sliver of that diversity.
One way in which the incorporated standards vary is how readily they resemble
ordinary, binding law. At one end of this spectrum lie incorporated standards that
define one’s legal obligations just as much as, say, a local building code—except that
the specific legal requirements are found outside the two covers of the codebook.
The NFPA 70 tank-barge plug specification discussed above, which the relevant
regulation mentions by name in making compliance mandatory, is one such example.
Another is the incorporation of ASTM D975-07, the “Standard Specification for
Diesel Fuel Oils,” into the U.S. Code. It provides that a retailer of certain biofuels
need not affix any special labels to its fuel so long as the fuel “meets ASTM D975
diesel specifications.” 42 U.S.C. § 17021(b)(1). These laws impose legally binding
requirements indistinguishable from, for example, a cigarette-labeling obligation, see
15 U.S.C. § 1333(a), except that the federal law imposing that obligation expressly
specifies, without reference to an external standard, exactly what qualifies as a
cigarette, see id. § 1332(1).
At the other end of the spectrum lie standards that serve as mere references but
have no direct legal effect on any private party’s conduct. One example is the
incorporation of ASTM D86-07, the “Standard Test Method for Distillation of
Petroleum Products and Liquid Fuels at Atmospheric Pressure,” which a federal
regulation describes as a “reference procedure” used by the Environmental
Protection Agency and regulated motor-vehicle manufacturers to determine whether
1998); Cty. of Suffolk v. First Am. Real Estate Sols., 261 F.3d 179, 193 (2d Cir. 2001); John G. Danielson, Inc.
v. Winchester-Conant Properties, Inc., 322 F.3d 26 (1st Cir. 2003)

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the boiling point for certain gasoline used for “exhaust and evaporative emission
testing” falls within a permissible range. 40 C.F.R. § 86.113-04(a)(1). The regulation
creates only one relevant legal obligation: the regulated entity, in testing vehicular
emissions, must use gasoline that meets specifications expressly laid out within the
regulation itself. The incorporation of an external standard merely tells the regulated
entity how it can ensure that the gasoline it uses in fact satisfies the codified
requirements.

Judge Tatal’s majority opinion in the ASTM case acknowledged that PRO had raised “a
serious constitutional concern with permitting private ownership of standards essential to
understanding legal obligations.” However, the but thought “it best at this juncture to
address only the statutory fair use issue—which may provide a full defense to some, if not all,
of the [Standards Developing Organizations’] infringement claims in this case—and leave for
another day the question of whether the Constitution permits copyright to persist in works
incorporated by reference into law.”
In terms of fair use, the majority noted that PRO had distributed the standards for the
purpose of educating the public about the specifics of governing law and it generally credited
the argument that paraphrases, summaries, and descriptions, would not adequately “capture
the precision that is necessary to understand the legal obligations that governments impose
and enforce.” But the court regarded this as a highly fact specific inquiry. Citing Banks, the
court reiterated that “the express text of the law falls plainly outside the realm of copyright
protection” and held further that “standards incorporated by reference into law are, at best,
at the outer edge of copyright’s protective purposes.” Judge Tatel court further explained (at
452) that:
Where the consequence of the incorporation by reference is virtually
indistinguishable from a situation in which the standard had been expressly copied
into law, this factor weighs heavily in favor of fair use. But where the incorporation
does not lend to such easy substitution, fair use is harder to justify.

The court of appeals instructed the district court to take these principles into account on
remand and also to conduct a more nuanced analysis of the potential market effect of PRO’s
activities. Judge Katsas’ concurring opinion in ASTM is extracted below
American Society for Testing & Materials v. Pub.Resource.Org, Inc., 896 F.3d 437
(D.C. Cir. 2018)
Circuit Judge Katsas concurring:
The plaintiffs here claim a copyright over binding legal texts, which would enable
them to prevent anyone from gaining access to that law or copying it for the public.
See 17 U.S.C. § 106. Moreover, saying what that law is, without plaintiffs’ permission,
would expose an individual to injunctive relief, impoundment, damages, attorneys’
fees, and potentially even criminal liability. See id. §§ 502-506. As a matter of
common-sense, this cannot be right: access to the law cannot be conditioned on the
consent of a private party, just as it cannot be conditioned on the ability to read fine
print posted on high walls. See Suetonius, Gaius Caligula ¶ XLI, in The Lives of the
Caesars (J.C. Rolfe trans., Macmillan Co. 1914) (“he . . . had the law posted up, but in
a very narrow place and in excessively small letters, to prevent the making of a
copy”).

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Not surprisingly, precedent confirms this instinct. In Banks v. Manchester, 128 U.S.
244 (1888), the Supreme Court held that judges cannot copyright their opinions, in
part because their work “constitutes the authentic expression and interpretation of
the law, which, binding every citizen, is free for publication to all.” Id. at 253.
Moreover, two courts of appeals have confirmed that Banks remains good law under
the modern Copyright Act of 1976. In Building Officials & Code Administrators v. Code
Technology, Inc., 628 F.2d 730 (1st Cir. 1980), the First Circuit vacated a preliminary
injunction that would have enforced the copyright of a model building code as
enacted into Massachusetts law. While not definitively deciding the question, the
court reasoned that enforcement of the copyright could not be “squared with the
right of the public to know the law to which it is subject.” Id. at 735. Similarly, in
Veeck v. Southern Building Code Congress International, 293 F.3d 791 (5th Cir. 2002) (en
banc), the Fifth Circuit held that “as law,” model rules adopted by a legislative body
“enter the public domain and are not subject to the copyright holder’s exclusive
prerogatives.” Id. at 793.
Today, the Banks rule might rest on at least four possible grounds: the First
Amendment; the Due Process Clause of the Fifth Amendment; Section 102(b) of the
Copyright Act, which denies copyright protection to “any idea, procedure, process,
system, method of operation, concept, principle, or discovery,” 17 U.S.C. § 102(b);
or Section 107 of the Act, which sets forth the fair-use doctrine, id. § 107. The Court
today reasonably avoids what it correctly regards as “a serious constitutional concern”
under the First and Fifth Amendments. And it expressly reserves, in substance
though not by name, the question whether Section 102(b) extends protection to
private standards as enacted into law.
The Court’s fair-use analysis faithfully recites the governing four-factor balancing test,
yet, in conducting the balancing, it puts a heavy thumb on the scale in favor of an
unrestrained ability to say what the law is. Thus, when an incorporated standard sets
forth binding legal obligations, and when the defendant does no more and no less
than disseminate an exact copy of it, three of the four relevant factors—purpose and
character of the use, nature of the copyrighted work, and amount and substantiality
of the copying—are said to weigh “heavily” or “strongly” in favor of fair use. This
analysis closely parallels Banks, which the Court explicitly invokes in its discussion of
factor two. The Court acknowledges the thinness of the record in this case, and it
appropriately flags potentially complicating questions about how particular standards
may be incorporated into law, and whether such standards, as so incorporated,
actually constitute “the law.” But, where a particular standard is incorporated as a
binding legal obligation, and where the defendant has done nothing more than
disseminate it, the Court leaves little doubt that the dissemination amounts to fair
use.
With that understanding, and recognizing that the Section 102(b) and constitutional
issues remain open in the unlikely event that disseminating “the law” might be held
not to be fair use, I join the Court’s opinion.
Notes and questions:
(1) In his concurring opinion in ASTM, Judge Katsas seems intent on leaving us in no doubt
that publishing copyrighted works incorporated as a binding legal obligations will be fair use.

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For another recent case on this issue, see International Code Council, Inc. v. UpCodes, Inc., 2020
WL 2750636 (S.D.N.Y. May 26, 2020)

Other exclusions from copyright protection
Words, titles, and short phrases
In Feist Publications, Inc. v. Rural Telephone Service, Co., 499 U.S. 340, 346 (1991), the Supreme
Court held that, “originality is a constitutional requirement.” And it explained (at 345):
Original, as the term is used in copyright, means only that the work was independently
created by the author (as opposed to copied from other works), and that it possesses
at least some minimal degree of creativity. (emphasis added)

In theory, every copyrightable work embodies “at least some minimal degree of creativity”, but
courts rarely have cause to define what that quantum of creativity is, although they often
observe its absence is particular contexts. Usually we don’t need to know much more than
that fact that telephone books lack creativity entirely and novels possess it in abundance.
However, the originality requirement has some important implications for the minimum size
of copyrightable works and the Copyright Office has a long established practice of refusing
registration to words and short phrases on this basis.
37 C.F.R. § 202.1(a) Material not subject to copyright.
The following are examples of works not subject to copyright and applications for
registration of such works cannot be entertained:
(a) Words and short phrases such as names, titles, and slogans; familiar symbols or
designs; mere variations of typographic ornamentation, lettering or coloring; mere
listing of ingredients or contents; …

The requirement of originality is a good enough reason to preclude copyright for most
words and short phrases, but perhaps not all.
Words and short phrases that are novel (in the patent law sense of being entirely new)
arguably are original in that they owe their existence to the author, but they should probably
be denied independent copyright status by virtue of the merger doctrine and the ideaexpression distinction, rather than a lack of creativity as such.39 For example, the word
“Quidditch” was new and creative when JK Rowling invented it. She apparently selected it
from five notebook pages of words beginning with “Q”. The word Quidditch could not be
copyrighted without depriving the public of the only plausible way of referring to the
popular contact sport played on flying broomsticks in the Harry Potter fantasy series.
Quidditch is uncopyrightable because the word is merged with the much more complicate
set of ideas the word represents.
On the other hand, “supercalifragilisticexpialidocious” in Mary Poppins is also creative, and more
importantly, because it is nonsense it is hard to see that merger and idea-expression
distinction would bar it from copyright protection. But even if it could have been registered
39 See e.g. Perma Greetings, Inc. v. Russ Berrie & Co., 598 F. Supp 445, 448-49 (E.D. Mo. 1984) (finding that

phrases such as “hang in there,” “message,” and “along the way take time to smell the flowers” are unprotected
and considering ideas of images and simple design characteristics to be uncopyrightable). See also, Matthews v.
Freedman, 157 F.3d 25, 26 (1stCir.1998).

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as a one-word literary work, the fact that it wasn’t should mean something for copyright
analysis.40

Taxonomies
There is some case law to the contrary, but the better view is that taxonomies of arbitrary
naming conventions are not copyrightable. For example in Southco, Inc. v. Kanebridge Corp., 390
F.3d 276 (3d Cir. 2004)(en banc), the Third Circuit held that a list of serial numbers used to
identify hardware parts was not copyrightable.
After discussing the originality requirement and the implications of the Feist decision, the
court held (at 282):
In this case, the Southco product numbers are not “original” because each number
is rigidly dictated by the rules of the Southco system. Because ideas may not be
copyrighted, Southco does not assert any claim of copyright in its
numbering system, but instead focuses on the part numbers themselves. The numbers,
however, do not reflect any creativity.

The court also held (at 285) that the part numbers were uncopyrightable on a separate
ground, the uncopyrightability of short phrases and titles. The court explained that “since at
least 1899, it has been the practice of the Copyright Office to deny registration to ‘words and
phrases.’” It summarized and accepted the policy rationale for the doctrine put forward by the
government in an amicus brief as follows (at 286):
The government suggests that this practice serves at least two purposes. First, the
government notes that a short phrase such as a part number typically lacks any
creativity whatsoever. Second, the government suggests that extending copyright
protection to part numbers would unduly interfere with the legitimate use of the
numbers in question. Because the owner of a copyright has the exclusive rights to
reproduce the copyrighted work, if a part number (say, XXXXXXXXX, to take the
example discussed above) were copyrighted, any use of the number would
potentially infringe the copyright. Moreover, if Southco’s nine-digit numbers are
protected, would there be a principled basis for denying protection to a number
with, say, seven or five digits? Could a company or person thereby obtain the
exclusive right to use the number 4,710,202 or 47,102? In light of the huge number
of part and product numbers (and other analogous numbers) that now exist, this
prospect gives reason for concern. Although the fair use defense would presumably
protect the use of such numbers in most situations, fair use is an affirmative defense
and may impose an undue burden.

The law in the Sixth Circuit is the same. In ATC Distribution Group v. Whatever It Takes
Transmissions & Parts, Inc., 402 F.3d 700, 706 (6th Cir. 2005), the court of appeals held that a
taxonomy for assigning unique identifiers to auto transmission parts by sorting them into
categories and sub-categories was not copyrightable. Just as in Southco, the court recognized
the system that generated the unique identifiers as an uncopyrightable idea and the numbers
so generated as either unoriginal products of that system or as excluded by merger. The
court also invoked the short works doctrine following a similar reasoning to Southco.
For a contrary view, see American Dental Association v. Delta Dental Plans Association, 126 F.3d
977, 979 (7th Cir.1997), arguing that:
40 Life Music, Inc. v. Wonderland Music Co. 241 F. Supp. 653 (S.D.N.Y.1965).

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Facts do not supply their own principles of organization. Classification is a creative
endeavor. Butterflies may be grouped by their color, or the shape of their wings, or
their feeding or breeding habits, or their habitats, or the attributes of their
caterpillars, or the sequence of their DNA; each scheme of classification could be
expressed in multiple ways. Dental procedures could be classified by complexity, or
by the tools necessary to perform them, or by the parts of the mouth involved, or
by the anesthesia employed, or in any of a dozen different ways. The Code’s
descriptions don’t “merge with the facts” any more than a scientific description of
butterfly attributes is part of a butterfly.

The Seventh Circuit’s opinion in American Dental appears to confuse originality in the system
with originality in the codes that are the product of that system.

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4. THE HISTORICAL DEVELOPMENT OF THE
REPRODUCTION, ADAPTATION, AND FAIR USE

CONCEPTS

OF

Reproduction and adaptation—International
Berne Convention
Article 9, subsection 1, of Berne Convention recognizes a broad reproduction right for
literary and artistic works. The Convention provides that “authors of literary and artistic
works protected by this convention shall have the exclusive right of authorizing the
reproduction of these works, in any manner or form.”
Berne Convention (Paris 1971). Article 9.
(1) Authors of literary and artistic works protected by this Convention shall have the
exclusive right of authorizing the reproduction of these works, in any manner or
form.
(2) It shall be a matter for legislation in the countries of the Union to permit the
reproduction of such works in certain special cases, provided that such reproduction
does not conflict with a normal exploitation of the work and does not unreasonably
prejudice the legitimate interests of the author.
(3) Any sound or visual recording shall be considered as a reproduction for the
purposes of this Convention.
Article 12 Berne Convention provides that “authors of literary or artistic works shall enjoy
the exclusive right of authorizing, arrangements and other alterations of their works.”
Berne Convention (Paris 1971). Article 12
Authors of literary or artistic works shall enjoy the exclusive right of authorizing
adaptations, arrangements and other alterations of their works.
Article 14 of Berne adds a specific right to authorize cinematographic adaptation and the
reproduction and distribution of such adaptations. It also adds the right of “public
performance and communication to the public by wire” of the works thus adapted.
This right to make a film adaptation has been part of the Berne Convention since the 1908
Berlin revision, and it actually precedes the inclusion of the general reproduction right
(Article 9) by many decades. This was reasonably fast work considering that the first film
shot with the Cinématographe camera was only made in 1895.
Berne Convention (Paris 1971). Article 14.
(1) Authors of literary or artistic works shall have the exclusive right of authorizing:
(i) the cinematographic adaptation and reproduction of these works, and the
distribution of the works thus adapted or reproduced; (ii) the public performance
and communication to the public by wire of the works thus adapted or reproduced.
(2) The adaptation into any other artistic form of a cinematographic production
derived from literary or artistic works shall, without prejudice to the authorization of
the author of the cinematographic production, remain subject to the authorization of
the authors of the original works.
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The Information Society Directive
The European Union Directive on Copyright and Related Rights in the Information Society,
2001/29/EC (usually just referred to as the Information Society Directive or just the
Infosoc Directive), attempts to harmonize many aspects of copyright law in the European
Union, including exclusive rights.
Comparing the Berne Convention to the Infosoc Directive, it is striking how much more
detailed and prescriptive the latter is than the former. The Infosoc Directive directs member
states to provide an exclusive right encompassing direct or indirect, permanent or temporary
reproductions by any means and in any form, in whole or in part.
European Union Directive on Copyright and Related Rights in the
Information Society, 2001/29/EC. Article 2.
Reproduction right
Member States shall provide for the exclusive right to authorise or prohibit direct or
indirect, temporary or permanent reproduction by any means and in any form, in
whole or in part:
(a) for authors, of their works;
(b) for performers, of fixations of their performances;
(c) for phonogram producers, of their phonograms;
(d) for the producers of the first fixations of films, in respect of the original and
copies of their films;
(e) for broadcasting organisations, of fixations of their broadcasts, whether those
broadcasts are transmitted by wire or over the air, including by cable or satellite.
The Infosoc Directive talks about authors, performers, phonogram producers, film-fixators,
and broadcasting organisations. What do all these entities have in common?

Reproduction, adaptation, and fair use—United States
17 U.S. Code § 106 - Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright under this title has the
exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work; …
17 U.S. Code § 107 - Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A, the fair use of a
copyrighted work, including such use by reproduction in copies or phonorecords or
by any other means specified by that section, for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for classroom use),
scholarship, or research, is not an infringement of copyright. In determining whether

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the use made of a work in any particular case is a fair use the factors to be considered
shall include—
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such
finding is made upon consideration of all the above factors.
Among other things, Section 106 of the Copyright Act of 1976 gives copyright owners the
exclusive right “to reproduce the copyrighted work in copies” and “to prepare derivative
works based upon the copyrighted work”. Section 107 of the copyright act provides that the
fair use of a copyrighted work is not an infringement of copyright. Taken together, what do
Sections 106(1), 106(2) and 107 of the Copyright Act tell us about the scope of copyright?
Understanding these provisions and the associated concepts of reproduction, adaptation (the
right to make derivative works based upon the copyrighted work), and fair use requires
historical and technological context; it also requires addressing some metaphysical and
conceptual questions. Historical context is required to see how the concept of reproduction
has evolved over time. Technological context is required to understand the contemporary
significance of many technical acts of reproduction. Finally, if the reproduction alleged is not
a verbatim and exact copy of the entire work, understanding the reproduction right means
delving into some metaphysical conceptual questions.

The historical context of the reproduction right
The Premodern Era of Copyright Law
In The Making of Modern Intellectual Property Law, Brad Sherman and Lionel Bently draw the
distinction between modern and premodern copyright, using 1850 as a rough line of
demarcation. For reasons that will become clear, in the American context it makes sense to
bring that date forward slightly to 1841 when Justice Story decided the case of Folsom v.
Marsh. The premodern/modern distinction is a useful one because the categories of
intellectual-property law were quite fluid up until the mid-nineteenth century. And only after
the mid-1800s did the drive to internationalize copyright (a movement that culminated in the
Berne Convention) significantly influence copyright law. Most of our modern concepts of
copyright law can be seen evolving in the premodern era, but that evolution is messy and the
case law from that era is at best a rough prototype of modern copyright law.

The Reproduction Right in the Premodern Era
There is no doubt that the scope of copyright law was much narrower in the premodern era
than it is today, but it is not true (as many have suggested) that early copyright law was
strictly limited to merely mechanical acts of reproduction. As I explain in my 2011 article The
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Prehistory of Fair Use,41 the truth is more subtle. It would be more accurate to say that over the
course of the premodern era of copyright the scope of the author’s rights expanded from the
narrow right to object, to unauthorized complete reproductions (i.e., reprinting the exact
same book), to a slightly broader right that also included partial copies.
Making a shortened version or abstract of a longer text—both the practice and the resulting
adaptation were known as abridgement (verb and noun, respectively)—was common in the
premodern era, but the lawful scope of abridgement contested throughout.
Gyles v. Wilcox (1740) 26 ER 489
Like many early copyright cases, the controversy in Gyles centered on an important book of learning, Sir Matthew Hale’s
Historia Placitorum Coronæ (The History of the Pleas of the Crown). Although Hale died on Christmas Day 1676, his Historia
Placitorum Coronæ was not published in an authorized form until 1736. The defendant, John Wilcox, had commissioned an
abridgment of the Historia, to be entitled Modern Crown Law. The plaintiffs alleged that the defendant’s work “borrowed
verbatim from Sir Matthew Hale’s Pleas of the Crown”—omitting only statutes that had been repealed—and translated “all the
Latin and French quotations” in Hale’s book into English. See Matthew Sag, The Prehistory of Fair Use, 76 BROOKLYN LAW
REVIEW 1371(2011).

Lord Hardwicke (the Lord Chancellor)
… As to what has been said by Mr. Attorney General of the acts being a monopoly,
and therefore ought to receive strict construction, I am quite of a different opinion,
and that it ought to receive a liberal construction, for it is very far from being a
monopoly, as it is intended to secure the property of books in the authors
themselves, or the purchasers of the copy, as some recompence for their pains and
labour in such works as may be of use to the learned world.
The question is, Whether this book of the New Crown Law, which the defendant
has published, is the same with Sir Matthew Hale’s Historia Placitorum Coronce, the
copy of which is now the property of the plaintiff.
Where books are colourably shortened only, they are undoubtedly within the
meaning of the act of Parliament, and are a mere evasion of the statute, and cannot
be called an abridgment.
But this must not be carried so far as to restrain persons from making a real and fair
abridgment, for abridgments may with great propriety be called a new book, because
not only the paper and print, but the invention, learning, and judgment of the author
is shewn in them, and in many cases are extremely useful, though in some instances
prejudicial, by mistaking and curtailing the sense of an author.
If I should extend the rule so far as to restrain all abridgments, it would be of
mischievous consequence, for the books of the learned, les Journels des Scavans, and
several others that might be mentioned, would be brought within the meaning of this
act of parliament.
In the present case it is merely colourable, some words out of the Historia Placitorum
Coronce are left out only, and translations given instead of the Latin and French
quotations that are dispersed through Sir Matthew Hale’s works; yet not so flagrant
as the case of Read versus Hodges, for there they left out whole pages at a time; but I
41 Matthew Sag, The Prehistory of Fair Use, 76 BROOKLYN LAW REVIEW 1371(2011).

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shall not be able to determine this properly, unless both books were read over, and
the case fairly stated between the parties.
Mr. Attorney General has said I may send it to [the common law courts] to be
determined by a jury; but how can this possibly be done it would be absurd for the
chief justice to sit and hear both books read over, which is absolutely necessary, to
judge between them, whether the one is only a copy from the other.
The court is not under an indispensable obligation to send all facts to a jury, but may
refer them to a master, to state them, where it is a question of nicety and difficulty,
and more fit for men of learning to inquire into, than a common jury.
This I think is one of those cases where it would be much better for the parties to fix
upon two persons of learning and abilities in the profession of the law, who would
accurately and carefully compare them, and report their opinion to the court.
The House of Lords very often, in matters of account which are extremely perplexed
and intricate, refer it to two merchants named by the parties, to consider the case,
and report their opinions upon it, rather than leave it to a jury; and I should think a
reference of the same kind in some measure would be the properest method in the
present case.
Notes and questions
(1) Lord Hardwicke continued the injunction, pending a master of the court’s report on the
similarities between the two works. The result is not contained in the report of the case, but
it is discussed in Tonson v. Walker, (1752) 36 Eng. Rep. 1017 (Ch.). Apparently, the courtassisted arbitration proceeding led to an agreement that the defendant’s work was a fair
abridgment outside the Statute of Anne’s scope. Accordingly, the injunction was dissolved.
(2) Does the decision in Gyles expand or contract the scope of copyright? Notice how Lord
Hardwicke rejects the argument that the Statute of Anne should be narrowly construed as a
monopoly. In The Prehistory of Fair Use (at 1391), I argue that Hardwicke’s purposive reading
of the copyright statute was also an expansive one. Under the Statute of Anne, 1710, 8 Ann.,
c. 19, §1 (Eng.), “the author of any book or books” or his assignees, was entitled to “the sole
right and liberty of printing such book and books.” Construed literally, the Act regulated
only exact and entire reprinting, but Lord Hardwicke readily looked beyond the narrow text
of the act to its underlying purpose and rejected any “mere evasion of the statute.”
(4) It is important to recognize that copyright’s limiting principles, such as fair use and the
idea-expression dichotomy, play an important role in strengthening the copyright system.
Because every act of authorship relies to some extent on engaging with and reusing existing
materials, every generation of authors benefits from copyright limitations in their own
creative process. Moreover, looking at the statutory system of copyright as a whole, limits
like fair use allow the rights of the copyright owner to be phrased more expansively than
would otherwise be possible.42
(5) Is the decision in Gyles pro-abridgment? In The Prehistory of Fair Use (at 1391), I argue that:
42 See, Matthew Sag, God in the Machine: A New Structural Analysis of Copyright’s Fair Use

TELECOMM. & TECH. L. REV. 381, 414 (2005)

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Doctrine, 11 MICH.

Although Gyles is often cited as the origin of the fair use doctrine in England and
has generally been received as a pro-abridgment decision, Lord Hardwicke’s
reasoning gave as much to copyright owners as it took away. On the one hand, Gyles
confirmed the legality of some abridgments (those described as fair). Yet it also
entrenched a broad purposive reading of the Statute of Anne and condemned
another set of abridgments (those deemed unfair) as infringing copyright.

(6) What distinguishes an infringing abridgment from a non-infringing one under Gyles?
Hardwicke draws a line between reprints with minor alterations and “true abridgments” or
“real and fair abridgments” which (at 490) he says:
may with great propriety be called a new book, because not only the paper and print,
but the invention, learning, and judgment of the author is shewn in them, and in
many cases are extremely useful, though in some instances prejudicial, by mistaking
and curtailing the sense of an author.

The premodern copyright cases are not entirely coherent, perhaps no body of case law is. In
general the dividing line between infringing and noninfringing abridgements was drawn with
a view to two factors. First, the degree of intellectual labor contributed by the defendant.
This was not simply an assessment of the amount of work added by the defendant, usually
the question was presented as whether the defendant’s work should fairly be seen as a new
work. The second factor was whether the defendant’s work was likely to substitute for the
plaintiff’s original work.
(7) In Gyles v. Wilcox, Lord Hardwicke said “abridgments may with great propriety be called a
new book, because not only the paper and print, but the invention, learning, and judgment
of the author is shewn in them.” In an even earlier case, Burnett v. Chetwood, (1720) 35 Eng.
Rep. 1009 (Ch.), Lord Parker made a similar point with respect to translations, noting that “a
translation might not be the same with the reprinting the original, on account that the
translator has bestowed his care and pains upon it, and so not within the prohibition of the
act.” Likewise, in Strahan v. Newbery (1773) 98 Eng. Rep. 913, 913 (Ch.) the court described
an abridgement as “an act of understanding . . . in the nature of a new and meritorious
work.”)
(8) Modern United States copyright law has retained some of the decisional structure of the
premodern English abridgment cases. The modern fair use doctrine is significantly
influenced by the degree of newness of the defendant’s work in the sense of the question of
whether the defendant’s use was transformative (this is part of the first fair use factor). The
modern fair use cases are also highly sensitive to concerns of market substitution (this is part
of the fourth fair use factor). However, infringement analysis under modern United States
copyright law begins with much broader notion of what kinds of derivative works or
adaptations belong within the ambit of the copyright’s rights.

The emergence of the right “to prepare derivative works based upon the copyrighted
work”
Over the course of the 19th century we see a significant expansion in the concept of the
rights of the copyright owner. This development can be seen in the case law and statute. The
two most prominent markers of this transition are the 1841 case of Folsom v. Marsh and the

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1870 amendment to the U.S. Copyright Act that gave authors the right to control
translations and dramatizations of their works.43
Folsom v. Marsh concerned two different literary treatments of the life of George Washington.
The plaintiffs were Folsom, Wells & Thurston, a partnership of publishers that held the
rights to Jared Sparks’ multivolume collection of The Writings of George Washington. The
accused work was Reverend Charles Upham’s The Life of Washington, which was mainly
comprised of extracts from Washington’s own writings. Upham’s abbreviated and simplified
Life of Washington, intended for local school libraries, weighed in at a mere 866 pages—light
in comparison to Sparks’ massive 6763-page 12 volume compilation. About a third of
Upham’s work consisted of previously unpublished presidential writings, presumably copied
from Sparks’ compilation.
Upham’s publisher, the firm Marsh, Capen & Lyon, disputed Folsom’s copyright ownership,
but it also argued that even if Folsom held the copyright in Sparks’ twelve-volume collection
of Washington’s writings, the good Reverend Upham’s work was nonetheless a fair
abridgment that did not infringe. Marsh contended that once Washington’s papers and
correspondence were published, anyone had the right to selectively use those materials to
prepare a new and original work. This defense was entirely plausible given the state of the
legal authorities at the time, similar abridgments had been allowed by numerous English
authorities, but it was not successful.
Folsom v. Marsh, 9 F. Cas. 342, 349 (C.C.D. Mass. 1841) (No. 4901)
Circuit Justice Story
This is one of those intricate and embarrassing questions, arising in the
administration of civil justice, in which it is not, from the peculiar nature and
character of the controversy, easy to arrive at any satisfactory conclusion, or to lay
down any general principles applicable to all cases. Patents and copyrights approach,
nearer than any other class of cases belonging to forensic discussions, to what may
be called the metaphysics of the law, where the distinctions are, or at least may be,
very subtile and refined, and, sometimes, almost evanescent. In many cases, indeed,
what constitutes an infringement of a patented invention, is sufficiently clear and
obvious, and stands upon broad and general agreements and differences; but, in
other cases, the lines approach very near to each other, and, sometimes, become
almost evanescent, or melt into each other. So, in cases of copyright, it is often
exceedingly obvious, that the whole substance of one work has been copied from
another, with slight omissions and formal differences only, which can be treated in
no other way than as studied evasions; whereas, in other cases, the identity of the
two works in substance, and the question of piracy, often depend upon a nice
balance of the comparative use made in one of the materials of the other; the nature,
43 Note also that in 1802 Congress amended the Copyright Act to include prints in the protected subject matter.

It also made it an infringement to cause such a work to be “engraved, etched, copied or sold, in the whole or in
part, by varying, adding to, or diminishing from the main design. …” Bill Patry notes that “This language may
be read either as enumerating specific acts that constitute infringement of the right to print or publish the work,
or as a form of a derivative right. The language was subsequently incorporated in section 7 of the 1831 general
revision, where it applied to prints, cuts, engravings, maps, charts, and musical compositions (but not to books).
The right remained a part of the copyright statutes until the 1909 Act.” 4 PATRY ON COPYRIGHT § 12:4

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extent, and value of the materials thus used; the objects of each work; and the degree
to which each writer may be fairly presumed to have resorted to the same common
sources of information, or to have exercised the same common diligence in the
selection and arrangement of the materials.
Thus, for example, no one can doubt that a reviewer may fairly cite largely from the
original work, if his design be really and truly to use the passages for the purposes of
fair and reasonable criticism. On the other hand, it is as clear, that if he thus cites the
most important parts of the work, with a view, not to criticise, but to supersede the
use of the original work, and substitute the review for it, such a use will be deemed in
law a piracy. A wide interval might, of course, exist between these two extremes,
calling for great caution and involving great difficulty, where the court is approaching
the dividing middle line which separates the one from the other. So, it has been
decided that a fair and bona fide abridgment of an original work, is not a piracy of
the copyright of the author. See Dodsley v. Kinnersley, 1 Amb. 403; Whittingham v.
Wooler, 2 Swanst. 428, 430, 431, note; Tonson v. Walker, 3 Swanst. 672-679, 681. But,
then, what constitutes a fair and bona fide abridgment, in the sense of the law, is one
of the most difficult points, under particular circumstances, which can well arise for
judicial discussion. It is clear, that a mere selection, or different arrangement of parts
of the original work, so as to bring the work into a smaller compass, will not be held
to be such an abridgment. There must be real, substantial condensation of the
materials, and intellectual labor and judgment bestowed thereon; and not merely the
facile use of the scissors; or extracts of the essential parts, constituting the chief value
of the original work. See Gyles v. Wilcox, 2 Atk. 141.
In the present case, the work alleged to be pirated, is the Writings of President
Washington, in twelve volumes, royal octavo, containing nearly seven thousand pages,
of which the first volume contains a life of Washington, by the learned editor, Mr.
Sparks, in respect to which no piracy is asserted or proved. The other eleven
volumes consist of the letters of Washington, private and official, and his messages
and other public acts, with explanatory notes and occasional illustrations by the
editor. That the original work is of very great, and, I may almost say, of inestimable
value, as the repository of the thoughts and opinions of that great man, no one
pretends to doubt. The work of the defendants is in two volumes, duodecimo,
containing eight hundred and sixty-six pages. It consists of a Life of Washington,
written by the learned defendant, (the Rev. Charles W. Upham), which is formed
upon a plan different from that of Mr. Sparks, and in which Washington is made
mainly to tell the story of his own life, by inserting therein his letters and his
messages, and other written documents, with such connecting lines in the narrative,
as may illustrate and explain the times and circumstances, and occasions of writing
them.
There is no complaint, that Mr. Upham has taken his narrative part, substantially,
from the Life by Mr. Sparks. The gravamen is, that he has used the letters of
Washington, and inserted, verbatim, copies thereof from the collection of Mr. Sparks.
The master finds, by his report, that the whole number of pages in Mr. Upham’s
work, corresponding and identical with the passages in Mr. Sparks’s work, are three
hundred and fifty-three pages out of eight hundred and sixty-six, a fraction more
than one third of the two volumes of the defendants. Of these three hundred and

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fifty-three pages, the report finds that three hundred and nineteen pages consist of
letters of Washington, which have been taken from Mr. Sparks’s work, and have
never been published before; namely, sixty-four pages are official letters and
documents, and two hundred and fifty-five pages are private letters of Washington.
The question, therefore, upon this admitted state of the facts, resolves itself into the
point, whether such a use, in the defendants’ work, of the letters of Washington,
constitutes a piracy of the work of Mr. Sparks.
[Justice Story held that the letters of Washington were proper subjects of copyright
and that the rights to those letters had been acquired by the plaintiffs. Story then
turned to the question of abridgment.]
… The next and leading objection is, that the defendants had a right to abridge and
select, and use the materials which they have taken for their work, which, though it
embraces the number of letters above stated, is an original and new work, and that it
constitutes, in no just sense, a piracy of the work of the plaintiffs. This, in truth, is
the real hinge of the whole controversy, and involves the entire merits of the suit. It
is certainly true, that the defendants’ work cannot properly be treated as an
abridgment of that of the plaintiffs; neither is it strictly and wholly a mere
compilation from the latter. So far as the narrative goes, it is either original, or
derived (at least as far as the matter has been brought before the court) from
common sources of information, open to all authors. It is not even of the nature of a
collection of beauties of an author; for it does not profess to give fugitive extracts, or
brilliant passages from particular letters. It is a selection of the entire contents of
particular letters, from the whole collection or mass of letters of the work of the
plaintiffs. From the known taste and ability of Mr. Upham, it cannot be doubted,
that these letters are the most instructive, useful and interesting to be found in that
large collection.
The question, then, is, whether this is a justifiable use of the original materials, such
as the law recognizes as no infringement of the copyright of the plaintiffs. It is said,
that the defendant has selected only such materials, as suited his own limited purpose
as a biographer. That is, doubtless, true; and he has produced an exceedingly valuable
book. But that is no answer to the difficulty. It is certainly not necessary, to
constitute an invasion of copyright, that the whole of a work should be copied, or
even a large portion of it, in form or in substance. If so much is taken, that the value
of the original is sensibly diminished, or the labors of the original author are
substantially to an injurious extent appropriated by another, that is sufficient, in
point of law, to constitute a piracy pro tanto. The entirety of the copyright is the
property of the author; and it is no defence, that another person has appropriated a
part, and not the whole, of any property. Neither does it necessarily depend upon the
quantity taken, whether it is an infringement of the copyright or not. It is often
affected by other considerations, the value of the materials taken, and the importance
of it to the sale of the original work. Lord Cottenham, in the recent cases of Bramwell
v. Halcomb, 3 Mylne & C. 737, 738, and Saunders v. Smith, Id. 711, 736, 737, adverting
to this point, said:
“When it comes to a question of quantity, it must be very vague. One writer might
take all the vital part of another’s book, though it might be but a small proportion of

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the book in quantity. It is not only quantity, but value, that is always looked to. It is
useless to refer to any particular cases, as to quantity.”

In short, we must often, in deciding questions of this sort, look to the nature and
objects of the selections made, the quantity and value of the materials used, and the
degree in which the use may prejudice the sale, or diminish the profits, or supersede
the objects, of the original work. Many mixed ingredients enter into the discussion of
such questions. In some cases, a considerable portion of the materials of the original
work may be fused, if I may use such an expression, into another work, so as to be
undistinguishable in the mass of the latter, which has other professed and obvious
objects, and cannot fairly be treated as a piracy; or they may be inserted as a sort of
distinct and mosaic work, into the general texture of the second work, and constitute
the peculiar excellence thereof, and then it may be a clear piracy. If a person should,
under color of publishing “Elegant Extracts” of poetry, include all the best pieces at
large of a favorite poet, whose volume was secured by a copyright, it would be
difficult to say why it was not an invasion of that right, since it might constitute the
entire value of the volume. The case of Mawman v. Tegg, 2 Russ. 385, is to this
purpose. There was no pretence in that case, that all the articles of the encyclopedia
of the plaintiffs had been copied into that of the defendants; but large portions of
the materials of the plaintiffs’ work had been copied. Lord Eldon, upon that
occasion, held, that there might be a piracy of part of a work, which would entitle the
plaintiffs to a full remedy and relief in equity. In prior cases, he had affirmed the like
doctrine. In Wilkins v. Aikin, 17 Ves. 422, 424, he said:
“There is no doubt, that a man cannot, under the pretence of quotation, publish
either the whole or a part of another’s book, though he may use, what in all cases it
is difficult to define, fair quotation.”

In Roworth v. Wilkes, 1 Camp. 94, Lord Ellenborough said:
“A review will not, in general, serve as a substitute for the book reviewed; and even
there, if so much is extracted, that it communicates the same knowledge with the
original work, it is an actionable violation of literary property. The intention to
pirate is not necessary in an action of this sort; it is enough, that the publication
complained of is in substance a copy, whereby a work vested in another is
prejudiced. A compilation of this kind (an encyclopedia) may differ from a treatise
published by itself; but there must be certain limits fixed to its transcripts; it must
not be allowed to sweep up all modern works, or an encyclopedia would be a recipe
for completely breaking down literary property.”

The vice chancellor (Sir L. Shadwell), in Sweet v. Shaw, 1 Jur. (London) 212, referring
to the remarks of Lord Ellenborough, cited by counsel, said:
“That does not mean a substitute for the whole work. From what you state, suppose
a book to contain one hundred articles, and ninety-nine were taken, still it would not
be a substitute.”

And in this very case he granted an injunction, being of opinion, that there was
prima facie, at law, an invasion of the plaintiffs’ right; not only an injury, but also a
damage to the plaintiffs, in copying from several volumes of Reports, published by
the plaintiffs, although eleven only had been copied verbatim, but a considerable
number of what were called “abridged cases,” were, in truth, copies of the plaintiffs’
volumes, with little, or trifling, alterations. It is manifest, also, from what fell from
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Lord Chancellor Cottenham, in Saunders v. Smith, 3 Mylne & C. 711, that he
entertained no doubt, (although he did not decide the point,) that there might be a
violation of the copyright of volumes of Reports, by copying verbatim a part only of
the cases reported. Much must, in such cases, depend upon the nature of the new
work, the value and extent of the copies, and the degree in which the original authors
may be injured thereby. In Lewis v. Fullarton, 2 Jur. (London) 127, 2 Beav. 6, Lord
Langdale, in the case of a topographical dictionary, held, that largely copying from
the work in another book having a similar object, was a violation of that copyright,
although the same information might have been (but, in fact, was not) obtained from
common sources, open to all persons. On that occasion, he said:
“None are entitled to save themselves trouble and expense, by availing themselves,
for their own profit, of other men’s works, still entitled to the protection of
copyright;”

and, accordingly, in that case, he granted an injunction as to the parts pirated,
although it was admitted, on all hands, that there was much which was original in the
new work.
In the present case, I have no doubt whatever, that there is an invasion of the
plaintiffs’ copyright; I do not say designedly, or from bad intentions; on the contrary,
I entertain no doubt, that it was deemed a perfectly lawful and justifiable use of the
plaintiffs’ work. But if the defendants may take three hundred and nineteen letters,
included in the plaintiffs’ copyright, and exclusively belonging to them, there is no
reason why another bookseller may not take other five hundred letters, and a third,
one thousand letters, and so on, and thereby the plaintiffs’ copyright be totally
destroyed. Besides; every one must see, that the work of the defendants is mainly
founded upon these letters, constituting more than one third of their work, and
imparting to it its greatest, nay, its essential value. Without those letters, in its present
form the work must fall to the ground. It is not a case, where abbreviated or select
passages are taken from particular letters; but the entire letters are taken, and those
of most interest and value to the public, as illustrating the life, the acts, and the
character of Washington. It seems to me, therefore, that it is a clear invasion of the
right of property of the plaintiffs, if the copying of parts of a work, not constituting a
major part, can ever be a violation thereof; as upon principle and authority, I have no
doubt it may be. If it had been the case of a fair and bona fide abridgment of the
work of the plaintiffs, it might have admitted of a very different consideration.
I have come to this conclusion, not without some regret, that it may interfere, in
some measure, with the very meritorious labors of the defendants, in their great
undertaking of a series of works adapted to school libraries. But a judge is entitled in
this case, as in others, only to know and to act upon his duty. I hope, however, that
some means may be found, to produce an amicable settlement of this unhappy
controversy. The report of the master must stand confirmed, and a perpetual
injunction be awarded, restraining the defendants, their agents, servants and
salesmen, from farther printing, publishing, selling, or disposing of any copy or
copies of the work complained of; the “Life of Washington,” by the Rev. Charles W.
Upham, containing any of the three hundred and nineteen letters of Washington,
stated in the report of the master, and never before published; and that it be referred

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to a master, to take an account of the profits made by the defendants, in the
premises; with leave for either party to apply to the court for farther directions.
Notes and questions
(1) Folsom v. Marsh, 9 F. Cas. 342, 349 (C.C.D. Mass. 1841), is often cited as the beginning of
the modern United States doctrine of fair use, but the term does not actually appear in
Justice Story’s decision in the 1841 case. The earliest American report that actually uses the
expression “fair use” is Lawrence v. Dana, 15 F. Cas. 26, 60 (C.C.D. Mass. 1869) (No. 8136).
More importantly, although Folsom v. Marsh is certainly an important decision in the fair use
cannon, the caselaw from which the modern understanding of fair use evolved dates back to
at least 1741 in Lord Hardwicke’s decision in Gyles v. Wilcox.
(2) In Folsom v. Marsh, Justice Story rejected the defendant’s argument that it has simply made
a fair or bona fide abridgment of Jared Sparks’ The Writings of George Washington. Story
acknowledged the English authorities on fair abridgment, but he emphasized the limiting
principles in those cases. It was “clear,” in Justice Story’s view (at 345), “that a mere
selection, or different arrangement of parts of the original work, so as to bring the work into
a smaller compass,” did not constitute a fair and bona fide abridgment. On the contrary, to
qualify as a fair and bona fide abridgment, “[t]here must be real, substantial condensation of
the materials, and intellectual labor and judgment bestowed thereon; and not merely the
facile use of the scissors; or extracts of the essential parts, constituting the chief value of the
original work.”
(3) In The Ideology of Authorship Revisited: Authors, Markets, and Liberal Values in Early American
Copyright, 118 YALE LAW JOURNAL 186 (2008), Oren Bracha argues that Folsom v. Marsh was a
pivotal component of American copyright law’s transformation in the nineteenth century.
Over the course of the nineteenth century, Bracha contends copyright changed from an
exclusive right to make verbatim copies of particular texts to an abstract right of general
control in which the only boundaries of a work were identified vis-à-vis its market value.
Bracha argues that the concept of fair use announced in Folsom v. Marsh was a fundamental
change in copyright’s baseline. In The Prehistory of Fair Use, I argue that Bracha’s
characterization is correct in broad strokes, but that he over-states the abruptness of the
shift: Folsom v. Marsh is undoubtedly significant, but its contribution was more subtle than
Bracha suggests.44
Fair abridgement was lawful in the United States prior to Folsom v. Marsh. In Wheaton v. Peters,
33 U.S. (8 Pet.) 591, 652 (1834) the Court said:
An abridgement fairly done, is itself authorship, requires mind; and is not an
infringement, no more than another work on the same subject.

And abridgement did not become suddenly unlawful after Folsom v. Marsh. See e.g. Story v.
Holcombe, 23 F. Cas. 171, 173 (C.C.D. Ohio 1847) (No. 13,497) (“A fair abridgment of any
book is considered a new work, as to write it requires labor and exercise of judgment”);
Lawrence v. Dana, 15 F. Cas. 26, 59 (C.C.D. Mass. 1869) (No. 8,136).
Copyright in the premodern era was not limited to exclusive right to make verbatim copies
of particular texts, but the scope of infringing adaptations was much narrower than today.
44 See generally, Matthew Sag, The Prehistory of Fair Use, 76 BROOKLYN LAW REVIEW 1371 (2011).

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The premodern cases illustrate a half-formed notion of the derivative work right:
unauthorized derivatives could be enjoined to defend the market of the original work, but
they did not constitute a separate market unto themselves.45 Folsom departs from the earlier
English cases in that it recognizes derivatives as inherently valuable—not just something to
be enjoined to defend the original work against substitution. This subtle shift is important
because while the boundaries of a defensive derivative right can be ascertained vis-à-vis the
defendant’s work on the plaintiff’s original market, the boundaries of an offensive derivative
right can only be determined in the context of some other limiting principle.
(4) Why did the scope of the right to make derivate works expand? The expansion of the
derivative right may reflect broader shifts in 19th century thinking and a desire to protect
value as an abstract concept as opposed to merely protecting title. In The Prehistory of Fair Use,
I suggest that the extension of the derivative right from defensive to offensive may simply
reflect an anchoring effect. As more and more derivatives were enjoined defensively, courts
and copyright owners began to see these derivatives as part of the authors’ inherent rights in
their creations.

Reproduction in the modern era
White-Smith Music Publishing Co. v. Apollo Co 209 U.S. 1 (1908)
Mr. Justice Day delivered the opinion of the court.
The actions were brought to restrain infringement of the copyrights of two certain
musical compositions, published in the form of sheet music, entitled, respectively,
“Little Cotton Dolly” and “Kentucky Babe.” The appellee, defendant below, is
engaged in the sale of piano players and player pianos, known as the “Apollo,” and
of perforated rolls of music used in connection therewith. The appellant, as assignee
of Adam Geibel, the composer, alleged compliance with the copyright act, and that a
copyright was duly obtained by it on or about March 17, 1897. The answer was
general in its nature, and upon the testimony adduced a decree was rendered, as
stated, in favor of the Apollo Company, defendant below, appellee here.
The action was brought under the provisions of the copyright act, § 4952, giving to
the author, inventor, designer or proprietor of any book, map, chart, dramatic or
musical composition the sole liberty of printing, reprinting, publishing, completing,
copying, executing, finishing and vending the same. The appellee is the manufacturer
of certain musical instruments adapted to be used with perforated rolls. The
testimony discloses that certain of these rolls, used in connection with such
instruments, and being connected with the mechanism to which they apply,
reproduce in sound the melody recorded in the two pieces of music copyrighted by
the appellant.
The manufacture of such instruments and the use of such musical rolls has
developed rapidly in recent years in this country and abroad. The record discloses
45 I discuss these cases at length in The Prehistory of Fair Use.

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that in the year 1902 from seventy to seventy-five thousand of such instruments
were in use in the United States, and that from one million to one million and a half
of such perforated musical rolls, to be more fully described hereafter, were made in
this country in that year.
It is evident that the question involved in the use of such rolls is one of very
considerable importance, involving large property interests, and closely touching the
rights of composers and music publishers. The case was argued with force and ability,
orally and upon elaborate briefs.
Without entering into a detailed discussion of the mechanical construction of such
instruments and rolls, it is enough to say that they are what has become familiar to
the public in the form of mechanical attachments to pianos, such as the pianola, and
the musical rolls consist of perforated sheets, which are passed over ducts connected
with the operating parts of the mechanism in such manner that the same are kept
sealed until, by means of perforations in the rolls, air pressure is admitted to the
ducts which operate the pneumatic devices to sound the notes. This is done with the
aid of an operator, upon whose skill and experience the success of the rendition
largely depends. As the roll is drawn over the tracker board the notes are sounded as
the perforations admit the atmospheric pressure, the perforations having been so
arranged that the effect is to produce the melody or tune for which the roll has been
cut.
Speaking in a general way, it may be said that these rolls are made in three ways. First.
With the score or staff notation before him the arranger, with the aid of a rule or
guide and a graduated schedule, marks the position and size of the perforations on a
sheet of paper to correspond to the order of notes in the composition. The marked
sheet is then passed into the hands of an operator who cuts the apertures, by hand,
in the paper. This perforated sheet is inspected and corrected, and when corrected is
called “the original.” This original is used as a stencil and by passing ink rollers over
it a pattern is prepared. The stenciled perforations are then cut, producing the master
or templet. The master is placed in the perforating machine and reproductions
thereof obtained, which are the perforated rolls in question. Expression marks are
separately copied on the perforated music sheets by means of rubber stamps. Second.
A perforated music roll made by another manufacturer may be used from which to
make a new record. Third. By playing upon a piano to which is attached an
automatic recording device producing a perforated matrix from which a perforated
music roll may be produced.
It is evident, therefore, that persons skilled in the art can take such pieces of sheet
music in staff notation, and by means of the proper instruments make drawings
indicating the perforations, which are afterwards outlined and cut upon the rolls in
such wise as to reproduce, with the aid of the other mechanism, the music which is
recorded in the copyrighted sheets.
The learned counsel for the parties to this action advance opposing theories as to the
nature and extent of the copyright given by statutory laws enacted by Congress for
the protection of copyright, and a determination of which is the true one will go far
to decide the rights of the parties in this case. On behalf of the appellant it is insisted
that it is the intention of the copyright act to protect the intellectual conception

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which has resulted in the compilation of notes which, when properly played,
produces the melody which is the real invention of the composer. It is insisted that
this is the thing which Congress intended to protect, and that the protection covers
all means of expression of the order of notes which produce the air or melody which
the composer has invented.
Music, it is argued, is intended for the ear as writing is for the eye, and that it is the
intention of the copyright act to prevent the multiplication of every means of
reproducing the music of the composer to the ear.
On the other hand, it is contended that while it is true that copyright statutes are
intended to reward mental creations or conceptions, that the extent of this
protection is a matter of statutory law, and that it has been extended only to the
tangible results of mental conception, and that only the tangible thing is dealt with by
the law, and its multiplication or reproduction is all that is protected by the statute.
It must be admitted that the decisions, so far as brought to our attention in the full
discussion had at the bar and upon the briefs, have been uniformly to the effect that
these perforated rolls operated in connection with mechanical devices for the
production of music are not within the copyright act. It was so held in Kennedy v.
McTammany, 33 Fed. Rep. 584. In that case the learned judge said:
“I cannot convince myself that these perforated sheets of paper are copies of sheet
music within the meaning of the copyright law. They are not made to be addressed
to the eye as sheet music, but they form a part of a machine. They are not designed
to be used for such purposes as sheet music, nor do they in any sense occupy the
same field as sheet music. They are a mechanical invention made for the sole
purpose of performing tunes mechanically upon a musical instrument.”

Again the matter was given careful consideration in the Court of Appeals of the
District of Columbia in an opinion by Justice Shepard (Stearn v. Rosey, 17 App. D.C.
562), in which that learned justice, speaking for the court, said:
“We cannot regard the reproduction, through the agency of a phonograph, of the
sounds of musical instruments playing the music composed and published by the
complainants, as the copy or publication of the same within the meaning of the act.
The ordinary signification of the words ‘copying,’ ‘publishing,’ etc., cannot be
stretched to include it.
“It is not pretended that the marking upon waxed cylinders can be made out by the
eye or that they can be utilized in any other way than as parts of the mechanism of
the phonograph.
“Conveying no meaning, then, to the eye of even an expert musician and wholly
incapable of use save in and as a part of a machine specially adapted to make them
give up the records which they contain, these prepared waxed cylinders can neither
substitute the copyrighted sheets of music nor serve any purpose which is within
their scope. In these respects there would seem to be no substantial difference
between them and the metal cylinder of the old and familiar music box, and this,
though in use at and before the passage of the copyright act, has not been regarded
as infringing upon the copyrights of authors and publishers.”

The question came before the English courts in Boosey v. Whight (1899, 1 Ch. 836),
and it was there held that these perforated rolls did not infringe the English

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copyright act protecting sheets of music. Upon appeal Lindley, Master of the Rolls,
used this pertinent language (1900, 1 Ch. 122):
“The plaintiffs are entitled to copyright in three sheets of music. What does this
mean? It means that they have the exclusive right of printing or otherwise
multiplying copies of those sheets of music, i.e., of the bars, notes, and other printed
words and signs on these sheets. But the plaintiffs have no exclusive right to the
production of the sounds indicated by or on those sheets of music; nor to the
performance in private of the music indicated by such sheets; nor to any mechanism
for the production of such sounds or music.
“The plaintiff’s rights are not infringed except by an unauthorized copy of their
sheets of music. We need not trouble ourselves about authority; no question turning
on the meaning of that expression has to be considered in this case. The only
question we have to consider is whether the defendants have copied the plaintiff’s
sheets of music.
“The defendants have taken those sheets of music and have prepared from them
sheets of paper with perforations in them, and these perforated sheets, when put
into and used with properly constructed machines or instruments, will produce or
enable the machines or instruments to produce the music indicated on the plaintiff’s
sheets. In this sense the defendant’s perforated rolls have been copies from the
plaintiff’s sheets.
“But is this the kind of copying which is prohibited by the copyright act; or rather is
the perforated sheet made as above mentioned a copy of the sheet of music from
which it is made? Is it a copy at all? Is it a copy within the meaning of the copyright
act? A sheet of music is treated in the copyright act as if it were a book or sheet of
letter press. Any mode of copying such a thing, whether by printing, writing,
photography, or by some other method not yet invented, would no doubt be
copying. So, perhaps, might a perforated sheet of paper to be sung or played from
in the same way as sheets of music are sung or played from. But to play an
instrument from a sheet of music which appears to the eye is one thing; to play an
instrument with a perforated sheet which itself forms part of the mechanism which
produces the music is quite another thing.”

Since these cases were decided Congress has repeatedly had occasion to amend the
copyright law. The English cases, the decision of the District Court of Appeals, and
Judge Colt’s decision must have been well known to the members of Congress; and
although the manufacture of mechanical musical instruments had not grown to the
proportions which they have since attained they were well known, and the omission
of Congress to specifically legislate concerning them might well be taken to be an
acquiescence in the judicial construction given to the copyright laws.
This country was not a party to the Berne convention of 1886, concerning
international copyright, in which it was specifically provided:
“It is understood that the manufacture and sale of instruments serving to reproduce
mechanically the airs of music borrowed from the private domain are not
considered as constituting musical infringement.”

But the proceedings of this convention were doubtless well known to Congress.
In the last analysis this case turns upon the construction of a statute, for it is
perfectly well settled that the protection given to copyrights in this country is wholly

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statutory. When we turn to the consideration of the act it seems evident that
Congress has dealt with the tangible thing, a copy of which is required to be filed
with the Librarian of Congress, and wherever the words are used (copy or copies)
they seem to refer to the term in its ordinary sense of indicating reproduction or
duplication of the original. …
What is meant by a copy? We have already referred to the common understanding of
it as a reproduction or duplication of a thing. A definition was given by Bailey, J., in
West v. Francis, 5 B. & A. 743, quoted with approval in Boosey v. Whight, supra. He said:
“A copy is that which comes so near to the original as to give to every person seeing
it the idea created by the original.”
Various definitions have been given by the experts called in the case. The one which
most commends itself to our judgment is perhaps as clear as can be made, and
defines a copy of a musical composition to be “a written or printed record of it in
intelligible notation.” It may be true that in a broad sense a mechanical instrument
which reproduces a tune copies it; but this is a strained and artificial meaning. When
the combination of musical sounds is reproduced to the ear it is the original tune as
conceived by the author which is heard. These musical tones are not a copy which
appeals to the eye. In no sense can musical sounds which reach us through the sense
of hearing be said to be copies as that term is generally understood, and as we believe
it was intended to be understood in the statutes under consideration. A musical
composition is an intellectual creation which first exists in the mind of the composer;
he may play it for the first time upon an instrument. It is not susceptible of being
copied until it has been put in a form which others can see and read. The statute has
not provided for the protection of the intellectual conception apart from the thing
produced, however meritorious such conception may be, but has provided for the
making and filing of a tangible thing, against the publication and duplication of
which it is the purpose of the statute to protect the composer.
Also it may be noted in this connection that if the broad construction of publishing
and copying contended for by the appellants is to be given to this statute it would
seem equally applicable to the cylinder of a music box, with its mechanical
arrangement for the reproduction of melodious sounds, or the record of the
graphophone, or to the pipe organ operated by devices similar to those in use in the
pianola. All these instruments were well known when these various copyright acts
were passed. Can it be that it was the intention of Congress to permit them to be
held as infringements and suppressed by injunctions?
After all, what is the perforated roll? The fact is clearly established in the testimony
in this case that even those skilled in the making of these rolls are unable to read
them as musical compositions, as those in staff notation are read by the performer. It
is true that there is some testimony to the effect that great skill and patience might
enable the operator to read his record as he could a piece of music written in staff
notation. But the weight of the testimony is emphatically the other way, and they are
not intended to be read as an ordinary piece of sheet music, which to those skilled in
the art conveys, by reading, in playing or singing, definite impressions of the melody.
These perforated rolls are parts of a machine which, when duly applied and properly
operated in connection with the mechanism to which they are adapted, produce

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musical tones in harmonious combination. But we cannot think that they are copies
within the meaning of the copyright act.
It may be true that the use of these perforated rolls, in the absence of statutory
protection, enables the manufacturers thereof to enjoy the use of musical
compositions for which they pay no value. But such considerations properly address
themselves to the legislative and not to the judicial branch of the Government. As
the act of Congress now stands we believe it does not include these records as copies
or publications of the copyrighted music involved in these cases.
The decrees of the Circuit Court of Appeals are affirmed.
Notes and Questions
(1) In White-Smith Music Publishing Co. v. Apollo Co, 209 US 1 (1908), the Supreme Court held
that music encoded in the mechanical cylinder of a player-piano was not a “copy” because
the player-piano rolls were not human-readable: they were “not made to be addressed to the
eye as sheet music, but they form a part of a machine[.]”
(2) Congress responded to the White-Smith decision by amending the definition of a copy,
making it clear that actual human readership or direct human readability were not required.
Instructions encoded in machine-readable memory that could reproduce the sound but were
unintelligible to humans qualified as “copies” in the relevant sense. The modern Copyright
Act takes the same view. It gives copyright owners the exclusive right “to reproduce the
copyrighted work in copies” and defines copies in Section 101 as “material objects . . . in
which a work is fixed . . . and from which the work can be perceived, reproduced, or
otherwise communicated.
Kalem Co. v. Harper Brothers, 222 U.S. 55 (1911)
Mr. Justice Holmes delivered the opinion of the court
This is an appeal from a decree restraining an alleged infringement of the copyright
upon the late General Lew Wallace’s book ‘‘Ben Hur.’ The case was heard on the
pleadings and an agreed statement of facts, and the only issue is whether those facts
constitute an infringement of the copyright upon the book. So far as they need to be
stated here they are as follows. The appellant and defendant, the Kalem Company, is
engaged in the production of moving picture films, the operation and effect of which
are too well known to require description. By means of them anything of general
interest from a coronation to a prize fight is presented to the public with almost the
illusion of reality — latterly even color being more or less reproduced. The
defendant employed a man to read Ben Hur and to write out such a description or
scenario of certain portions that it could be followed in action; these portions giving
enough of the story to be identified with ease. It then caused the described action to
be performed and took negatives for moving pictures of the scenes, from which it
produced films suitable for exhibition. These films it expected and intended to sell
for use as moving pictures in the way in which such pictures commonly are used. It
advertised them under the title Ben Hur. ‘‘Scenery and Supers by Pain’s Fireworks
Co. Costumes from Metropolitan Opera House. Chariot Race by 3d Battery,
Brooklyn. Positively the Most Superb Moving Picture Spectacle ever Produced in

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America in Sixteen Magnificent Scenes,’ etc., with taking titles, culminating in ‘Ben
Hur Victor.’ It sold the films and public exhibitions from them took place.
The subdivision of the question that has the most general importance is whether the
public exhibition of these moving pictures infringed any rights under the copyright
law. By Rev. Stat., § 4952, as amended by the act of March 3, 1891, c. 565, 26 Stat.
1106, authors have the exclusive right to dramatize any of their works. So, if the
exhibition was or was founded on a dramatizing of Ben Hur this copyright was
infringed. We are of opinion that Ben Hur was dramatized by what was done.
Whether we consider the purpose of this clause of the statute, or the etymological
history and present usages of language, drama may be achieved by action as well as
by speech. Action can tell a story, display all the most vivid relations between men,
and depict every kind of human emotion, without the aid of a word. It would be
impossible to deny the title of drama to pantomime as played by masters of the art.
But if a pantomime of Ben Hur would be a dramatizing of Ben Hur, it would be
none the less so that it was exhibited to the audience by reflection from a glass and
not by direct vision of the figures — as sometimes has been done in order to
produce ghostly or inexplicable effects. The essence of the matter in the case last
supposed is not the mechanism employed but that we see the event or story lived.
The moving pictures are only less vivid than reflections from a mirror. With the
former as with the latter our visual impression — what we see — is caused by the
real pantomime of real men through the medium of natural forces, although the
machinery is different and more complex. How it would be if the illusion of motion
were produced from paintings instead of from photographs of the real thing may be
left open until the question shall arise.
It is said that pictures of scenes in a novel may be made and exhibited without
infringing the copyright and that they may be copyrighted themselves. Indeed it was
conceded by the Circuit Court of Appeals that these films could be copyrighted and,
we may assume, could be exhibited as photographs. Whether this concession is
correct or not, in view of the fact that they are photographs of an unlawful
dramatization of the novel, we need not decide. We will assume that it is. But it does
not follow that the use of them in motion does not infringe the author’s rights. The
most innocent objects, such as the mirror in the other case that we have supposed,
may be used for unlawful purposes. And if, as we have tried to show, moving
pictures may be used for dramatizing a novel, when the photographs are used in that
way they are used to infringe a right which the statute reserves.
But again it is said that the defendant did not produce the representations, but
merely sold the films to jobbers, and on that ground ought not to be held. In some
cases where an ordinary article of commerce is sold nice questions may arise as to the
point at which the seller becomes an accomplice in a subsequent illegal use by the
buyer. It has been held that mere indifferent supposition or knowledge on the part of
the seller that the buyer of spirituous liquor is contemplating such unlawful use is not
enough to connect him with the possible unlawful consequences, but that if the sale
was made with a view to the illegal resale the price could not be recovered. But no
such niceties are involved here. The defendant not only expected but invoked by
advertisement the use of its films for dramatic reproduction of the story. That was
the most conspicuous purpose for which they could be used, and the one for which

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especially they were made. If the defendant did not contribute to the infringement it
is impossible to do so except by taking part in the final act. It is liable on principles
recognized in every part of the law.
It is argued that the law construed as we have construed it goes beyond the power
conferred upon Congress by the Constitution, to secure to authors for a limited time
the exclusive right to their writings. Art. I, § 8, cl. 8. It is suggested that to extend the
copyright to a case like this is to extend it to the ideas as distinguished from the
words in which those ideas are clothed. But there is no attempt to make a monopoly
of the ideas expressed. The law confines itself to a particular, cognate and well
known form of reproduction. If to that extent a grant of monopoly is thought a
proper way to secure the right to the writings this court cannot say that Congress
was wrong.
Decree affirmed.
Notes and questions
(1) Dramatization, not reproduction?
Arguably, the most interesting aspect of the Supreme Court’s decision in Kalem Co. v. Harper
Brothers is what is missing. It seems remarkable in light of our current understanding of
copyright law, but the court of appeals in Harper & Bros. v. Kalem Co., 169 F. 61 (2d Cir.
1909) held in essence that a film based on a book was not a copy of the book. The court of
appeals said (at 63):
The series of photographs taken by the defendant constitutes a single picture,
capable of copyright as such; and as pictures only represent the artist’s idea of what
the author has expressed in words, they do not infringe a copyrighted book or
drama, and should not as a photograph be enjoined. This distinction between
infringement of a copyright of a book and of the performing rights is like the
distinction in respect to an infringement between perforated music rolls and sheet
music discussed in the case of White-Smith Co. v. Apollo Co., 209 U.S. 1, where the
court said: “There is no complaint in this case of the public performances of
copyrighted music, nor is the question involved whether the manufacturers of such
perforated music rolls, when sold for use in public performances, might be held as
contributory infringers.”

The notion that “pictures only represent the artist’s idea of what the author has expressed in
words” and thus fall on the idea side of the idea-expression dichotomy that fails to grasp that
the pictures in sequence tell a story and that story was the Ben Hur story.
(2) Like the White-Smith v. Apollo case, Kalem case reflects a much narrower understanding of
the reproduction right. There was no general derivative work right in the copyright act of the
day. However, the Act did give the copyright owner the right to dramatize the work and the
Court of Appeals agreed with the plaintiff that the act of exhibiting the film violated the
publisher’s dramatization right. The Supreme Court agreed.
(3) If the film version of Ben Hur had been regarded as an infringing copy of the book, then
the moviemaker’s liability would have been straightforward. However, because the right
infringed related to dramatization, the moviemaker could only be indirectly liable for the
actions of the individual movie theaters. To be clear, dramatization in this context is a verb,
not a noun. It was the act of showing the pictures in sequence to the public that amounted
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to the infringing dramatization. Justice Holmes had no hesitation in attributing the acts of
the movie theaters to the defendant because it “not only expected but invoked by
advertisement the use of its films for dramatic reproduction of the story”.

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5. THE REPRODUCTION RIGHT
The meaning of reproduction
17 U.S. Code § 106 - Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright under this title has the
exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords; …
Section 106(1) of the Copyright Act of 1976 gives copyright owners the exclusive right “to
reproduce the copyrighted work in copies,” but nothing in the Copyright Act actually tells us
what standard to apply in determining whether one work amounts to a reproduction of
another.
Consider two works, A and B that have some features in common, but also some differences.
What is required to conclude that B is an infringing reproduction of A? The answer consists
of two parts: copying in fact and wrongful copying.
Figure 7 Copying in fact and wrongful copying

Actual"copying"or"causal"connec3on"

A"

B"
Overlapping+
protectable+
expression+

Infringing/Unlawful"Similarity"

A"

B"

4"

The plaintiff in an action for copyright infringement must show that B was actually copied
from A in the sense that there is a causal connection running from A to B. This copying can
be deliberate, unintended, or even subconscious. If two works are similar, but were in fact
independently created, there is no copyright infringement. The classic statement to this
effect comes from Judge Learned Hand in Sheldon v. Metro-Goldwyn Pictures Corporation, 81 F.
2d 49 (1936) (at 54):
… but if by some magic a man who had never known it were to compose anew
Keats’s Ode on a Grecian Urn, he would be an “author,” and, if he copyrighted it,
others might not copy that poem, though they might of course copy Keats’s.

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Of course, most of us don’t believe in magic and so we are usually prepared to draw an
inference from very high levels of similarity that B probably was copied from A. We will
return to this topic below. For the moment, assume that the plaintiff has shown that there is
a causal connection between A and B, this is not enough by itself. To establish that B is an
infringing reproduction of A, the plaintiff must show that B is substantially similar A.
How similar is too similar? As already discussed in a previous chapter, the rights of the
copyright owner are not limited to literal word-for-word reproductions or close facsimiles of
the original work. Nichols v. Universal Pictures 45 F.2d 119 (2d Cir. 1930) [extracted in a
previous chapter] provides a canonical explanation of why the scope of copyright goes
beyond literal cut-and-paste infringement and of the problems courts will face in drawing a
line between ideas and their expression in cases of non-literal infringement. Judge Hand says
(at 121):
It 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
plagiarist would escape by immaterial variations. That has never been the law, but, as
soon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that,
as was recently well said by a distinguished judge, the decisions cannot help much in
a new case.

Assuming that the sufficient causal connection has been established, how should a court
determine whether B is too similar to A? This turns out to be a vexing question.
Mark A. Lemley, Our Bizarre System for Proving Copyright Infringement, 57
J. Copyright Society U.S.A. 719 (2010)
At the heart of copyright infringement cases is “substantial similarity” between the
plaintiff’s and the defendant’s works. But while every circuit agrees on the centrality
of substantial similarity, that basic agreement conceals surprising differences in what
exactly we mean by substantial similarity and how it is to be proven in court.
Pamela Samuelson, A Fresh Look at Tests for Nonliteral Copyright
Infringement, 107 Northwestern University Law Review 1821 (2013)
One reason why conventional tests for judging nonliteral copyright infringement are
problematic is that there are too many tests and not enough guidance about which
one to use in what kinds of cases. Occasionally, courts have applied several different
tests without being sure which test is the right one.

There are no mechanical guidelines, no hard and fast rules, and no percentages that can be
applied to determine what constitutes a substantial, and thus infringing, similarity. One
reason for this lack of precision is that it is impossible to decide how much taking is too
much without referring to the specific works in question. In some cases, the copying of a
relatively small portion of a work can be actionable if that portion is material and substantial.
At a very general level, there is no controversy in the Second Circuit’s assertion in Ringgold v.
Black Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997) that “[t]o support a finding
of infringement on the basis of substantial similarity, the copying must be quantitatively and
qualitatively sufficient.” But like most uncontroversial statements, this does not tell us very
much. How should a court determine what is quantitatively and qualitatively sufficient?
In formulating a test for copyright infringement, courts must be careful not to allow a
finding of infringement to be based on similarities in unprotectable elements alone, and thus
in most contexts they must attempt to parse out ideas from their expression, identify literary
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tropes, conventions, scènes à faire, and the constraints of the relevant medium, chosen
materials, genre and public expectation. But courts must also be careful not disaggregate too
far: after all, even the greatest works of literature are simply new towers made by the
combination of old bricks.
Courts in the United States have struggled to articulate a rational consistent analytical
framework for determining whether some copying is too much. In reviewing the approach
outlined in any particular case, it is worth asking some probing questions about how the
court is trying to determine whether the defendant’s actions infringed the plaintiff’s exclusive
right to reproduce the work in copies.
(1) What process is the court using to compare the works? Is the court reviewing the
works in total in a holistic side-by-side comparison; is it breaking the works down
into components and identifying similarities and differences; is the court filtering out
similarities at an unprotectable high level of abstraction and similarities based on
facts or functionality?
(2) When the court compares the works, whose point of view does it adopt?
(3) What threshold of similarity is the court applying?
(4) Do the works speak for themselves, or do they require expert analysis?
(5) Assuming the right to trial by jury has been invoked, how does the court divide
the components of its analytical framework between the judge and jury?
This last question is significant. One of the reasons that courts in the United States have
struggled with articulating a framework to assess whether the threshold of reproduction has
been met is that any such framework must also take account of the division of responsibility
between the judge and the jury. In the United States, either the plaintiff or the defendant in a
civil action such as copyright infringement has a Constitutional right to demand that a jury
decides the case. In theory, the jury has the final say over questions of fact and the judge
determines questions of law. This division of responsibilities is quite challenging in the
copyright context because of legal and factual questions about how much copying is too
much are often hopelessly intertwined.

Different tests and approaches
Reasoning from first principles it should be apparent that for a copyright owner to establish
an infringement of the reproduction right, she must show two things: (1) that defendant’s
work was actually copied in the sense that there is a causal connection running from the
work of the copyright owner to that of the defendant; (2) that the defendant’s work is too
similar to the plaintiff’s to be permissible.
This two-part copying in fact/wrongful copying structure is clearer in some United States
circuits than others.

The Legacy of Arnstein v. Porter
Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946) is an important part of the copyright law
cannon. As Shyamkrishna Balganesh summarizes in The Questionable Origins of the Copyright
Infringement Analysis,
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While a few circuits have made important modifications to its central approach, the
“Arnstein test,” as it has come to be known, remains the dominant approach to
copyright infringement analysis today.46

Some background is useful before considering the Second Circuit’s opinion. The district
court judge in Arnstein v. Porter was understandably skeptical when the litigious Ira Arnstein
accused the famous Cole Porter of infringing copyrights in a collection of songs, some of
which had never been published. That skepticism doubtlessly increased when Arnstein
explained this theory that Porter had hired “stooges” to follow him and ransack his home in
order to obtain his compositions. Porter prevailed on a motion for summary judgment and
Arnstein appealed. The eventual success of Arnstein’s appeal owed a lot to the trial judge’s
overly blunt and candid dismissal of Arnstein as, in effect, a vexatious and frivolous litigant.
The judge concluded his reasons with the observations that gave the impression that the
motion for summary judgment had been granted as “the easiest and quickest way to dispose
of the case” and “that the judge had prioritized other cases ahead of the plaintiff’s,
principally because of the plaintiff’s record of litigiousness.”47 As Balganesh explains, this did
not sit well with Judge Jerome Frank on the court of appeals. Frank was skeptical of
summary judgment and he also thought that there was at least some passing similarity
between the plaintiff’s and defendant’s works such that the plaintiff deserved the chance to
present his case to a jury.
Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)
Circuit Judge Frank
Plaintiff with his complaint filed a jury demand which defendant moved to strike out.
Defendant urges that the relief prayed in the complaint renders a jury trial
inappropriate. We do not agree. Plaintiff did not ask for an injunction but solely for
damages. Such a suit is an action at “law.” That it is founded solely on a statute does
not deprive either party of a right to a trial by jury; an action for treble damages
under the Sherman Act is likewise purely statutory, but it is triable at “law” and by a
jury as of right.
The principal question on this appeal is whether the lower court, under Rule 56,
properly deprived plaintiff of a trial of his copyright infringment action. The answer
depends on whether “there is the slightest doubt as to the facts.” In applying that
standard here, it is important to avoid confusing two separate elements essential to a
plaintiff’s case in such a suit: (a) that defendant copied from plaintiff’s copyrighted
work and (b) that the copying (assuming it to be proved) went so far as to constitute
improper appropriation.
As to the first — copying — the evidence may consist (a) of defendant’s admission
that he copied or (b) of circumstantial evidence — usually evidence of access —
from which the trier of the facts may reasonably infer copying. Of course, if there are
no similarities, no amount of evidence of access will suffice to prove copying. If
there is evidence of access and similarities exist, then the trier of the facts must
46 Shyamkrishna Balganesh, The Questionable Origins of the Copyright Infringement Analysis 68 STAN. L. REV. 791

(2016).

47 Id. at 803.

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determine whether the similarities are sufficient to prove copying. On this issue,
analysis (“dissection”) is relevant, and the testimony of experts may be received to
aid the trier of the facts. If evidence of access is absent, the similarities must be so
striking as to preclude the possibility that plaintiff and defendant independently
arrived at the same result.
If copying is established, then only does there arise the second issue, that of illicit
copying (unlawful appropriation.). On that issue (as noted more in detail below) the
test is the response of the ordinary lay hearer; accordingly, on that issue, “dissection”
and expert testimony are irrelevant.
In some cases, the similarities between the plaintiff’s and defendant’s work are so
extensive and striking as, without more, both to justify an inference of copying and
to prove improper appropriation. But such double-purpose evidence is not required;
that is, if copying is otherwise shown, proof of improper appropriation need not
consist of similarities which, standing alone, would support an inference of copying.
Each of these two issues — copying and improper appropriation — is an issue of
fact. If there is a trial, the conclusions on those issues of the trier, of the facts — of
the judge if he sat without a jury, or of the jury if there was a jury trial — bind this
court on appeal, provided the evidence supports those findings, regardless of
whether we would ourselves have reached the same conclusions. But a case could
occur in which the similarities were so striking that we would reverse a finding of no
access, despite weak evidence of access (or no evidence thereof other than the
similarities); and similarly as to a finding of no illicit appropriation.
We turn first to the issue of copying. After listening to the compositions as played in
the phonograph recordings submitted by defendant, we find similarities; but we hold
that unquestionably, standing alone, they do not compel the conclusion, or permit
the inference, that defendant copied. The similarities, however, are sufficient so that,
if there is enough evidence of access to permit the case to go to the jury, the jury
may properly infer that the similarities did not result from coincidence.
Summary judgment was, then, proper if indubitably defendant did not have access to
plaintiff’s compositions. Plainly that presents an issue of fact. On that issue, the
district judge, who heard no oral testimony, had before him the depositions of
plaintiff and defendant. The judge characterized plaintiff’s story as “fantastic”; and,
in the light of the references in his opinion to defendant’s deposition, the judge
obviously accepted defendant’s denial of access and copying. Although part of
plaintiff’s testimony on deposition (as to “stooges” and the like) does seem
“fantastic,” yet plaintiff’s credibility, even as to those improbabilities, should be left
to the jury. If evidence is “of a kind that greatly taxes the credulity of the judge, he
can say so, or, if he totally disbelieves it, he may announce that fact, leaving the jury
free to believe it or not.” If, said Winslow, J., “evidence is to be always disbelieved
because the story told seems remarkable or impossible, then a party whose rights
depend on the proof of some facts out of the usual course of events will always be
denied justice simply because his story is improbable.” We should not overlook the
shrewd proverbial admonition that sometimes truth is stranger than fiction.
But even if we were to disregard the improbable aspects of plaintiff’s story, there
remain parts by no means “fantastic.” On the record now before us, more than a
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million copies of one of his compositions were sold; copies of others were sold in
smaller quantities or distributed to radio stations or band leaders or publishers, or the
pieces were publicly performed. If, after hearing both parties testify, the jury
disbelieves defendant’s denials, it can, from such facts, reasonably infer access. It
follows that, as credibility is unavoidably involved, a genuine issue of material fact
presents itself. With credibility a vital factor, plaintiff is entitled to a trial where the
jury can observe the witnesses while testifying. Plaintiff must not be deprived of the
invaluable privilege of cross-examining the defendant — the “crucial test of
credibility” — in the presence of the jury. Plaintiff, or a lawyer on his behalf, on such
examination may elicit damaging admissions from defendant; more important,
plaintiff may persuade the jury, observing defendant’s manner when testifying, that
defendant is unworthy of belief.
We cannot now say — as we think we must say to sustain a summary judgment —
that at the close of a trial the judge could properly direct a verdict.
We agree that there are cases in which a trial would be farcical. If, in a suit on a
promissory note, the defendant, pleading payment, sets forth in an affidavit his
cancelled check to the order of the plaintiff for the full amount due on the note and
a written receipt in full signed by the plaintiff, while plaintiff in a reply affidavit
merely states that he did not receive payment and suggests no other proof, then to
require a trial would be absurd; for cross-examination of the defendant in such
circumstances clearly would be futile. But where, as here, credibility, including that of
the defendant, is crucial, summary judgment becomes improper and a trial
indispensable. It will not do, in such a case, to say that, since the plaintiff, in the
matter presented by his affidavits, has offered nothing which discredits the honesty
of the defendant, the latter’s deposition must be accepted as true. We think that Rule
56 was not designed thus to foreclose plaintiff’s privilege of examining defendant at
a trial, especially as to matters peculiarly within defendant’s knowledge. Illustrative of
the dangers, in this respect, of summary judgments, if not cautiously employed, is a
recent case in the court below. There the judge refused to grant summary judgment
for defendants, despite a mass of impressive affidavits, containing copies of
corporate records, the accuracy of which plaintiffs did not deny in their affidavits,
and which on their face made plaintiffs’ case seem nothing but a sham; at the trial,
however, cross-examination of the defendants revealed facts, theretofore unknown
by plaintiffs, that so riddled the defendants’ case as it had previously appeared on the
summary judgment motion that the judge entered judgment against them for several
million dollars, from which they did not appeal.
We do not believe that, in a case in which the decision must turn on the reliability of
witnesses, the Supreme Court, by authorizing summary judgments, intended to
permit a “trial by affidavits,” if either party objects. That procedure which, so the
historians tell us, began to be outmoded at common law in the 16th century, would,
if now revived, often favor unduly the party with the more ingenious and better paid
lawyer. Grave injustice might easily result.
Assuming that adequate proof is made of copying, that is not enough; for there can
be “permissible copying,” copying which is not illicit. Whether (if he copied)
defendant unlawfully appropriated presents, too, an issue of fact. The proper
criterion on that issue is not an analytic or other comparison of the respective
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musical compositions as they appear on paper or in the judgment of trained
musicians.19 The plaintiff’s legally protected interest is not, as such, his reputation as
a musician but his interest in the potential financial returns from his compositions
which derive from the lay public’s approbation of his efforts. The question, therefore,
is whether defendant took from plaintiff’s works so much of what is pleasing to the
ears of lay listeners, who comprise the audience for whom such popular music is
composed, that defendant wrongfully appropriated something which belongs to the
plaintiff.
Footnote 19: Where plaintiff relies on similarities to prove copying (as distinguished from improper
appropriation) paper comparisons and the opinions of experts may aid the court.

Surely, then, we have an issue of fact which a jury is peculiarly fitted to determine.22
Indeed, even if there were to be a trial before a judge, it would be desirable (although
not necessary) for him to summon an advisory jury on this question.
Footnote 22: It would, accordingly, be proper to exclude tone-deaf persons from the jury, cf.
Chatterton v. Cave, 3 A.C. 483, 499-501, 502-504.

We should not be taken as saying that a plagiarism case can never arise in which
absence of similarities is so patent that a summary judgment for defendant would be
correct. Thus suppose that Ravel’s “Bolero” or Shostakovitch’s “Fifth Symphony”
were alleged to infringe “When Irish Eyes Are Smiling.”23 But this is not such a case.
For, after listening to the playing of the respective compositions, we are, at this time,
unable to conclude that the likenesses are so trifling that, on the issue of
misappropriation, a trial judge could legitimately direct a verdict for defendant.
Footnote 23: In such a case, the complete absence of similarity would negate both copying and
improper appropriation.

At the trial, plaintiff may play, or cause to be played, the pieces in such manner that
they may seem to a jury to be inexcusably alike, in terms of the way in which lay
listeners of such music would be likely to react. The plaintiff may call witnesses
whose testimony may aid the jury in reaching its conclusion as to the responses of
such audiences. Expert testimony of musicians may also be received, but it will in no
way be controlling on the issue of illicit copying, and should be utilized only to assist
in determining the reactions of lay auditors. The impression made on the refined ears
of musical experts or their views as to the musical excellence of plaintiff’s or
defendant’s works are utterly immaterial on the issue of misappropriation;24 for the
views of such persons are caviar to the general — and plaintiff’s and defendant’s
compositions are not caviar.25
Footnote 24: Our comments in this paragraph would be pertinent if the trial were before a judge
alone. Of course, a judge trying a case without a jury does not direct himself to enter a verdict; but the
applicable standards are virtually the same, for he is then, in part, a one-man jury.
Footnote 25: Nor need plaintiff’s be. See, e.g., Baker v. Selden, 101 U.S. 99, 102.

In copyright infringement cases cited by defendant, we have sustained judgments in
favor of defendants based on findings of fact made by trial judges after trials,
findings we held not to be “clearly erroneous.” There we did not attempt to pass on
the veracity or credibility of witnesses. To do so here would be to convert an
appellate court into a trial court. The avowed purpose of those who sponsored the

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summary judgment practice was to eliminate needless trials where by affidavits it
could be shown beyond possible question that the facts were not actually in dispute.
In the attempt to apply that reform — to avoid what is alleged to be a needless trial
in a trial court — we should not conduct a trial in this court. Where the facts are thus
in real dispute, it is our function, after a trial in the lower court, to review its legal
conclusions and, with reference to its findings of fact, to determine not whether we
would ourselves have made them, but merely whether they rest on sufficient
evidence in the record. When the trial occurs before a judge without a jury, we have
his findings of fact separated from his legal conclusions; when it occurs before a jury,
our task is somewhat different, especially when the jury returns a general (i.e.,
composite) verdict.28 But in reviewing a judgment after either type of trial, ours must
be a limited function. This is not, and must not be, a trial court. Such a court has a
duty more difficult and important than ours. We begin our task where it leaves off.
Until the Supreme Court tells us that we err, we shall therefore adhere to the views
stated in Doehler Metal Furniture Co. v. United States 149 F.2d 130 (1945), and to our
belief, expressed in Dellar v. Samuel Goldwyn, Inc., 2 Cir., 104 F. 2d 661, 662 (1939) and
MacDonald v. Du Maurier, 2 Cir., 144 F.2d 696 (1944), that generally there should be
trials in plagiarism suits.
Footnote 28: We must then assume any possible finding of fact which would support the verdict. A
special verdict in the case at bar might well be desirable.

Plaintiff has not copyrighted two of his compositions, “Twilight Waltz” and “Duet”
from “Song of David.” Accordingly, the judgment to that extent should be changed
to one of dismissal for lack of jurisdiction. The same is true of the judgment
concerning the alleged copying of the titles of plaintiff’s songs, “What Is Love” and
“Night and Day.” A title cannot be copyrighted. The facts do not permit the joinder
of these non-federal causes of action with the action for infringement of copyrights.
Defendant’s motion papers showed that plaintiff had assigned his copyright to his
composition “A Mother’s Prayer” to another person. Plaintiff alleged that, by an oral
agreement with the assignee, the copyright was to revert to plaintiff on the assignee’s
death, and that the assignee was dead. Defendant contended that the parol evidence
rule barred proof of such an oral agreement, and that, therefore, plaintiff, not being
able to show his ownership of the copyright, could not maintain suit for its
infringement. Defendant asked the judge to take judicial notice of the record of
another infringement suit in the same court, Arnstein v. American Soc. of Composers,
D.C., 29 F.Supp. 388, involving the same issue as to the same composition, brought
by plaintiff against another person, not in privity with the defendant here, in which
decision on that issue had been adverse to plaintiff. On that ground, the judge held
that the present action, so far as based on “A Mother’s Prayer,” must be dismissed.
In so holding, the judge erred. As no one in the assignee’s chain of title is a party to
this suit, the parol evidence rule does not apply. The adjudication in the previous suit
is entirely irrelevant.
Defendant disregarded that sort of irrelevance in moving in the court below not only
for summary judgment but also for dismissal of plaintiff’s action as “vexatious.” For
in aid of that latter motion, defendant asked the judge to take judicial notice of five
previous copyright infringement actions, including the one just mentioned above,
brought by the plaintiff in the same court against other persons, in which plaintiff
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had advanced some legal arguments like those he advances here, and in which he had
been defeated. The judge in his opinion referred to but one of those suits, Arnstein v.
American Soc. of Composers, and purported not to pass on the motion to dismiss for
vexatiousness. But in his order for final judgment he specifically referred to the
“records” of the court in the five cases, naming them, as constituting in part the
basis of the judgment.
Defendant, in his brief in this court says, “This is perhaps the most significant”
argument in “this case,” and presses us to hold that affirmance of the dismissal
should be based thereon. Coupled with this request is an implied suggestion that,
with respect to the summary judgment, we should not so concern ourselves with fear
of creating a “bad” precedent for the future that we reach an unjust decision in this
particular case. With that suggestion we are in thorough accord. We decide against
summary judgment here because we consider it improper in this case. Our decision
to that effect will have precedential significance only to the extent that, in any future
case, summary judgment is sought when the facts are not beyond the range of actual
dispute.
But, in the spirit of that suggestion, we regard it as entirely improper to give any
weight to other actions lost by plaintiff. Although, as stated above, the judge in his
opinion, except as to one of the previous actions, did not say that he rested his
decision on those other suits, the language of his final judgment order indicates that
he was probably affected by them. If so, he erred. Absent the factors which make up
res judicata (not present here), each case must stand on its own bottom, subject, of
course, to the doctrine of stare decisis. Succumbing to the temptation to consider
other defeats suffered by a party may lead a court astray. When a particular suit is
vexatious, sometimes at its conclusion the court can give some redress to the
victorious party. Perhaps the Legislature can and should meet this problem more
effectively. But we surely must not do so, as defendant here would have us do, by
prejudging the merits of the case before us.
Modified in part; otherwise reversed and remanded.
Notes and questions
(1) In Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946), Judge Frank posited a clear distinction
between two “essential” elements in establishing infringement (at 468):
… it is important to avoid confusing two separate elements essential to a plaintiff’s
case in such a suit: (a) that defendant copied from plaintiff’s copyrighted work and
(b) that the copying (assuming it to be proved) went so far as to constitute improper
appropriation.

(2) In terms of copying in fact, Judge Frank explained (at 468) actual copying could be
established by “defendant’s admission that he copied” or by circumstantial evidence, by
establishing some combination of access to the work and similarity. In terms of wrongful
copying (or “illicit copying” or “unlawful appropriation”), Frank said (at 468) “the test is the
response of the ordinary lay hearer.”
Arnstein treats both copying in fact and wrongful copying as questions of fact and as
objective and subjective, respectively. The kinds of similarity that might support a finding of

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actual copying are objective and thus analytical dissection of the works aided by the
testimony of experts may be appropriate. On the other hand, in the same sentence where he
announced that the test of wrongful copying “is the response of the ordinary lay hearer”
Judge Frank said that “accordingly, on that issue, “dissection” and expert testimony are
irrelevant.” Whether this is really so is an issue taken up later in this chapter.
(3) Arnstein treats both copying in fact and wrongful copying as pure questions of fact that
must be determined by a jury except in the most extreme circumstances. In Questionable
Origins, Professor Balganesh argues that “[t]his jury-centric approach continues to influence
modern copyright law and is responsible for the subjective and unpredictable nature of the
infringement analysis.”
(4) Arnstein v. Porter is a copyright case, but copyright issues took a backseat to the intellectual
contest between Judge Jerome Frank, an opponent of summary judgment, and Judge Charles
Clark, one of its most recognizable proponents. In Questionable Origins, Professor Balganesh
reexamines the historical record and argues persuasively that that:
Arnstein’s decision to rely on juries for the infringement analysis had very little to do
with copyright law or policy. It was hardly a considered decision about the values at
stake in the copyright infringement analysis, but instead almost entirely the product
of the judges’ desire to enable the particular plaintiff in the case to obtain a fair
hearing, for which their reliance on a jury and a heightened summary judgment
standard proved to be ideal vehicles. Considerations of copyright law were for the
most part entirely secondary to the court’s decision.

(5) The standard for summary judgment set out in Arnstein (at 468) was that the plaintiff was
entitled to a trial of his copyright infringement action if there were “the slightest doubt as to
the facts.” This exacting standard has long since been overruled and yet Arnstein continues to
influence the allocation of responsibilities between judge and jury in copyright litigation.

The extrinsic/intrinsic test for infringement of the reproduction right
Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir. 2018)
WATFORD, Circuit Judge:
This is a copyright infringement action brought by the renowned photographer
Jacobus Rentmeester against Nike, Inc. The case involves a famous photograph
Rentmeester took in 1984 of Michael Jordan, who at the time was a student at the
University of North Carolina. The photo originally appeared in Life magazine as part
of a photo essay featuring American athletes who would soon be competing in the
1984 Summer Olympic Games. We are asked to decide whether Nike infringed
Rentmeester’s copyright when it commissioned its own photograph of Jordan and
then used that photo to create one of its most iconic trademarks.
I
The allegations in Rentmeester’s complaint, which we accept as true at this stage of
the proceedings, establish the following. Rentmeester’s photograph of Jordan,
reproduced in the Appendix, is highly original.

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Figure 8: Rentmeester’s 1984 photograph of Michael Jordan

It depicts Jordan leaping toward a basketball hoop with a basketball raised above his
head in his left hand, as though he is attempting to dunk the ball. The setting for the
photo is not a basketball court, as one would expect in a shot of this sort. Instead,
Rentmeester chose to take the photo on an isolated grassy knoll on the University of
North Carolina campus. He brought in a basketball hoop and backboard mounted
on a tall pole, which he planted in the ground to position the hoop exactly where he
wanted. Whether due to the height of the pole or its placement within the image, the
basketball hoop appears to tower above Jordan, beyond his reach.
Rentmeester instructed Jordan on the precise pose he wanted Jordan to assume. It
was an unusual pose for a basketball player to adopt, one inspired by ballet’s grand
jeté, in which a dancer leaps with legs extended, one foot forward and the other back.
Rentmeester positioned the camera below Jordan and snapped the photo at the peak
of his jump so that the viewer looks up at Jordan’s soaring figure silhouetted against
a cloudless blue sky. Rentmeester used powerful strobe lights and a fast shutter
speed to capture a sharp image of Jordan contrasted against the sky, even though the
sun is shining directly into the camera lens from the lower right-hand corner of the
shot.
Not long after Rentmeester’s photograph appeared in Life magazine, Nike contacted
him and asked to borrow color transparencies of the photo. Rentmeester provided
Nike with two color transparencies for $150 under a limited license authorizing Nike
to use the transparencies “for slide presentation only.” It is unclear from the
complaint what kind of slide presentation Nike may have been preparing, but the
company was then beginning its lucrative partnership with Jordan by promoting the
Air Jordan brand of athletic shoes.
In late 1984 or early 1985, Nike hired a photographer to produce its own photograph
of Jordan, one obviously inspired by Rentmeester’s. In the Nike photo, Jordan is
again shown leaping toward a basketball hoop with a basketball held in his left hand
above his head, as though he is about to dunk the ball. See Appendix.

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Figure 9 Michael Jordan Photo Commissioned By Nike

The photo was taken outdoors and from a similar angle as in Rentmeester’s photo,
so that the viewer looks up at Jordan’s figure silhouetted against the sky. In the Nike
photo, though, it is the city of Chicago’s skyline that appears in the background, a
nod to the fact that by then Jordan was playing professionally for the Chicago Bulls.
Jordan wears apparel reflecting the colors of his new team, and he is of course
wearing a pair of Nike shoes. Nike used this photo on posters and billboards as part
of its marketing campaign for the new Air Jordan brand.
When Rentmeester saw the Nike photo, he threatened to sue Nike for breach of the
limited license governing use of his color transparencies. To head off litigation, Nike
entered into a new agreement with Rentmeester in March 1985, under which the
company agreed to pay $15,000 for the right to continue using the Nike photo on
posters and billboards in North America for a period of two years. Rentmeester
alleges that Nike continued to use the photo well beyond that period.
In 1987, Nike created its iconic “Jumpman” logo, a solid black silhouette that tracks
the outline of Jordan’s figure as it appears in the Nike photo. See Appendix.
Figure 10 The Iconic Nike “Jumpman” logo

Over the past three decades, Nike has used the Jumpman logo in connection with
the sale and marketing of billions of dollars of merchandise. It has become one of
Nike’s most recognizable trademarks.

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Rentmeester filed this action in January 2015. He alleges that both the Nike photo
and the Jumpman logo infringe the copyright in his 1984 photo of Jordan. His
complaint asserts claims for direct, vicarious, and contributory infringement, as well
as a claim for violation of the Digital Millennium Copyright Act, 17 U.S.C. § 1202.
Rentmeester seeks damages only for acts of infringement occurring within the
Copyright Act’s three-year limitations period (January 2012 to the present). Doing so
avoids the defense of laches that would otherwise arise from his 30-year delay in
bringing suit. See Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962, 1970 (2014).
The district court granted Nike’s motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6). The court dismissed Rentmeester’s claims with prejudice after
concluding that neither the Nike photo nor the Jumpman logo infringe
Rentmeester’s copyright as a matter of law. We review that legal determination de
novo.
II
To state a claim for copyright infringement, Rentmeester must plausibly allege two
things: (1) that he owns a valid copyright in his photograph of Jordan, and (2) that
Nike copied protected aspects of the photo’s expression. See Feist Publications, Inc. v.
Rural Telephone Service Co., 499 U.S. 340, 361 (1991); Shaw v. Lindheim, 919 F.2d 1353,
1356 (9th Cir. 1990).
Although our cases have not always made this point explicit, the second element has
two distinct components: “copying” and “unlawful appropriation.” Sid & Marty
Krofft Television Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157, 1164-65 (9th Cir.
1977); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Proof of copying by the
defendant is necessary because independent creation is a complete defense to
copyright infringement. No matter how similar the plaintiff’s and the defendant’s
works are, if the defendant created his independently, without knowledge of or
exposure to the plaintiff’s work, the defendant is not liable for infringement. See Feist,
499 U.S. at 345-46. Proof of unlawful appropriation—that is, illicit copying—is
necessary because copyright law does not forbid all copying. The Copyright Act
provides that copyright protection does not “extend to any idea, procedure, process,
system, method of operation, concept, principle, or discovery, regardless of the form
in which it is described, explained, illustrated, or embodied in [the copyrighted] work.”
17 U.S.C. § 102(b). Thus, a defendant incurs no liability if he copies only the “ideas”
or “concepts” used in the plaintiff’s work. To infringe, the defendant must also copy
enough of the plaintiff’s expression of those ideas or concepts to render the two
works “substantially similar.” Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904,
913-14 (9th Cir. 2010).
When the plaintiff lacks direct evidence of copying, he can attempt to prove it
circumstantially by showing that the defendant had access to the plaintiff’s work and
that the two works share similarities probative of copying. See Baxter v. MCA, Inc.,
812 F.2d 421, 423 (9th Cir. 1987). Such proof creates a presumption of copying,
which the defendant can then attempt to rebut by proving independent creation.
Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486 (9th Cir. 2000).
Unfortunately, we have used the same term—“substantial similarity”—to describe
both the degree of similarity relevant to proof of copying and the degree of similarity
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necessary to establish unlawful appropriation. The term means different things in
those two contexts. To prove copying, the similarities between the two works need
not be extensive, and they need not involve protected elements of the plaintiff’s
work. They just need to be similarities one would not expect to arise if the two works
had been created independently. Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d
Cir. 1992). To prove unlawful appropriation, on the other hand, the similarities
between the two works must be “substantial” and they must involve protected
elements of the plaintiff’s work. Laureyssens, 964 F.2d at 140.1
Footnote 1: To avoid the confusion that arises from using the same term to describe two different
concepts, some courts now use the term “probative similarity” to describe the similarities relevant to
proof of copying.

In this case, Rentmeester has plausibly alleged the first element of his infringement
claim—that he owns a valid copyright. The complaint asserts that he has been the
sole owner of the copyright in his photo since its creation in 1984. And the photo
obviously qualifies as an “original work of authorship,” given the creative choices
Rentmeester made in composing it. See 17 U.S.C. § 102(a)(5); Burrow-Giles
Lithographic Co. v. Sarony, 111 U.S. 53, 60 (1884). Rentmeester alleges that he
registered his photo with the Copyright Office in 2014, which permits him to bring
this suit. 17 U.S.C. § 411(a).
Rentmeester has also plausibly alleged the “copying” component of the second
element. He alleges that he provided color transparencies of his photo to Nike’s
creative director shortly before production of the Nike photo. That allegation
establishes that Nike had access to Rentmeester’s photo, which in this context means
a reasonable opportunity to view it. Nike’s access to Rentmeester’s photo, combined
with the obvious conceptual similarities between the two photos, is sufficient to
create a presumption that the Nike photo was the product of copying rather than
independent creation.
The remaining question is whether Rentmeester has plausibly alleged that Nike
copied enough of the protected expression from Rentmeester’s photo to establish
unlawful appropriation. To prove this component of his claim, Rentmeester does not
have to show that Nike produced an exact duplicate of his photo. But, as mentioned,
he does have to show that Nike copied enough of the photo’s protected expression
to render their works “substantially similar.” See Mattel, 616 F.3d at 913-14.
In our circuit, determining whether works are substantially similar involves a twopart analysis consisting of the “extrinsic test” and the “intrinsic test.” The extrinsic
test assesses the objective similarities of the two works, focusing only on the
protectable elements of the plaintiff’s expression. Cavalier v. Random House, Inc., 297
F.3d 815, 822 (9th Cir. 2002). Before that comparison can be made, the court must
“filter out” the unprotectable elements of the plaintiff’s work—primarily ideas and
concepts, material in the public domain, and scènes à faire (stock or standard
features that are commonly associated with the treatment of a given subject). Id. at
822-23. The protectable elements that remain are then compared to corresponding
elements of the defendant’s work to assess similarities in the objective details of the
works. The intrinsic test requires a more holistic, subjective comparison of the works
to determine whether they are substantially similar in “total concept and feel.” Id. at
822 (internal quotation marks omitted). To prevail, a plaintiff must prove substantial
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similarity under both tests. Funky Films, Inc. v. Time Warner Entertainment Co., 462 F.3d
1072, 1077 (9th Cir. 2006).
Only the extrinsic test’s application may be decided by the court as a matter of law,
McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 319 (9th Cir. 1987), so that is the only
test relevant in reviewing the district court’s ruling on a motion to dismiss. Before
applying the extrinsic test ourselves, a few words are in order about the filtering
process that the test demands.
Certain types of works can be dissected into protected and unprotected elements
more readily than others. With novels, plays, and motion pictures, for instance, even
after filtering out unprotectable elements like ideas and scènes à faire, many
protectable elements of expression remain that can be objectively compared. “[P]lot,
themes, dialogue, mood, setting, pace, characters, and sequence of events” are
elements we have previously identified. Funky Films, 462 F.3d at 1077 (internal
quotation marks omitted).
Photographs cannot be dissected into protected and unprotected elements in the
same way. To be sure, photos can be broken down into objective elements that
reflect the various creative choices the photographer made in composing the
image—choices related to subject matter, pose, lighting, camera angle, depth of field,
and the like. See Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1074-75 (9th Cir. 2000).
But none of those elements is subject to copyright protection when viewed in
isolation. For example, a photographer who produces a photo using a highly original
lighting technique or a novel camera angle cannot prevent other photographers from
using those same techniques to produce new images of their own, provided the new
images are not substantially similar to the earlier, copyrighted photo. With respect to
a photograph’s subject matter, no photographer can claim a monopoly on the right
to photograph a particular subject just because he was the first to capture it on film.
A subsequent photographer is free to take her own photo of the same subject, again
so long as the resulting image is not substantially similar to the earlier photograph.
That remains true even if, as here, a photographer creates wholly original subject
matter by having someone pose in an unusual or distinctive way. Without question,
one of the highly original elements of Rentmeester’s photo is the fanciful (nonnatural) pose he asked Jordan to assume. That pose was a product of Rentmeester’s
own “intellectual invention,” Burrow-Giles, 111 U.S. at 60; it would not have been
captured on film but for Rentmeester’s creativity in conceiving it. The pose
Rentmeester conceived is thus quite unlike the pose at issue in Harney v. Sony Pictures
Television, Inc., 704 F.3d 173 (1st Cir. 2013), which consisted of nothing more than a
daughter riding piggyback on her father’s shoulders. The photographer there did not
orchestrate the pose and, even if he had, the pose is so commonplace as to be part of
the public domain. Id. at 187; see also Leibovitz v. Paramount Pictures Corp., 137 F.3d
109, 116 (2d Cir. 1998) (pose of a nude, pregnant woman in profile is part of the
public domain).
Without gainsaying the originality of the pose Rentmeester created, he cannot
copyright the pose itself and thereby prevent others from photographing a person in
the same pose. He is entitled to protection only for the way the pose is expressed in
his photograph, a product of not just the pose but also the camera angle, timing, and

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shutter speed Rentmeester chose. If a subsequent photographer persuaded Michael
Jordan to assume the exact same pose but took her photo, say, from a bird’s eye view
directly above him, the resulting image would bear little resemblance to
Rentmeester’s photo and thus could not be deemed infringing.
What is protected by copyright is the photographer’s selection and arrangement of
the photo’s otherwise unprotected elements. If sufficiently original, the combination
of subject matter, pose, camera angle, etc., receives protection, not any of the
individual elements standing alone. In that respect (although not in others),
photographs can be likened to factual compilations. Justin Hughes, The Photographer’s
Copyright—Photograph as Art, Photograph as Database, 25 Harv. J. L. & Tech. 339, 350-51
(2012). An author of a factual compilation cannot claim copyright protection for the
underlying factual material—facts are always free for all to use. Feist, 499 U.S. at 34748. If sufficiently original, though, an author’s selection and arrangement of the
material are entitled to protection. Id. at 348-49. The individual elements that
comprise a photograph can be viewed in the same way, as the equivalent of
unprotectable “facts” that anyone may use to create new works. A second
photographer is free to borrow any of the individual elements featured in a
copyrighted photograph, “so long as the competing work does not feature the same
selection and arrangement” of those elements. Id. at 349. In other words, a
photographer’s copyright is limited to “the particular selection and arrangement” of
the elements as expressed in the copyrighted image. Id. at 350-5.2
Footnote 2: We deal here with photographs of recognizable subject matter, rather than more abstract
photographic works. We need not decide whether the same principles would apply with equal force to
that latter category of works.

This is not to say, as Nike urges us to hold, that all photographs are entitled to only
“thin” copyright protection, as is true of factual compilations. A copyrighted work is
entitled to thin protection when the range of creative choices that can be made in
producing the work is narrow. Mattel, 616 F.3d at 913-14. In Mattel, we noted by way
of illustration that “there are only so many ways to paint a red bouncy ball on blank
canvas.” Id. at 914. We contrasted that with the “gazillions of ways to make an
aliens-attack movie,” a work that would be entitled to “broad” protection given the
much wider range of creative choices available in producing it. Id. at 913-14. When
only a narrow range of expression is possible, copyright protection is thin because
the copyrighted work will contain few protectable features.
Some photographs are entitled to only thin protection because the range of creative
choices available in selecting and arranging the photo’s elements is quite limited.
That was the case in Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003),
where we held that the plaintiff’s commercial product shots of a vodka bottle were
entitled to only thin protection. Given the constraints imposed by the subject matter
and conventions of commercial product shots, there were relatively few creative
choices a photographer could make in producing acceptable images of the bottle. As
a result, subtle differences in lighting, camera angle, and background were sufficient
to render the defendant’s otherwise similar-looking photos of the same bottle noninfringing. Id. at 766.
With other photographs, however, the range of creative choices available to the
photographer will be far broader, and very few of those choices will be dictated by
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subject matter or convention. On the spectrum we set out in Mattel—the relatively
small number of ways “to paint a red bouncy ball on blank canvas” on one end, and
the “gazillions of ways to make an aliens-attack movie” on the other—many photos
will land more on the “aliens-attack movie” end of the range. 616 F.3d at 913-14. As
with any other work, the greater the range of creative choices that may be made, the
broader the level of protection that will be afforded to the resulting image. See id. at
916; McCulloch, 823 F.2d at 321.
Rentmeester’s photo is undoubtedly entitled to broad rather than thin protection.
The range of creative choices open to Rentmeester in producing his photo was
exceptionally broad; very few of those choices were dictated by convention or
subject matter. In fact, Rentmeester’s photo is distinctive precisely because he chose
not to be bound by the conventions commonly followed in photographing a
basketball player attempting to dunk a basketball. Such photos would typically call
for a basketball court as the setting, whether indoors or out. Rentmeester chose
instead to place Jordan on an open, grassy knoll with a basketball hoop inserted as a
prop, whimsically out of place and seeming to tower well above regulation height.
Rentmeester also departed from convention by capturing Jordan in a fanciful, highly
original pose, one inspired more by ballet’s grand jeté than by any pose a basketball
player might naturally adopt when dunking a basketball. These creative choices—
along with the other choices Rentmeester made with respect to lighting, camera
angle, depth of field, and selection of foreground and background elements—
resulted in a photo with many non-standard elements. Rentmeester’s selection and
arrangement of those elements produced an image entitled to the broadest
protection a photograph can receive.
With those preliminary observations out of the way, we can now turn to whether
Rentmeester has plausibly alleged that his photo and the Nike photo are substantially
similar under the extrinsic test. As discussed, that inquiry requires us to assess
similarities in the selection and arrangement of the photos’ elements, as reflected in
the objective details of the two works. We do not have a well-defined standard for
assessing when similarity in selection and arrangement becomes “substantial,” and in
truth no hard-and-fast rule could be devised to guide determinations that will
necessarily turn on the unique facts of each case. See Peter Pan Fabrics, Inc. v. Martin
Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). The best we can do is borrow from
the standard Judge Learned Hand employed in a case involving fabric designs: The
two photos’ selection and arrangement of elements must be similar enough that “the
ordinary observer, unless he set out to detect the disparities, would be disposed to
overlook them.” Id.
We conclude that the works at issue here are as a matter of law not substantially
similar. Just as Rentmeester made a series of creative choices in the selection and
arrangement of the elements in his photograph, so too Nike’s photographer made
his own distinct choices in that regard. Those choices produced an image that differs
from Rentmeester’s photo in more than just minor details.
Let’s start with the subject matter of the photographs. The two photos are
undeniably similar in the subject matter they depict: Both capture Michael Jordan in
a leaping pose inspired by ballet’s grand jeté. But Rentmeester’s copyright does not
confer a monopoly on that general “idea” or “concept”; he cannot prohibit other
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photographers from taking their own photos of Jordan in a leaping, grand jetéinspired pose. Because the pose Rentmeester conceived is highly original, though, he
is entitled to prevent others from copying the details of that pose as expressed in the
photo he took. Had Nike’s photographer replicated those details in the Nike photo,
a jury might well have been able to find unlawful appropriation even though other
elements of the Nike photo, such as background and lighting, differ from the
corresponding elements in Rentmeester’s photo.
But Nike’s photographer did not copy the details of the pose as expressed in
Rentmeester’s photo; he borrowed only the general idea or concept embodied in the
photo. Thus, in each photo Jordan is holding a basketball above his head in his left
hand with his legs extended, in a pose at least loosely based on the grand jeté. The
position of each of his limbs in the two photos is different, however, and those
differences in detail are significant because, among other things, they affect the visual
impact of the images. In Rentmeester’s photo, Jordan’s bent limbs combine with the
background and foreground elements to convey mainly a sense of horizontal
(forward) propulsion, while in the Nike photo Jordan’s completely straight limbs
combine with the other elements to convey mainly a sense of vertical propulsion.
While the photos embody a similar idea or concept, they express it in different ways.
See Folkens v. Wyland Worldwide, LLC, 882 F.3d 768, 775-77 (9th Cir. 2018).
As to the other highly original element of Rentmeester’s photo—the unusual outdoor setting he chose—Nike’s photographer did not copy the details of that element
either. The two photos again share undeniable similarities at the conceptual level:
Both are taken outdoors without the usual trappings of a basketball court, other than
the presence of a lone hoop and backboard. But when comparing the details of how
that concept is expressed in the two photos, stark differences are readily apparent.
Rentmeester set his shot on a grassy knoll with a whimsically out-of-place basketball
hoop jutting up from a pole planted in the ground. The grassy knoll in the
foreground of Rentmeester’s photo is wholly absent from the Nike photo. In fact, in
the Nike photo there is no foreground element at all. The positioning of the
basketball hoops is also materially different in the two photos. In Rentmeester’s
photo, the hoop is positioned at a height that appears beyond the ability of anyone to
dunk on (even someone as athletic as Jordan), which further contributes to the
whimsical rather than realistic nature of the depiction. The hoop in the Nike photo,
by contrast, appears to be easily within Jordan’s reach.
The other major conceptual similarity shared by the two photos is that both are
taken from a similar angle so that the viewer looks up at Jordan’s soaring figure
silhouetted against a clear sky. This is a far less original element of Rentmeester’s
photo, as photographers have long used similar camera angles to capture subjects
silhouetted against the sky. But even here, the two photos differ as to expressive
details in material respects. In Rentmeester’s photo, the background is a cloudless
blue sky; in the Nike photo, it is the Chicago skyline silhouetted against the orange
and purple hues of late dusk or early dawn. In Rentmeester’s photo, the sun looms
large in the lower right-hand corner of the image; in the Nike photo the sun does not
appear at all. And in Rentmeester’s photo, parts of Jordan’s figure are cast in shadow,
while in the Nike photo every inch of Jordan’s figure is brightly lit.

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Finally, the arrangement of the elements within the photographs is materially
different in two further respects. In Rentmeester’s photo, Jordan is positioned
slightly left of center and appears as a relatively small figure within the frame. In the
Nike photo, he is perfectly centered and dominates the frame. In Rentmeester’s
photo, the basketball hoop stands atop a tall pole planted in the ground, and the
hoop’s position within the frame balances Jordan’s left-of-center placement. In the
Nike photo, the hoop takes up the entire right border of the frame, highlighting
Jordan’s dominant, central position. The hoops are also lit and angled differently
toward the viewer, further distinguishing their expressive roles in the photographs.
In our view, these differences in selection and arrangement of elements, as reflected
in the photos’ objective details, preclude as a matter of law a finding of infringement.
Nike’s photographer made choices regarding selection and arrangement that
produced an image unmistakably different from Rentmeester’s photo in material
details—disparities that no ordinary observer of the two works would be disposed to
overlook. What Rentmeester’s photo and the Nike photo share are similarities in
general ideas or concepts: Michael Jordan attempting to dunk in a pose inspired by
ballet’s grand jeté; an outdoor setting stripped of most of the traditional trappings of
basketball; a camera angle that captures the subject silhouetted against the sky.
Rentmeester cannot claim an exclusive right to ideas or concepts at that level of
generality, even in combination. Permitting him to claim such a right would
withdraw those ideas or concepts from the “stock of materials” available to other
artists, thereby thwarting copyright’s fundamental objective of fostering creativity.
Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 240 (2d Cir. 1983).
Copyright promotes the progress of science and the useful arts by “encourag[ing]
others to build freely upon the ideas and information conveyed by a work.” Feist, 499
U.S. at 349-50. That is all Nike’s photographer did here.
If the Nike photo cannot as a matter of law be found substantially similar to
Rentmeester’s photo, the same conclusion follows ineluctably with respect to the
Jumpman logo. The logo is merely a solid black silhouette of Jordan’s figure as it
appears in the Nike photo, which, as we have said, differs materially from the way
Jordan’s figure appears in Rentmeester’s photo. Isolating that one element from the
Nike photo and rendering it in a stylized fashion make the Jumpman logo even less
similar to Rentmeester’s photo than the Nike photo itself.
III
Rentmeester makes three additional arguments in support of reversal, none of which
we find persuasive.
A
First, Rentmeester contends that dismissal at the pleading stage is rarely appropriate
in copyright infringement cases and that he should have been allowed to take
discovery before the district court assessed substantial similarity. It is true that
dismissal of copyright infringement claims occurs more commonly at the summary
judgment stage, but dismissal at the pleading stage is by no means unprecedented.
See, e.g., Peters v. West, 692 F.3d 629, 631 (7th Cir. 2012); Peter F. Gaito Architecture,
LLC v. Simone Development Corp., 602 F.3d 57, 64-65 (2d Cir. 2010); Christianson v. West
Publishing Co., 149 F.2d 202, 203 (9th Cir. 1945). Dismissal is appropriate here
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because the two photos and the Jumpman logo are properly before us and thus
“capable of examination and comparison.” Christianson, 149 F.2d at 203. Nothing
disclosed during discovery could alter the fact that the allegedly infringing works are
as a matter of law not substantially similar to Rentmeester’s photo.
This is not a case in which discovery could shed light on any issues that actually
matter to the outcome. In some cases, the defendant claims independent creation as
a defense and thus denies having had access to the plaintiff’s work. In that scenario,
disputed factual issues will often require discovery to flesh out. Here, Nike does not
contest that it had access to Rentmeester’s photo, so that issue is not in dispute.
In other cases, more may need to be known about the range of creative choices
available to the plaintiff photographer in order to determine the breadth of
protection available to his work. Here, we have accepted as true all of Rentmeester’s
allegations concerning the creative choices he made in producing his photograph.
But even granting his photo the broad protection it deserves, a comparison of the
works at issue makes clear that Nike’s photographer made creative choices of his
own, which resulted in an image and derivative logo not substantially similar to
Rentmeester’s photo. Nothing disclosed during discovery could strengthen
Rentmeester’s arguments on this score.
B
Second, Rentmeester asserts that because he has made a strong showing of access, he
need make only a lesser showing of substantial similarity. For this proposition he
relies on the so-called “inverse ratio rule.” [The court’s discussion of the inverse ratio
rule is omitted.]
C
Finally, Rentmeester contends that the district court should have granted him leave
to amend his complaint, rather than dismissing the action with prejudice. The district
court did not abuse its discretion in dismissing Rentmeester’s suit with prejudice
because amending the complaint would have been futile. Rentmeester’s photo and
the allegedly infringing works are as a matter of law not substantially similar. None of
the new allegations Rentmeester proposed to add would have changed that
dispositive fact.
AFFIRMED.
OWENS, Circuit Judge, concurring in part and dissenting in part:
I agree with most of the majority’s analysis, and with its holding that Rentmeester
cannot prevail on his Jumpman logo copyright infringement claim. However, I
respectfully disagree with the majority’s conclusion as to the Nike photo.
After correctly (1) setting out the law of copyright as applied to photographs, and (2)
recognizing that Rentmeester’s photo is entitled to “broad” copyright protection, the
majority then dissects why, in its view, the Rentmeester and Nike photos are, as a
matter of law, not substantially similar. This section of the majority reads like a
compelling motion for summary judgment or closing argument to a jury, and it may

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be correct at the end of the day. Yet such questions of substantial similarity are
inherently factual, and should not have been made at this stage of the game.
Where no discovery has taken place, we should not say that, as a matter of law, the
Nike photo could never be substantially similar to the Rentmeester photo. This is an
inherently factual question which is often reserved for the jury, and rarely for a court
to decide at the motion to dismiss stage.
“Although it may be easy to identify differences between” the two photos, the Nike
photo also has “much in common” with the broadly protected Rentmeester photo.
Leigh, 212 F.3d at 1216 (reversing summary judgment for defendant with respect to
its alleged infringement of a photograph notwithstanding “undeniably[] significant
differences between the pictures”). For example, in addition to the similarity of both
photos capturing Michael Jordan doing a grand-jeté pose while holding a basketball,
both photos are taken from a similar angle, have a silhouette aspect of Jordan against
a contrasting solid background, and contain an outdoor setting with no indication of
basketball apart from an isolated hoop and backboard.
I cannot say that no reasonable jury could find in favor of Rentmeester regarding the
Nike photo, so I would hesitate in granting summary judgment. Here, the majority
did not permit the case even to go that far. Rather, it substituted its own judgment—
with no factual record development by the parties—as to why the photos are not
substantially similar.
While I disagree with the majority’s ruling as to the Nike photo, I agree with its
holding as to the Jumpman logo. The only element of the Rentmeester photo which
Nike possibly could have copied to create the Jumpman logo is the outline of Jordan
doing a grand-jeté pose while holding a basketball. As the cases that the majority
cites make clear, the outline of a pose isolated from a photograph enjoys, at best,
“thin” copyright protection. A grand-jeté dunking pose cannot receive the broad
protection that Rentmeester claims, even if Rentmeester encouraged Jordan to strike
it. The pose is ultimately no different from the Vulcan salute of Spock, the double
thumbs up of Arthur Fonzarelli, or John Travolta’s iconic Saturday Night Fever
dance pose.
All of these poses can exist independently of the photographer taking them. It does
not matter that Rentmeester told Jordan to pose that way-standing alone, a
photograph of a mannequin or marionette in that same pose would receive the same
thin protection. Cf. Folkens v. Wyland Worldwide, LLC, 882 F.3d 768, 774-76 (9th Cir.
2018) (holding that two dolphins crossing each other was an unprotected element
because that pose can be found in nature and it was irrelevant that the dolphins were
posed by animal trainers). Indeed, Rentmeester cannot cite any cases to suggest that
Jordan’s pose, in isolation, enjoys anything more than the thinnest of copyright
protection. To hold otherwise would mean that a photographer would own a broad
copyright over photos of human movements, including facial expressions. I cannot
find any authority in our cases or the relevant copyright statutes that would permit
such a radical change in our intellectual property laws. Cf. id. at 775 (reaffirming that
“ideas, ‘first expressed in nature, are the common heritage of humankind, and no
artist may use copyright law to prevent others from depicting them’”) (quoting Satava
v. Lowry, 323 F.3d 805, 813 (9th Cir. 2003)).

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At this stage of the litigation, we assume that (1) Nike traced the Jumpman logo
directly from the Nike photo, and (2) that Nike based its photo on the Rentmeester
photo. Even assuming all of this to be true, the Jumpman logo is not “virtually
identical” to the image of Jordan in the Rentmeester photo. Mattel, Inc. v. MGA
Entm’t, Inc., 616 F.3d 904, 914 (9th Cir. 2010). For example, there are differences in
the angles of Jordan’s arms and legs, and the Jumpman logo is a black silhouette.
And without being virtually identical, the Jumpman logo—the outline of a pose by
Jordan in the Nike photo-cannot infringe upon any thin copyright protection
enjoyed by the few elements of the Rentmeester photo allegedly copied. See id.
Accordingly, while I agree with the majority regarding the Jumpman logo, I think
that whether the Nike photo is substantially similar is not an uncontested breakaway
layup, and therefore dismissal of that copyright infringement claim is premature.
Notes and questions
(1) The two-stage extrinsic/intrinsic test was initially developed in Sid & Marty Krofft
Television Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977). In explaining the
extrinsic/intrinsic approach to substantial similarity the majority in Williams v. Gaye states:
In our circuit, determining whether works are substantially similar involves a twopart analysis consisting of the “extrinsic test” and the “intrinsic test.” The extrinsic
test assesses the objective similarities of the two works, focusing only on the
protectable elements of the plaintiff’s expression.
… The intrinsic test requires a more holistic, subjective comparison of the works to
determine whether they are substantially similar in “total concept and feel.” To
prevail, a plaintiff must prove substantial similarity under both tests.

As Pamela Samuelson notes in A Fresh Look at Nonliteral Copyright Infringement, 107
Northwestern University Law Review 1821 (2013), the “extrinsic” and “intrinsic”
terminology used by the Ninth Circuit “is inapt and confusing.” Samuelson continues (at
1821):
As an adjective, “extrinsic” means that the thing so described is inessential, not an
inherent characteristic of the thing’s true nature, or has come from the outside;
foreign, extraneous, and alien are its synonyms. Characteristics such as colors,
shapes, and sizes, which Krofft’s first step considers, are, however, inherent
characteristics, not outside or foreign elements. So “extrinsic” is an inapt word to
use as the name of that first step. “Intrinsic” is no more helpful, although perhaps
less misleading, as a descriptor of the second step. Later cases have suggested that
the two steps might be “more sensibly described as objective and subjective analyses
of expression.” Unfortunately, the Ninth Circuit has nonetheless persisted in the
extrinsic/intrinsic terminology.

(2) The Rentmeester decision does a lot to clarify (perhaps even reinvent?) the
extrinsic/intrinsic test. Prior to this case, it was not even whether (a) the two-part
extrinsic/intrinsic test was just a relabeling of the Second Circuit’s two-part copying in
fact/wrongful copying analysis, or (b) the extrinsic/intrinsic analysis applied separately to
both copying in fact and wrongful copying, or (c) the extrinsic/intrinsic analysis is meant to
take place entirely within the element of wrongful copying on the assumption that copying in

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fact has already been established. After Rentmeester, it now seems clear that (c) is the correct
answer.
The majority in Rentmeester held that “Nike’s access to Rentmeester’s photo, combined with
the obvious conceptual similarities between the two photos, [was] sufficient to create a
presumption that the Nike photo was the product of copying rather than independent
creation.” Only when it then turned to unlawful appropriation by the copying of protectible
expression did the court invoke the extrinsic/intrinsic test.
(3) The extrinsic/intrinsic approach breaks the substantial similarity inquiry down into an
objective analytical assessment of the works (so-called extrinsic) and a subjective one that focuses
on the gestalt reaction of the ordinary observer (so-called intrinsic). Even once we get past
the confusing terminology of extrinsic and intrinsic, how clear is the objective/subjective
distinction, really?
In Rentmeester the court carefully filters out “unprotectable elements of the plaintiff’s work—
primarily ideas and concepts, material in the public domain, and scènes à faire” but also
acknowledges that what “is protected by copyright is the photographer’s selection and
arrangement of the photo’s otherwise unprotected elements.” A few paragraphs later, the
court admits that it does “not have a well-defined standard for assessing when similarity in
selection and arrangement becomes ‘substantial,’ and in truth no hard-and-fast rule could be
devised to guide determinations that will necessarily turn on the unique facts of each case.”
Borrowing from Judge Learned Hand’s famous judgment in Peter Pan Fabrics, Inc. v. Martin
Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) the court posited that: “The two photos’
selection and arrangement of elements must be similar enough that ‘the ordinary observer,
unless he set out to detect the disparities, would be disposed to overlook them.’ Thus, in
what is supposed to be the hardnosed, dissection driven, objective part of the test, the court
falls back on mushy gestalt impressions that would seem to belong in the so-called intrinsic
part of the test.
Indeed, it is quite common for courts in the Ninth Circuit to offer counterbalancing
dissection and anti-dissection rules on both sides of the extrinsic/intrinsic divide. Just as
extrinsic analysis can’t be to disective (disectional?), the gestalt reaction of the ordinary observer
in the intrinsic part of the test can’t be too gestalty. Even in the subjective intrinsic analysis,
the finder of fact must distinguish between the protected and unprotected material in a
plaintiff’s work.
(4) The court in Rentmeester brings Ninth Circuit copyright back into alignment with the
copying in fact versus wrongful copying framework of the Second Circuit. In doing so, it
acknowledges the problems inherent in using the “the same term—’substantial similarity’—
to describe both the degree of similarity relevant to proof of copying and the degree of
similarity necessary to establish unlawful appropriation.” The court continued:
The term means different things in those two contexts. To prove copying, the
similarities between the two works need not be extensive, and they need not involve
protected elements of the plaintiff’s work. They just need to be similarities one
would not expect to arise if the two works had been created independently. … To
prove unlawful appropriation, on the other hand, the similarities between the two
works must be “substantial” and they must involve protected elements of the
plaintiff’s work.

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Would it make sense to use the term “probative similarity” to describe the similarities
relevant to proof of copying and to reserve “substantial similarity” for improper
appropriation?
Skidmore v. Zeppelin 952 F.3d 1051 (9th Cir. 2020) (En Banc)
Figure 11 Sheet Music for Taurus by Randy Wolfe

McKEOWN, Circuit Judge:
Stairway to Heaven has been called the greatest rock song of all time. Yet, hyperbole
aside, nearly 40 years after the English rock band Led Zeppelin released its hit
recording, the song is not impervious to copyright challenges. The estate of guitarist
Randy Wolfe claims that Led Zeppelin and its guitarist Jimmy Page and vocalist
Robert Plant copied portions of Taurus, a song written by Wolfe and performed by
his band Spirit.
BACKGROUND
Randy Wolfe, professionally known as Randy California, wrote the instrumental song
Taurus in 1966 or 1967. He was a guitarist in the band Spirit. Spirit signed a
recording contract in August 1967 and released its first eponymous album—which
included Taurus—a few months later. Wolfe also entered into an Exclusive
Songwriter’s and Composer’s Agreement with Hollenbeck Music Co. (“Hollenbeck”).
In December 1967, Hollenbeck registered the copyright in the unpublished musical
composition of Taurus, listing Wolfe as the author. As required for registration of an
unpublished work under the 1909 Copyright Act, which was in effect at the time,
Hollenbeck transcribed Taurus and deposited one page of sheet music (the “Taurus
deposit copy”), with the United States Copyright Office.
Around the same time, across the Atlantic, another rock band, Led Zeppelin, was
formed by Jimmy Page, Robert Plant, John Paul Jones, and John Bonham. Led
Zeppelin released its fourth album in late 1971. The untitled album, which became
known as “Led Zeppelin IV,” contained the now iconic song Stairway to Heaven.
Stairway to Heaven was written by Jimmy Page and Robert Plant.

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It is undisputed that Spirit and Led Zeppelin crossed paths in the late 1960s and the
early 1970s. The bands performed at the same venue at least three times between
1968 and 1970. Led Zeppelin also performed a cover of a Spirit song, Fresh Garbage.
But there is no direct evidence that the two bands toured together, or that Led
Zeppelin band members heard Spirit perform Taurus.
Wolfe passed away in 1997. After his death, Wolfe’s mother established the Randy
Craig Wolfe Trust (the “Trust”) and served as the trustee until she passed away.
Neither Wolfe nor his mother filed a suit regarding Stairway to Heaven. Michael
Skidmore became a co-trustee of the Trust in 2006.
Fast forward forty-three years from the release of Stairway to Heaven to May 2014.
Skidmore filed a suit alleging that Stairway to Heaven infringed the copyright in
Taurus, naming as defendants Led Zeppelin, James Patrick Page, Robert Anthony
Plant, John Paul Jones, Super Hype Publishing, and the Warner Music Group
Corporation as parent of Warner/Chappell Music, Inc. (“Warner/Chappell”),
Atlantic Recording Corporation, and Rhino Entertainment Co. (collectively “Led
Zeppelin”). One may wonder how a suit so long in the making could survive a laches
defense. The Supreme Court answered this question in Petrella v. Metro-Goldwyn-Mayer,
Inc., which clarified that laches is not a defense where copyright infringement is
ongoing. 572 U.S. 663, 668 (2014).
Skidmore alleged direct, contributory, and vicarious copyright infringement. He also
sought equitable relief for a claim that he titled “Right of Attribution—Equitable
Relief—Falsification of Rock n’ Roll History.” Skidmore’s claims are not based on
the entire Taurus composition. Rather, Skidmore claims that the opening notes of
Stairway to Heaven are substantially similar to the eight-measure passage at the
beginning of the Taurus deposit copy:
The claimed portion includes five descending notes of a chromatic musical scale.
These notes are represented on the piano as a set of adjacent black and white keys,
from right to left. The beginning of Stairway to Heaven also incorporates a
descending chromatic minor chord progression in A minor. However, the
composition of Stairway to Heaven has a different ascending line that is played
concurrently with the descending chromatic line, and a distinct sequence of pitches
in the arpeggios, which are not present in Taurus.

Led Zeppelin disputed ownership, access, and substantial similarity. Led Zeppelin
also alleged affirmative defenses, including independent creation, unclean hands, and
laches.
At the close of discovery, Led Zeppelin moved for summary judgment. The district
court granted the motion in part and denied it in part [and] ruled that under the 1909
Act, the scope of the copyright was circumscribed by the musical composition
transcribed in the Taurus deposit copy. Thus, only the one-page Taurus deposit copy,
and not a sound recording, could be used to prove substantial similarity between
Taurus and Stairway to Heaven.
The district court granted Led Zeppelin’s motion in limine to exclude Taurus sound
recordings and expert testimony based on those recordings. The district court again
concluded that the Taurus deposit copy, rather than any recordings of Spirit’s
performance of Taurus, formed the sole benchmark for determining substantial
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similarity. The district court found that there were triable issues of fact relating to
ownership, access, substantial similarity, and damages.
Against the backdrop of these rulings, the trial lasted five days. Two key issues
predominated: access to Taurus by Led Zeppelin band members and substantial
similarity.
On the access question, the district court allowed Skidmore to play various sound
recordings of Taurus for Page outside of the presence of the jury. Skidmore then
examined Page on access in front of the jury. Page testified that he owned “a copy of
the album that contains ‘Taurus,’ ... in [his] collection,” while denying “any
knowledge of ‘Taurus.’”
The substantial similarity question pitted two expert musicologists against each other.
Skidmore’s expert, Dr. Alexander Stewart, analyzed, one by one, five categories of
similarities. Dr. Stewart acknowledged that a chromatic scale and arpeggios are
common musical elements. But he found Taurus and Stairway to Heaven to be
similar because the descending chromatic scales in the two compositions skip the
note E and return to the tonic pitch, A, and the notes in the scale have the same
durations. Then he pointed to three two-note sequences—AB, BC, and CF#—that
appear in both compositions. In his view, the presence of successive eighth-note
rhythms in both compositions also made them similar. Finally, he testified that the
two compositions have the same “pitch collection,” explaining that certain notes
appear in the same proportions in the beginning sequence of both works.
In sum, Dr. Stewart claimed that five musical elements in combination were copied
because these elements make Taurus unique and memorable, and these elements also
appear in Stairway to Heaven. Skidmore’s closing argument reinforced these points.
Neither Dr. Stewart nor Skidmore’s counsel argued that the categories of similarities
were selected and arranged to form protectable expression in the design, pattern, or
synthesis of the copyrighted work. Nor did they make a case that a particular
selection and arrangement of musical elements were copied in Stairway to Heaven.
Led Zeppelin’s expert, Dr. Lawrence Ferrara, testified that the two compositions are
completely distinct. To highlight the marked differences in the compositions, he
presented the following exhibit, which juxtaposed the claimed portion of Taurus
against Stairway to Heaven:
Dr. Ferrara testified that the similarities claimed by Skidmore either involve
unprotectable common musical elements or are random. For example, Dr. Ferrara
explained that the similarity in the three two-note sequences is not musically
significant because in each song the sequences were preceded and followed by
different notes to form distinct melodies. He described the purported similarity
based on these note sequences as akin to arguing that “crab” and “absent” are
similar words because they both have the letter pair “ab.” He also testified that the
similarity in the “pitch collection” is not musically meaningful because it is akin to
arguing that the presence of the same letters in “senator” and “treason” renders the
words similar in meaning.

At the close of trial, the district court discussed with counsel the intended jury
instructions. The district court did not give the proposed instructions on the inverse
ratio rule and the selection and arrangement of unprotectable elements. Skidmore

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objected to the district court’s decision to omit an inverse ratio instruction but did
not do so as to the omitted selection and arrangement instruction.
The jury returned a verdict for Led Zeppelin. In special interrogatories, the jury
found that Skidmore owned the copyright to Taurus and that Led Zeppelin had
access to Taurus, but that the two songs were not substantially similar under the
extrinsic test. Following the verdict, the district court entered a judgment and an
amended judgment. Skidmore did not file any post-judgment motions challenging
the verdict, but timely appealed from the amended judgment.
Significantly, Skidmore does not make a substantial evidence claim. Instead, he
focuses on a handful of legal issues, challenging: (1) the ruling that substantial
similarity must be proven using the copyright deposit copy; (2) the ruling that sound
recordings could not be played to prove access; [and others].
A panel of our court vacated the amended judgment in part and remanded for a new
trial. We granted rehearing en banc.
ANALYSIS
I. THE 1909 COPYRIGHT ACT
The world of copyright protection for music changed dramatically during the
twentieth century and those changes dictate our analysis here. The baseline issue we
address is the scope of Wolfe’s copyright in the unpublished composition Taurus,
which was registered in 1967, between the passage of the Copyright Act of 1909
(“1909 Act”) and the sweeping copyright reform adopted in the Copyright Act of
1976 (“1976 Act”).
[The court went into some detail on the evolution of copyright’s treatment of music
and noted that although musical compositions have been part of copyright since
1831, sound recordings did not become subject to copyright protection until 1972.
The court also explained that due to the formalities requirements of the 1909
Copyright Act, the rights of the author of a musical composition were limited to the
musical composition as it was transcribed in the deposit copy. This changed
significantly under the 1976 Copyright Act—the new Act allowed composers to
submit a recording rather than sheet music as the deposit copy for a musical
composition—but those changes were not retrospective.]
[The court noted that the 1967 deposit copy of Taurus was a single page of sheet
music and it rejected Skidmore’s argument that the copyright extends beyond the
sheet music. The court did not agree that “the deposit copy is somehow archival in
nature and more of a reference point than a definitive filing.”]
The district court correctly concluded that under the 1909 Act, which controls the
copyright registration in this case, the Taurus deposit copy circumscribes the scope
of the copyright. Because the deposit copy defines the four corners of the Taurus
copyright, it was not error for the district court to decline Skidmore’s request to play
the sound recordings of the Taurus performance that contain further embellishments
or to admit the recordings on the issue of substantial similarity.
II. ELEMENTS OF COPYRIGHT INFRINGEMENT

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Proof of copyright infringement requires Skidmore to show: (1) that he owns a valid
copyright in Taurus; and (2) that Led Zeppelin copied protected aspects of the work.
Rentmeester v. Nike, Inc., 883 F.3d 1111, 1116-17 (9th Cir. 2018) (citing Feist Publ’ns, Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). Skidmore’s ownership of a valid
copyright in Taurus was not challenged on appeal.
The second prong of the infringement analysis contains two separate components:
“copying” and “unlawful appropriation.” Rentmeester, 883 F.3d at 1117. Although
these requirements are too often referred to in shorthand lingo as the need to prove
“substantial similarity,” they are distinct concepts.
Because independent creation is a complete defense to copyright infringement, a
plaintiff must prove that a defendant copied the work. Feist, 499 U.S. at 345-46. In
the absence of direct evidence of copying, which is the case here, the plaintiff “can
attempt to prove it circumstantially by showing that the defendant had access to the
plaintiff’s work and that the two works share similarities probative of copying.”
Rentmeester, 883 F.3d at 1117. This type of probative or striking similarity shows that
the similarities between the two works are due to “copying rather than ... coincidence,
independent creation, or prior common source.” Bernal v. Paradigm Talent & Literary
Agency, 788 F. Supp. 2d 1043, 1052 (C.D. Cal. 2010). A finding of such similarity may
be based on the overlap of unprotectable as well as protectable elements. Rentmeester,
883 F.3d at 1117.
On the other hand, the hallmark of “unlawful appropriation” is that the works share
substantial similarities. Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004). In our
circuit, we use a two-part test to determine whether the defendant’s work is
substantially similar to the plaintiff’s copyrighted work. Cavalier v. Random House, Inc.,
297 F.3d 815, 822 (9th Cir. 2002). The first part, the extrinsic test, compares the
objective similarities of specific expressive elements in the two works. Id. Crucially,
because only substantial similarity in protectable expression may constitute
actionable copying that results in infringement liability, “it is essential to distinguish
between the protected and unprotected material in a plaintiff’s work.” Swirsky v. Carey,
376 F.3d 841, 845 (9th Cir. 2004). The second part, the intrinsic test, “test[s] for
similarity of expression from the standpoint of the ordinary reasonable observer,
with no expert assistance.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 637 (9th Cir.
2008) (quoting Apple Comput., Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir.
1994)). Both tests must be satisfied for the works to be deemed substantially similar.
See Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1077 (9th Cir. 2006).
III. EVIDENTIARY
INFRINGEMENT

CHALLENGE—THE

COPYING

PRONG

OF

At trial, one of Skidmore’s key arguments was that Led Zeppelin members heard
either performances or recordings of Taurus before creating Stairway to Heaven, and
thus had access for purposes of copying the music. To prove that point, Skidmore
wanted to play several recordings of Taurus during the testimony of Jimmy Page,
claiming that observing Page listening to the recordings would have enabled the jury
to evaluate his demeanor with respect to access. Skidmore’s counsel explained that
the recordings could be offered to prove access, even if the court excluded them for
proving substantial similarity. The district court determined that although the sound

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recordings were relevant to prove access, Skidmore’s approach would be “too
prejudicial for the jury” because it risked confusing access with substantial similarity.
Hence the court excluded the recordings under Federal Rule of Evidence 403. The
court instead permitted Skidmore’s counsel to play the recordings for Page outside
the presence of the jury and then question him about the recordings in front of the
jury.
Skidmore’s position is a curious one and defies common sense. There would have
been very little, if any, probative value in watching Page’s reaction to listening to
Taurus at the trial in 2016 to prove access to the song half a century ago. To prevent
the jury from making an erroneous comparison for determining substantial similarity,
the court properly excluded the sound recording, which contains performance
elements that are not protected by the Taurus deposit copy. Indeed, the court’s
exclusion ruling displayed a clear understanding of the distinct components of
copying and unlawful appropriation, letting the evidence in “as far as access,” but
“not ... to compare the performance” to Stairway to Heaven.
In any event, the evidentiary question is moot. It turns out Skidmore’s examination
of Page on access proved fruitful. When Page testified, he candidly admitted to
owning “a copy of the album that contains ‘Taurus,’ ... in [his] collection,” though
still denying “any knowledge of ‘Taurus.’” The jury found that both Page and Plant
“had access to the musical composition Taurus before Stairway to Heaven was
created.” Once the jury made that finding, the remaining questions on the jury
verdict form related to substantial similarity of the works.
In answer to the question of whether “original elements of the musical composition
Taurus are extrinsically similar to Stairway to Heaven,” the jury said no. Because the
extrinsic test was not satisfied, the jury did not reach the intrinsic test. Although
these findings ended the jury’s copyright analysis, Skidmore also challenges various
trial rulings.
IV. THE JURY INSTRUCTION CHALLENGES
Three jury instructions are at issue in this appeal: (1) the failure to give an inverse
ratio rule instruction; (2) the sufficiency of the court’s originality instructions; and (3)
the failure to give a selection and arrangement instruction. We review for abuse of
discretion the district court’s formulation of the instructions and review de novo
whether the instructions accurately state the law.
A. THE INVERSE RATIO RULE
[extracted separately below]
B. THE ORIGINALITY INSTRUCTIONS
Although copyright protects only original expression, it is not difficult to meet the
famously low bar for originality. Feist, 499 U.S. at 345 (“The sine qua non of
copyright is originality”; “[t]he vast majority of works make the grade quite
easily ....”); see also 17 U.S.C. § 102(a) (“Copyright protection subsists... in original
works of authorship ....”).
Even in the face of this low threshold, copyright does require at least a modicum of
creativity and does not protect every aspect of a work; ideas, concepts, and common
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elements are excluded. See 17 U.S.C. § 102(b); Feist, 499 U.S. at 345-46. Nor does
copyright extend to “common or trite” musical elements, Smith, 84 F.3d at 1216 n.3,
or “commonplace elements that are firmly rooted in the genre’s tradition,” Williams,
895 F.3d at 1140-41 (Nguyen, J., dissenting). These building blocks belong in the
public domain and cannot be exclusively appropriated by any particular author. See
Satava v. Lowry, 323 F.3d 805, 810 (9th Cir. 2003) (“Expressions that are standard,
stock, or common to a particular subject matter or medium are not protectable
under copyright law”). Authors borrow from predecessors’ works to create new ones,
so giving exclusive rights to the first author who incorporated an idea, concept, or
common element would frustrate the purpose of the copyright law and curtail the
creation of new works. See id. at 813 (“we must be careful in copyright cases not to
cheat the public domain”); Berkic v. Crichton, 761 F.2d 1289, 1293 (9th Cir. 1985)
(“General ideas ... remain forever the common property of artistic mankind.”); 1
Nimmer § 2.05[B] (“In the field of popular songs, many, if not most, compositions
bear some similarity to prior songs.”). With these background principles in mind, we
review the district court’s instructions on originality, Nos. 16 and 20.
Jury Instruction No. 16 explained “what a copyright is, what it protects, and what it
does not protect.” Relevant to this appeal, the instruction provided that “copyright
only protects the author’s original expression in a work.” This statement comes
straight from the Supreme Court’s opinion in Feist. The instruction went on to state
that copyright “does not protect ideas, themes or common musical elements, such as
descending chromatic scales, arpeggios or short sequences of three notes.” Although
this statement is derived from Smith,48 Skidmore objects to the list of unprotectable
elements. In particular, he argues that characterizing the “descending chromatic
scales, arpeggios or short sequence of three notes” as examples of “common musical
elements” was prejudicial to him.
To put this instruction in context, it is useful to outline the essence of the “common
musical elements” or building blocks. The chromatic scale is one of two principal
scales in Western music. It consists of twelve pitches separated by a half-step. On a
piano, this means playing the white and black keys in order from left to right. Three
or more notes or pitches sounded simultaneously are called chords, and an arpeggio,
sometimes called a broken chord, is “a chord whose pitches are sounded
successively, ... rather than simultaneously.” Arpeggio, Chromatic, and Chord,
Harvard Dictionary of Music (Don Michael Randel ed., 4th ed. 2003).
To conduct a copyright infringement analysis, the factfinders ask “whether ‘the
protectible elements, standing alone, are substantially similar’” and “disregard the
non-protectible elements.” Cavalier, 297 F.3d at 822 (quoting Williams v. Crichton, 84
F.3d 581, 588 (2d Cir. 1996)); see Apple Comput., Inc. v. Microsoft Corp., 35 F.3d 1435,
1446 (9th Cir. 1994) (same). Jury Instruction No. 16 correctly listed non-protectable
musical building blocks that no individual may own, and did not, as Skidmore claims,
exclude the particular use of musical elements in an original expression.
For example, despite Skidmore’s challenge to the characterization of descending
chromatic scales as unprotectable, even his own expert musicologist, Dr. Stewart,
48 Smith v. Jackson, 84 F.3d 1213 (9th Cir. 1996) cited earlier in the court’s decision.

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agreed musical concepts like the minor chromatic line and the associated chords
have been “used in music for quite a long time” as “building blocks.” This candid
acknowledgement was echoed by Led Zeppelin’s expert. Dr. Ferrara described the
“chromatic scale, descending or ascending,” as “a musical building block. This is
something that no one can possibly own.” The commonality of descending scales
and arpeggios has been reinforced by the Copyright Office, which lists “diatonic or
chromatic scales” and “arpeggios” as common property musical material. Copyright
Office Compendium § 802.5(A) (3d ed. 2017). Emphasizing the importance of
original creation, the Copyright Office notes that “a musical work consisting entirely
of common property material would not constitute original authorship.” Id. Just as
we do not give an author “a monopoly over the note of B-flat,” descending
chromatic scales and arpeggios cannot be copyrighted by any particular composer.
Swirsky, 376 F.3d at 851.
We have never extended copyright protection to just a few notes. Instead we have
held that “a four-note sequence common in the music field” is not the copyrightable
expression in a song. Granite Music Corp. v. United Artists Corp., 532 F.2d 718, 721 (9th
Cir. 1976). In the context of a sound recording copyright, we have also concluded
that taking six seconds of the plaintiff’s four-and-a-half-minute sound recording—
spanning three notes—is de minimis, inactionable copying. See Newton, 388 F.3d at
1195-96. One of our colleagues also expressed skepticism that three notes used in a
song can be copyrightable by observing that of the “only 123 or 1,728 unique
combinations of three notes,” not many would be useful in a musical composition.
See Williams, 895 F.3d at 1144 n.6 (Nguyen, J., dissenting). The Copyright Office is
in accord, classifying a “musical phrase consisting of three notes” as de minimis and
thus not meeting the “quantum of creativity” required under Feist. Copyright Office
Compendium, § 313.4(B) (3d ed. 2017). At the same time, we have not foreclosed
the possibility that “seven notes” could constitute an original expression. Swirsky, 376
F.3d at 852. To the contrary, our sister circuit observed decades ago that “the seven
notes available do not admit of so many agreeable permutations that we need be
amazed at the re-appearance of old themes.” Arnstein v. Edward B. Marks Music Corp.,
82 F.2d 275, 277 (2d Cir. 1936).
In view of our precedent and accepted copyright principles, the district court did
not commit a reversible error by instructing the jury that a limited set of a useful
three-note sequence and other common musical elements were not protectable.

The district court also instructed the jury on copyright originality in Jury Instruction
No. 20, which states:
An original work may include or incorporate elements taken from prior works or
works from the public domain. However, any elements from prior works or the
public domain are not considered original parts and not protected by copyright.
Instead, the original part of the plaintiff’s work is limited to the part created:
1. independently by the work’s author, that is, the author did not copy it from
another work; and
2. by use of at least some minimal creativity.

Despite Skidmore’s claim that the following language has no support in the law and
was prejudicial—“any element from prior works or the public domain are not

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considered original parts and not protected by copyright”—this is black-letter law.
See 17 U.S.C. §§ 102(b), 103. Reading this sentence with the preceding one—an
“original work may include or incorporate elements taken from prior works or works
from the public domain”—we conclude that Jury Instruction No. 20 correctly
instructed the jury that original expression can be the result of borrowing from
previous works or the public domain.
Skidmore appears to want less than the law demands. In his closing and on appeal,
he argued that a work is original as long as it was independently created. Not quite.
Though not demanding, originality requires at least “minimal” or “slight”
creativity—a “modicum” of “creative spark”—in addition to independent creation.
Feist, 499 U.S. at 345-46, 362. Jury Instruction No. 20 correctly articulated both
requirements for originality, that the work be created “independently by the work’s
author,” and contain “at least some minimal creativity.” The court’s omission of the
optional, bracketed language from the Ninth Circuit Model Jury Instruction 17.14
(2017)—which reads, “In copyright law, the ‘original’ part of a work need not be
new or novel”—was not a reversible error. The reference to “minimal creativity” in
Jury Instruction No. 20 embraces this concept. Reviewing the jury instructions as a
whole, we conclude that the originality instructions were sound and were not
prejudicial to Skidmore. …
CONCLUSION
This copyright case was carefully considered by the district court and the jury.
Because the 1909 Copyright Act did not offer protection for sound recordings,
Skidmore’s one-page deposit copy defined the scope of the copyright at issue. In line
with this holding, the district court did not err in limiting the substantial similarity
analysis to the deposit copy or the scope of the testimony on access to Taurus. We
affirm the district court’s challenged jury instructions. Nor did the district court err
in its formulation of the originality instructions, or in excluding a selection and
arrangement instruction. Viewing the jury instructions as a whole, there was no error
with respect to the instructions. Finally, we affirm the district court with respect to
the remaining trial issues and its denial of attorneys’ fees and costs to
Warner/Chappell.
The trial and appeal process has been a long climb up the Stairway to Heaven. The
parties and their counsel have acquitted themselves well in presenting complicated
questions of copyright law. We affirm the judgment that Led Zeppelin’s Stairway to
Heaven did not infringe Spirit’s Taurus.
AFFIRMED.
Notes and questions
(1) It is worth listening to the comparison for yourself. See e.g.,
https://www.youtube.com/watch?v=ye7hCIWwhGE&ab_channel=RainsonZeppelin.

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The confusing role of similarity in copyright infringement
Probative similarity versus substantial similarity
As noted above, to establish a violation of the reproduction right the plaintiff must show
both that the defendant did actually copy the work and that the defendant copied too much.
The first issue is copying in fact (or causal connection) and the second is wrongful copying (or improper
appropriation or some other closely related synonym). This sounds simple and logical, but
courts frequently manage to blur the distinction these two issues. One reason why courts get
confused between copying in fact and wrongful copying is that a factual determination of
similarity can play some role in both issues in many cases.
Similarities between A and B may be evidence that there was copying in fact because all
other things being equal, the closer A is to B, the greater the chances that A was copied
from B. But a certain threshold of similarity is also required to show that if there was
copying, it was wrongful.
Confusion about the test for copyright
Figure 12 The
dual role of similarity
infringement

Copying"in"fact""
Similarity"
Wrongful"copying""
8"

Courts sometimes lose sight of the distinction between copying in fact and wrongful copying
and apply a singular threshold of substantial similarity to determine both.
In fact, courts regularly lump the entire inquiry, copying in fact and wrongful copying under the
single term “substantial similarity.”49 This not only makes it confusing to read the cases, but
it also leads courts themselves to conflate the two distinct elements.
Take for example the 2005 decision in Incredible Technologies v. Virtual Technologies, 400 F. 3d
1007 (7th Cir. 2005), where the court summarized its approach to determining copyright
infringement in three sentences:
To establish copyright infringement, a plaintiff must prove (1) ownership of a valid
copyright, and (2) copying of constituent elements of the work that are original.50

49 See, e.g., Murray Hill Publ’ns v. Twentieth Century Fox Film Corp., 361 F.3d 312, 316-21 (6th Cir. 2004);

Williams v. Crichton, 84 F.3d 581 (2d Cir. 1996).

50 The first sentence here is appropriated from the Supreme Court’s decision in Feist, a case where the fact of

copying was clearly established and the only controversy was whether names and addresses and their
organization within a telephone directory were protectable by copyright. The two-step, valid copyright plus
copying of original elements test, made some sense in that context, but it is deficient as a general statement.
The expression “copying of constituent elements of the work that are original” hints at a distinction between
copying in fact and wrongful copying, but it is hardly a clear statement.

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Copying may be inferred where the defendant had access to the copyrighted work
and the accused work is substantially similar to the copyrighted work.

The court’s second sentence addresses copying in fact, noting specifically that copying in fact
can be logically inferred from a combination of access and similarity. The Seventh Circuit, at
least in this case, does not clearly distinguish between the similarities that support the
inference of copying and those similarities that establish copying to an unlawful extent.51 The
danger in using the same term in relation to copying in fact and wrongful copying becomes
apparent when we consider the court’s final sentence.
The test for substantial similarity may itself be expressed in two parts: whether the
defendant copied from the plaintiff’s work and whether the copying, if proven, went
so far as to constitute an improper appropriation.
Access + Substan-al similarity = Copying
Substan-al similarity = Copying + Improper Appropria-on

This does not make much sense. If copying may be inferred from a combination of access
and substantial similarity, how can copying also be constitutive of substantial similarity? By
employing the term ‘substantial similarity’ in the context of copying in fact and wrongful
copying, the court has managed to suggest that substantial similarity both proves and is
proved by copying in fact. Taken at face value the court is also saying that substantial
similarity that amounts to improper appropriation also proves copying in fact. This may be
true as a matter of evidence, or it might not be. It depends, among other things, on whether
there are other good explanations for the fact that two works share features in common.

There is no simple relationship between probative and substantial similarity
The following examples will demonstrate that there is no simple relationship between the
level of similarity that supports an inference of copying in fact that which sustains a
conclusion of wrongful copying. The two kinds of similarity are different and they deserve
different names: the most logical nomenclature differentiates between probative similarity that
supports an inference of copying in fact and substantial similarity which addresses wrongful
copying.
Example 1:
Consider two photos with more than a passing similarity as depicted below.52 Photographs A
and B are similar in subject, composition, lighting, and almost any other dimension one cares
to think about. The only real difference between them appears to be in the photographer’s
51 Compare

to the Second Circuit which requires proof of improper appropriation and actual copying as
distinct elements. See e.g. Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir.2003); Laureyssens,964
F.2d at 140.
52 Oliver Smith, February 2, 2015, THE TELEGRAPH, “How an incredible coincidence sparked a Facebook plagiarism row”

http://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.
Photo B was taken by Marisol Ortiz Elfeldt, a Chilean reporter and amateur photographer.

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choice of color filters and the level of contrast, both of which could be changed in postproduction.
Figure 13: Photographs A and B

Suppose that Photo ‘A’ was taken in 2006 and made available on the photographer’s website.
In 2009, photo ‘B’ is entered in a newspaper photography competition and now the author
of A alleges that B infringed her copyright. There is no doubt that if B had been copied from
A and simply modified in some subtle way, B would be an infringing copy of A. But as it
turns out two women standing beside one another on a cruise to the San Rafael Glacier in
the Northern Patagonian Ice Field took both photos independently at almost the exact same
time. Here we have similarity that is enough to reach a threshold of wrongful copying, but
not enough to prove copying in fact.
Given the subject matter, the possibility that both photos were taken at the same place and
time seems only too apparent.53
Example 2
But it is easy to imagine the opposite. Suppose A is well known and widely appreciated work
of literature. Author B, takes the essential story of A, changes the setting in both time and
culture, adopts a different narrative style and perspective to obtain a different point of view
but retains the same essential conflict. To put a little more distance between the works, B
changes names and combines characters. B also extends the timeline of the original story, so
that her account captures events she imagines might have taken place before and after the
sequence of events in A. From this process of deliberate mutation, B may produce a work
that is thoroughly original but still discernably influenced by A. Here we have a causal
connection between the works and we have similarity that is sufficient to establish copying
in fact, but this is still insufficient to establish wrongful copying.
***

53 See, e.g., Ty Inc. v. GMA Accessories, Inc., 132 F.3d 1167, 1170 (7th Cir. 1997). “[T]wo works may be

strikingly similar—may in fact be identical—not because one is copied from the other but because both are
copies of the same thing in the public domain. In such a case—imagine two people photographing Niagara
Falls from the same place at the same time of the day and year and in identical weather—there is no inference
of access to anything but the public domain, and, equally, no inference of copying from a copyrighted work.”

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In application, the similarities that establish wrongful copying are often the same as those
that tend to prove that there was copying in the first place, but the kinds of similarity are
fundamentally different. Substantial similarity and probative similarity intersect, but they are
not the same, nor is one necessarily a subset of the other.
Probative similarity is any similarity at all between the works that makes it more likely that
the accused work was copied from the plaintiff’s original work. Similarities in subject matter,
genre, perspective, general idea, and concept are unlikely to meet this test and they should
also be filtered out from any assessment of substantial similarity for reasons to be explained
shortly. However, probative similarity can be established by identical features that are
inconsequential and unlikely to be noted by the ordinary observer but for which copying
seems the more likely explanation than sheer coincidence. For example, the fact that two
works contain identical deliberate mistakes is great evidence of copying in fact, but it will
usually mean nothing in terms of wrongful copying. If two maps feature the same
nonexistent town, it stands to reason that either one was copied from the other or both were
copied from the same source. The duplication of a single errant entry would not cross the
threshold of improper appropriation, but it can be strong evidence of copying in fact.
Nonetheless, there is also a significant overlap between probative similarity and substantial
similarity—if two works are sufficiently similar in terms of protectable expression that the
ordinary observer would regard them as the same in their aesthetic appeal, that one
conclusion may establish that one was indeed copied from the other and that such copying
went too far.

The Demise of the Inverse Ratio Rule
In Williams v. Gaye, 885 F. 3d 1150 (9th Cir. 2018) was asked to determine, in essence,
whether a jury finding that 2013 hit song “Blurred Lines” had impermissibly copied Marvin
Gaye’s 1977 hit song “Got To Give It Up” should be overturned. The principle authors of
Blurred Lines, Pharrell Williams and Robin Thicke, had taken inspiration from “Got To
Give It Up”: the works were similar in style and perhaps in structure, but there was also
substantial evidence that they were different in melody, harmony, and rhythm. The majority
in Williams v. Gaye said the following in its original opinion 885 F.3d 1150 (9th Cir. 2018):
A copyright plaintiff may prove copying with circumstantial, rather than direct,
evidence. Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000). “Absent
direct evidence of copying, proof of infringement involves fact-based showings that
the defendant had access to the plaintiff’s work and that the two works are
substantially similar.” Id.
Access and substantial similarity are inextricably linked. We adhere to the “inverse
ratio rule,” which operates like a sliding scale: The greater the showing of access, the
lesser the showing of substantial similarity is required.
Williams and Thicke readily admitted at trial that they had a high degree of access to
“Got To Give It Up.” The Gayes’ burden of proof of substantial similarity is
lowered accordingly.

In a footnote, the majority denied that it was redefining the test of substantial similarity or
negating that requirement. It acknowledged the dissent’s criticism of “the inverse ratio rule”
but insisted that “the rule is binding precedent under our circuit law, and we are bound to

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apply it.” However, in an amended opinion, the majority deleted all references to the rule.
See, Williams v. Gaye, 895 F.3d 1106 (9th Cir. 2018).
The “inverse ratio rule” is obviously daft. There is no doubt that access and probative
similarity can be related: if it is hard to see how the defendant could have copied the
plaintiff’s work, it will usually take a very high level of similarity to convince a reasonable
person that it was indeed copied. Most courts refer to this as “striking similarity”. But the
reciprocal proposition that if access is well proved some diluted level of similarity can
establish either copying in fact or wrongful copying is wrong. Lowering the standard of
proof via the “inverse ratio” rule is especially dangerous and nonsensical in an era when
almost all published content is easily accessible via the Internet.
But the problems with the “inverse ratio” rule run deeper still. As Judge Nguyen noted in
her dissent in Gaye v. Williams:
Worse still, the majority invokes the oft-criticized “inverse ratio” rule to suggest that
the Gayes faced a fairly low bar in showing substantial similarity just because
Williams and Thicke conceded access to “Got to Give It Up.” The issue, however,
isn’t whether Williams and Thicke copied “Got to Give It Up” — there’s plenty of
evidence they were attempting to evoke Marvin Gaye’s style. Rather, the issue is
whether they took too much.

As if the “inverse ratio” rule was not bad enough, using it reduce the plaintiff’s burden to
establish substantial similarity in terms of wrongful copying seems totally bizarre. As the
Seventh Circuit explained in Peters v. West, 692 F.3d 629, 635 (7th Cir. 2012):
Once a plaintiff establishes that a defendant could have copied her work, she must
separately prove—regardless of how good or restricted the opportunity was—that
the allegedly infringing work is indeed a copy of her original.

Fortunately, we may finally have seen the end of the “inverse ratio” rule.
Skidmore v. Zeppelin 952 F.3d 1051 (9th Cir. 2020) (En Banc)
[This case was extracted above, the current extract deals with the “inverse ratio” rule]

McKEOWN, Circuit Judge:
… THE INVERSE RATIO RULE
Copyright infringement cases often boil down to the crucial question of substantial
similarity. We have stated that “substantial similarity is inextricably linked to the issue
of access,” and have adhered to “what is known as the ‘inverse ratio rule,’” which
requires “a lower standard of proof of substantial similarity when a high degree of
access is shown.” Three Boys Music, 212 F.3d at 485 (quoting Smith v. Jackson, 84 F.3d
1213, 1218 (9th Cir. 1996)). That is, “the stronger the evidence of access, the less
compelling the similarities between the two works need be in order to give rise to an
inference of copying.” Rentmeester, 883 F.3d at 1124.
Skidmore proposed an inverse ratio rule instruction, but the court chose not to give
the instruction. The court reaffirmed this decision when Skidmore raised the
question again after the close of testimony: “We’re not going to give that instruction.”
Because the inverse ratio rule, which is not part of the copyright statute, defies logic,
and creates uncertainty for the courts and the parties, we take this opportunity to

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abrogate the rule in the Ninth Circuit and overrule our prior cases to the contrary.
See e.g., Three Boys Music, 212 F.3d at 485-86; Shaw v. Lindheim, 919 F.2d 1353, 136162 (9th Cir. 1990).
The circuits are split over the inverse ratio rule, but the majority of those that have
considered the rule declined to adopt it. The Second, Fifth, Seventh, and Eleventh
Circuits have rejected the rule. Peters v. West, 692 F.3d 629, 634-35 (7th Cir. 2012)
(noting that the circuit has never endorsed the idea that “a ‘high degree of access’
justifies a ‘lower standard of proof’ for similarity”); Positive Black Talk, Inc. v. Cash
Money Records, Inc., 394 F.3d 357, 371 (5th Cir. 2004) (acknowledging the rule but
explicitly not adopting it); Beal v. Paramount Pictures Corp., 20 F.3d 454, 460 (11th Cir.
1994); Arc Music Corp. v. Lee, 296 F.2d 186, 187-88 (2d Cir. 1961). Only our circuit
and the Sixth Circuit have endorsed it. See Stromback v. New Line Cinema, 384 F.3d
283, 293 (6th Cir. 2004); see also Peters, 692 F.3d at 634 (similarly describing the split).
But even within our circuit, our embrace and application of the rule have had a
checkered application. [The court discussed Sid & Marty Krofft Television Prods., Inc. v.
McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977) and Aliotti v. R. Dakin & Co., 831
F.2d 898, 902 (9th Cir. 1987), embracing and rejecting the inverse ratio rule,
respectively.] Revitalizing Krofft, we several times affirmed that the rule guided our
analysis of similarity. See, e.g., Three Boys Music, 212 F.3d at 485-86; Smith, 84 F.3d at
1218 & n.5; Shaw, 919 F.2d at 1361-62. Even so, we did not explain how to apply the
rule. See Aronoff, supra, at 137 (applying the rule in the context of the unlawful
appropriation analysis, “the court did not articulate how [access] is to be considered,
or the weight it is to be given”).
The lack of clear guidance is likely due in no small part to our use of the term
“substantial similarity,” both in the context of copying and unlawful appropriation,
muddying the waters as to what part of the infringement analysis the rule applies. See
3 William F. Patry, Patry on Copyright (“Patry”) § 9.91 (2017) (“The inverse ratio
theory confuses fundamental principles of infringement analysis: access is relevant
only in establishing the act of copying, not in establishing the degree thereof. Once
copying is established, access is irrelevant and the inquiry shifts to the final stage of
the infringement analysis, material appropriation.”). In Rentmeester, we pointed out the
term’s dual use and ultimately stated that the inverse ratio rule “assists only in
proving copying, not in proving unlawful appropriation.” 883 F.3d at 1124.
Capping off this period of expansion, we even pushed past the rule’s outer limits set
forth in Krofft, i.e., that “no amount of proof of access will suffice to show copying if
there are no similarities.” 562 F.2d at 1172. In Metcalf v. Bochco, though we did not
explicitly name the rule, we held that because access was not disputed, we “could
easily infer that the many [generic] similarities between [the works] were the result of
copying, not mere coincidence.” 294 F.3d 1069, 1074-75 (9th Cir. 2002).
Confusion followed in Metcalf’s wake. In one case, we tried to cabin Metcalf to cases
where there was a clear “concession of access.” Rice v. Fox Broad. Co., 330 F.3d 1170,
1178-79 (9th Cir. 2003). In other cases, where access was assumed (though not
conceded), we “side-stepped” Metcalf and held that the similarities between works
were insufficient to support a conclusion of copying. Aronoff, supra at 139; see e.g.,
Funky Films, 462 F.3d at 1081 n.4; Benay v. Warner Bros. Entm’t, Inc., 607 F.3d 620, 625

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(9th Cir. 2010). The result?—confusion about when to apply the rule and the amount
of access and similarity needed to invoke it.
Our jurisprudence in recent years brought additional uncertainty. In 2000, we
circumscribed the rule by explaining that it is not a two-way street: while the rule
“requires a lesser showing of substantial similarity if there is a strong showing of
access,” it does not mean that “a weak showing of access requires a stronger showing
of substantial similarity.” Three Boys Music, 212 F.3d at 486. In 2018, it seems, the rule
goes both ways: it also provides that the “more compelling the similarities supporting
an inference of copying, the less compelling the evidence of access need be.”
Rentmeester, 883 F.3d at 1124. In the face of tangled precedent, the Rentmeester panel
tried to carefully thread the needle, but ended up adding another indecipherable
stitch.
Just two years ago, we again sowed doubt whether the rule ought to apply at all. In
Williams v. Gaye, which dealt with the song Blurred Lines, the majority initially
defended use of the rule against the dissent’s criticism because the rule is “binding
precedent” that “we are bound to apply.” 885 F.3d 1150, 1163 n.6 (9th Cir. 2018).
But in an amended opinion, the court deleted all references to the rule. Williams v.
Gaye, 895 F.3d 1106 (9th Cir. 2018).
As we struggled with the inverse ratio rule over the years, the Second Circuit rejected
it as early as 1961, describing the idea as a “superficially attractive apophthegm which
upon examination confuses more than it clarifies.” Arc Music, 296 F.2d at 187. The
court reasoned that “access will not supply [similarity’s] lack, and an undue stress
upon that one feature can only confuse and even conceal this basic requirement.” Id.
at 187-88. Importantly, the Second Circuit noted that there is “no such principle” in
“the federal law of copyright.” Id. at 187.
The Second Circuit also identified the problematic implications of this principle
where access is very high and similarity very low: “[t]he logical outcome of the
claimed principle is obviously that proof of actual access will render a showing of
similarities entirely unnecessary.” Id. However, “it does not follow that ‘more’ access
increases the likelihood of copying.” Aronoff, supra, at 126. Yet that is what the rule
compels. Complete access without any similarity should never result in infringement
liability because there is no infringement. Even so, the rule suggests that liability may
be imposed in such a case. “There is,” however, “simply no logic in presupposing
that the mid-points of [the rule] give rise to a ‘ratio’ of access to similarity
constituting proof of” infringement. Id. at 141. Indeed, even “[w]hen the inverse
ratio rule is applied, we still don’t know how much similarity is required.” Patry §
9.91.
The flaws in the rule can be seen in the inconsistent ways in which we have applied
the rule within our circuit, the logic of the circuits that have rejected the rule, and
analysis by academics and commentators. See id. (“There is nothing positive that can
be said about a rule that lacks any clarity at all: trying to get a jury to both understand
the rule and apply it properly is totally impossible.”).
As a practical matter, the concept of “access” is increasingly diluted in our digitally
interconnected world. Access is often proved by the wide dissemination of the
copyrighted work. See Loomis v. Cornish, 836 F.3d 991, 995 (9th Cir. 2016). Given the
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ubiquity of ways to access media online, from YouTube to subscription services like
Netflix and Spotify, access may be established by a trivial showing that the work is
available on demand.
To the extent “access” still has meaning, the inverse ratio rule unfairly advantages
those whose work is most accessible by lowering the standard of proof for similarity.
Thus the rule benefits those with highly popular works, like The Office, which are
also highly accessible. But nothing in copyright law suggests that a work deserves
stronger legal protection simply because it is more popular or owned by betterfunded rights holders.
Finally, the inverse ratio rule improperly dictates how the jury should reach its
decision. The burden of proof in a civil case is preponderance of the evidence. Yet
this judge-made rule could fittingly be called the “inverse burden rule.”
Although we are cautious in overruling precedent—as we should be—the
constellation of problems and inconsistencies in the application of the inverse ratio
rule prompts us to abrogate the rule. Access does not obviate the requirement that
the plaintiff must demonstrate that the defendant actually copied the work. By
rejecting the inverse ratio rule, we are not suggesting that access cannot serve as
circumstantial evidence of actual copying in all cases; access, however, in no way can
prove substantial similarity. We join the majority of our sister circuits that have
considered the inverse ratio rule and have correctly chosen to excise it from
copyright analysis. In light of this holding, the district court did not err in failing to
instruct the jury on the inverse ratio rule.
…
CONCLUSION
… We take the opportunity to reject the inverse ratio rule, under which we have
permitted a lower standard of proof of substantial similarity where there is a high
degree of access. This formulation is at odds with the copyright statute and we
overrule our cases to the contrary. Thus the district court did not err in declining to
give an inverse ratio instruction. …

The ordinary observer test(s)
As noted above, probative similarity is anything at all about two works that makes it more
likely that one was copied from the other. Probative similarity includes, in some
circumstances, that the ordinary observer would regard the works as the same in their
aesthetic appeal. However, although meeting the ordinary observer standard can be part of
establishing copying in fact, it is neither necessary nor sufficient for that purpose. In contrast,
some reference to the assessment of some kind of observer is indispensable in establishing
substantial similarity required for wrongful copying. The default characteristic of this
observer is that they are the “ordinary observer.”
Courts have expressly invoked the “ordinary observer” since at least the 1930s and possibly
before. In Harold Lloyd Corp. v. Witwer, 65 F.2d 1 (9th Cir. 1933), for example, the Ninth
Circuit emphasized that the substantial similarity determination is to be made from the
vantage point of an “ordinary observer” (at 19):
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A copy is that which ordinary observation would cause to be recognized as having been
taken from or the reproduction of another.

In Peter Pan Fabrics v. Martin Weiner, 274 F. 2d 487 (2d Cir. 1960), a case relating to the
infringement of copyright in a fabric design, Judge Learned Hand famously phrased the
ordinary observer test thus (at 489):
[T]he patterns in which these figures are distributed to make up the design as a
whole are not identical. However, the ordinary observer, unless he set out to detect
the disparities, would be disposed to overlook them, and regard their aesthetic
appeal as the same. That is enough …

In Atari, Inc. v. North American, Etc., 672 F. 2d 607 (7th Cir. 1982), the Seventh Circuit put the
ordinary observer test in these terms (at 614):
Specifically, the test is whether the accused work is so similar to the plaintiff’s work
that an ordinary reasonable person would conclude that the defendant unlawfully
appropriated the plaintiff’s protectible expression by taking material of substance
and value.

Are these tests the same?

Problems with the ordinary observer test
(1) The ordinary observer test is applied by conducting a side-by-side comparison of the two
works, but that does not always make sense. Consider a novel written in English and an
alleged copy written in French. These works don’t lend themselves to side-by-side
comparison and statistically, a person who is fluent in both English and French is
extraordinary, not ordinary. A simple side-by-side comparison also doesn’t make sense if
there are important similarities that relate to unprotectable elements within the works. Thus
even when courts determine substantial similarity with respect to the ordinary observer, they
usually supercharge that hypothetical observer with enormous powers of discernment. Some
courts do this through a process of abstraction, filtration, and comparison—the AFC
approach—others do it by invoking the “more discerning ordinary observer”. These are
discussed below.
(2) Combining the ordinary observer test for copyright infringement with the summary
judgment standard leads to some interesting mental gymnastics. For a district court judge to
grant the defendant’s motion for summary judgment on the basis that there was no wrongful
copying, the court must conclude that no reasonable jury would conclude that the ordinary
observer would think that the works were sufficiently alike to warrant a finding of
infringement. Notice that this A speculating about what B would conclude about what C
would think (where A is the judge, B is the hypothetical reasonable jury and C is the
hypothetical ordinary observer).
Nonetheless, summary judgment on this basis is actually quite common, and for good reason.
Courts are frequently presented with copyright infringement claims that are entirely devoid
of merit once superficial similarities based on non-protectable elements are set to one side.
(3) The ordinary observer standard has led to undue rigidity on the use of experts in
copyright litigation. Using experts to determine what the reaction of the ordinary observer
would be strikes many courts as a non sequitur. Most famously, in Arnstein v. Porter, 154 F. 2d
464 (1946) (at 468), the Second Circuit said that analytical dissection of the two works in

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issue was relevant to establish copying in fact and thus “the testimony of experts may be
received to aid the trier of the facts. But, on the issue of wrongful copying—the court used the
terms “illicit copying” and “unlawful appropriation”— the court said:
On that issue [wrongful copying] the test is the response of the ordinary lay hearer;
accordingly, on that issue, ‘dissection’ and expert testimony are irrelevant.

This seems wrong. The simple fact is that there is nothing ordinary about the ordinary
observer. The ordinary observer is not a person to be found and interviewed by the court; it
is a legal construct, a lens to be applied when comparing A to B to determine substantial
similarity. There are very few cases where the finder of fact would not be assisted by some
expert instruction as to what to look for and what to listen for in the comparison of A to B.
Moreover, in cases where the subject matter is complex, technical, or simply foreign to the
average juror, expert dissection and analysis will the only relevant criteria.
As the Northern District of Illinois explained in Francescatti v. Germanotta, No. 11 CV 5270,
2014 WL 2767231, at *8 (N.D. Ill. June 17, 2014):
Although dissection and expert testimony is not favored, the judicially created
ordinary observer test should not deprive authors of this significant statutory grant
merely because the technical requirements of a different medium dictate certain
differences in expression. Without deciding the question, we note that in some cases
it may be important to educate the trier of fact as to such considerations in order to
preserve the author’s rights under the Copyright Act.

Why are courts so hostile to the use of experts in assisting with the analysis of wrongful
copying? Partly this is a mistrust born of experience. On the plaintiff’s side, experts will note
every conceivable similarity and explain why those similarities are what is really important
about the works and why the objective dissimilarities are of no consequence. The plaintiff’s
expert musicologists in highly publicized “Blurred Lines” case, Williams v. Gaye, 885 F. 3d
1150 (2018), are arguably a paradigm example of this problem. Defendant’s experts will
likely mirror all the same problems.

“Total concept and feel”
Ever since the Ninth Circuit’s decision in Roth Greeting Cards v. United Card Co. 429 F.2d 1106,
1110 (9th Cir. 1970), courts have taken to referring to something called the “total concept
and feel” test for substantial similarity. Roth Greeting Cards is a poorly reasoned case resulting
in a dubious outcome, but the terminology of “total concept and feel” has proved
surprisingly enduring.54 No doubt, courts and fact-finders should consider the overall gestalt
similarity of the copyrighted and accused works, but asking them to focus on total concept
54 As Pamela Samuelson notes this is even more surprising when you consider the following.

While the Roth majority certainly used the total concept phrase, it did not announce this as a test that
should 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
was “whether the work is recognizable by an ordinary observer as having been taken from the
copyrighted source.” It is hence somewhat bizarre that the total concept test has become so widely
used in copyright cases.

Pamela Samuelson, A Fresh Look at Tests for Nonliteral Copyright Infringement, 107 Northwestern University Law
Review 1821, 1833 (2013).

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and feel necessarily steers them away from the real task at hand, identifying overlaps in
protectable original expression.
Invoking the phrase “total concept and feel” doesn’t just direct the reader’s attention to the
totality of the work, it stresses those aspects of the work that are unprotectable as a matter
of black letter law. As Pamela Samuelson summarizes:
Indeed, it practically directs the trier of fact to consider conceptual similarities as a
basis for infringement, even though concepts have never been protectable by U.S.
copyright law. Indeed, § 102(b) of U.S. copyright law states that “[i]n no case does
copyright protection . . . extend to any . . . concept.” Strangely enough, no court
applying the total concept test has noticed that this formulation might run afoul of
the strictures of § 102(b).55

In Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003),
the Second Circuit ventured upon an extended discussion of the use of the total concept and
feel test.
Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d
Cir. 2003)
This case is about the design of rugs. The images below are not part of the judgment, but they are useful for understanding
the 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
of its Floral Heriz Rug.

Figure 14 The Battilossi Rug

55 Id.

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Figure 15 Tufenkian Floral Heriz Rug

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Figure 16 The Bromley 514 Rug

Circuit Judge Calabresi
This copyright infringement case involves two textile designs, each of which
combines, with modifications, the “primary border” and the “half field” of two
unrelated public domain carpets, one a classical Indian Agra and the other a Persian
antique. Viewed uncritically, the two designs at issue are substantially similar. For the
defendant’s rug to infringe upon the plaintiff’s design, however, the defendant’s
composition must be substantially similar to that which is original in the plaintiff’s
expression. The district court found no infringement, concluding as a matter of law
that whatever substantial similarity there may be emerges from unprotected public
domain materials in the allegedly infringed design. We disagree.
BACKGROUND
In March 1995, James Tufenkian, a designer and manufacturer of Tibetan style
carpets, filed a copyright registration for the “Floral Heriz” (“Heriz”) carpet design
that is the subject of this lawsuit. He had composed the Heriz two years earlier by
scanning into his computer two public domain images, one of the “Battilossi” carpet
(a Persian antique), the other of the “Blau” carpet (an Indian Agra, designed by
Dorris Blau). The field of the Battilossi rug is a dense, bilateral symmetrical design of
stylized branching-vine, leaf and flower motifs. Tufenkian selected roughly the
central third of the upper half of this Battilossi field. From this dense pattern, he
culled out a number of motifs. He then stretched the field slightly in one direction
and used the thus modified design as the entire field of the Heriz. In the process,
Tufenkian created an asymmetrical pattern, for he used only an off-center portion of
what had been a symmetrical design. From the Blau, he took the principal border,

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which, with modifications, became the major border of the Heriz. Finally, he added
two minor borders of his own creation. One of these consists of stick-figure animals,
the other of even simpler, castlelike figures.
Tufenkian describes his principal creative contributions as: (1) combining two
unrelated rug styles; (2) designing and adding the minor borders; (3) selectively
removing entire design motifs from the Battilossi so as to create a more ‘open’
aesthetic from those remaining; (4) converting the symmetrical Battilossi image into a
design “with no central focus” (by copying from only half of the Battilossi field); and
(5) elongating the Battilossi pattern.
Sometime in 1995, Appellee Bashian retained Appellee Nichols-Marcy, who had
worked for Tufenkian, to oversee the designing of the “Bromley 514” (“Bromley”).
Nichols-Marcy and his Nepalese contractors began work on the Bromley in early
1996, two years after the Heriz was first marketed. These designers were familiar
with the Heriz, and the appellees do not challenge the district court’s determination
that some copying of the Heriz actually occurred.
Nonetheless, the appellees contend that the Heriz’s extensive use of designs taken
from the public domain combined with the Bromley’s distinctiveness precludes a
finding of infringement. In the latter regard, they point to the following as instances
of their own creative work that distinguishes the Bromley from the Heriz: (1)
addition of a second “beetle” (or “flower”) element to the field, placed in a roughly
symmetrical position to an existing “beetle” shape so as to give the Bromley a more
balanced feel than the Heriz; (2) retention of a “leaf shape” from the Battilossi that
Tufenkian did not include in the Heriz; (3) removal of a vine-like line segment from
the Battilossi that Tufenkian had retained; and (4) greater modification of the Blau
border design, with “different shapes at different angles.”
In November 1999, Tufenkian initiated this lawsuit, claiming copyright infringement
and seeking various injunctive and monetary remedies. Both parties moved for
summary judgment on the issue of copyright infringement. The district court
concluded that “Tufenkian infused [the Heriz] with sufficient originality to support
copyright protection,”; that Bashian actually copied the Heriz; but that the Bromley
514 was not substantially similar to protected expression in the Heriz. The court
therefore awarded summary judgment to Bashian.
The district court evaluated infringement by comparing the two designs’ “total
concept and feel” (or “overall aesthetic”). In so doing the court applied what we
have called the “more discerning observer” test, Boisson v. Banian, Ltd., 273 F.3d 262,
271 (2d Cir.2001), a test intended to emphasize that substantial similarity must exist
between the defendant’s allegedly infringing design and the protectible elements in
the plaintiff’s design. Noting that “the prominent public domain elements
incorporated into Floral Heriz ... play a significant role in the overall appearance of
plaintiff’s work,” the district court “factor[ed] out” those elements from the
substantial similarity comparison, explaining that to do otherwise “would grant
plaintiff protection to public domain elements that the public has a right to copy.”
Nonetheless, the court specified that the Heriz contained various ‘protectible
elements’ including: “[the] removal of certain elements to create open space, the
asymmetrical pattern, the elongation of the design adapted from the body of the

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Battilossi rug, the creation of the castle and stick figure animal borders, and the
ordering and placement of all of these elements into a harmonious whole....” Id. The
district court further stated that it would also factor out “those elements which are
original to defendants,” among these the fact that “defendants incorporated flower
elements in the center field not found in plaintiff’s design.”
Having identified the plaintiff’s and the defendants’ original contributions, the
district court concluded that a finding of lack of infringement was “ineluctable”: “the
Bromley 514’s overall aesthetic is due to the public domain sources and to
defendants’ own efforts,” rather than to any copying of protectible aspects of the
Heriz. To illustrate the lack of substantial similarity, the district court recited a
number of differences between the rugs, including the fact that “defendants’ design
is symmetrical, while plaintiff’s is asymmetrical, a difference which creates substantial
changes in the total concept and feel of the two works, given that both are
substantial copies of the public domain Battilossi.” While the district court
“appreciate[d] that defendants did copy, in modified form, a few elements original to
plaintiff,” the court concluded that “those elements (especially in their modified
form) do not change the different total concept and feel of the two works.”
DISCUSSION
I.
A. Standard of Review
We review a summary judgment of non-infringement de novo. Our familiar task is to
determine whether a genuine issue as to any material fact exists and whether the
moving party was properly entitled to judgment as a matter of law. In making this
determination, we view all inferences in the light most favorable to the non-moving
party.
B. The Test for Copyright Infringement
“Copyright infringement is established when the owner of a valid copyright
demonstrates unauthorized copying.” Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc.,
150 F.3d 132, 137-38 (2d Cir. 1998) (internal quotation marks omitted). To
demonstrate unauthorized copying, the plaintiff must first “show that his work was
actually copied”; second, he must establish “substantial similarity” or that “the
copying amounts to an improper or unlawful appropriation,” i.e., (i) that it was
protected expression in the earlier work that was copied and (ii) that the amount that
was copied is “more than de minimis.” Id. at 137-38. The defendant can defeat a
prima facie showing of infringement by proving that the doctrine of “fair use”
permits her employment of the plaintiff’s design. Id. at 141-46. In the appeal before
us, however, the defendants do not mount a fair use defense, nor do they contest the
district court’s findings of ownership and actual copying. Substantial similarity is
therefore the only issue we face. But substantial similarity, we emphasize again, must
be to that which is protected in the plaintiff’s work.
C. The Scope of Copyright Protection: Original Expression
“Originality is ‘the sine qua non of copyright,’” Boisson, 273 F.3d at 268 (quoting Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991)). It is universally true,
however, that even works which express enough originality to be protected also
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contain material that is not original, and hence that may be freely used by other
designers. This is not simply an artifact of some rather lenient caselaw on the
originality requirement. The principle is more fundamental: all creative works draw
on the common wellspring that is the public domain.
In this pool are not only elemental “raw materials,” like colors, letters, descriptive
facts, and the catalogue of standard geometric forms, but also earlier works of art
that, due to the passage of time or for other reasons, are no longer copyright
protected. Thus the public domain includes, for example, both the generic shape of
the letter “L” and all of the elaborately more specific “L’s” from the hundreds of
years of font designs that have fallen into the public domain. See Boisson, 273 F.3d at
269-71 (considering copyright infringement in “alphabet quilts,” and treating the
letters of the alphabet and the spectrum of colors as belonging to the public
domain); cf. Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 747 (2d Cir.1998)
(refusing to grant copyright protection to “street locations, landmass, bodies of water
and landmarks depicted in a map”); Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759,
763-64 (2d Cir.1991) (holding that the plaintiff’s fabric-design copyright did not
encompass a background pattern copied without modification from a public domain
textile); Williams, 84 F.3d at 587 (examining substantial similarity between literary
works and excluding “scènes à faire,” i.e., “sequences of events that ‘necessarily result
from the choice of a setting or situation,’” from the scope of the plaintiff’s
protectible expression).
D. Conundrums of Infringement by Inexact Copies
It has long been settled that “no plagiarist can excuse the wrong by showing how
much of his work he did not pirate,” Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49,
56 (2d Cir.1936) (Hand, J.), and this aphorism applies equally to exact reproduction
of visual works. As a result, a would-be appropriator who wishes to test the limits of
copyright law gains nothing from “adding on” to what she has precisely reproduced.
But she might prevail insofar as her work transforms the copied expression into a
design that in some respects resembles the original, yet does not actually excerpt
(“cut and paste”) a more-than-de-minimis protected portion of the original. Such
designs may be termed “inexact copies,” in recognition of the fact that they alter the
prior image yet mimic its structure in some fashion.5 Jurists have long been vexed by
the task of precisely identifying that which separates inexact copies that infringe from
those that do not.6
Footnote 5: Our intention in using the term “inexact copies” is to describe a manner of visual copying
analogous to the textual copying that is described in Nimmer [on Copyright] as “non-literal.” We
recognize, of course, that these designs may feature much that is new, in addition to whatever may be
said to be original in the “inexact copy.” Terming such a design an “inexact copy” is simply a means
of drawing attention to the portion of the design that is relevant to a charge of infringement.
Footnote 6: Cf. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930) (Hand, J.) (“Upon any
work ... a great number of patterns of increasing generality will fit equally well, as more and more of
the incident is left out. The last may perhaps be no more than the most general statement of what the
[work] is about ... but there is a point in the series of abstractions where they are no longer
protected....”).

In recent years we have often found it productive to assess claims of inexact-copy
infringement by comparing the contested design’s “total concept and overall feel”

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with that of the allegedly infringed work. Because this was the method used by the
district court, and because the appellant sharply disputes the district court’s “total
concept and feel” analysis, a few remarks on the history and application of this test
are in order.
Our circuit first employed the “total feel” nomenclature in a case involving children’s
books. See Reyher v. Children’s Television Workshop, 533 F.2d 87, 91-92 (2d Cir.1976).
Reyher characterized this Court’s previous treatment of inexact copying of books,
movies, and plays as concerned with the “the ‘pattern’ of the work, i.e., the sequence
of events and the development of the interplay of characters.” Id. at 91. But the
children’s books at issue in Reyher were “necessarily less complex” than the works
we had previously submitted to “pattern” analysis, and, moreover, the sequence of
events in the plaintiff’s book consisted of little more than “scènes à faire” attendant to
an underlying idea that was shared with the defendant’s work. Id. at 91-92. In all
respects other than the sequence of events, the works were very different:
Reyher’s book presents a picture of family life in the Russian Ukraine and develops
the characters of the little girl and her mother. The [defendant’s] story is barren of
meaningful setting or character development in its attempt to present its theme. The
two stories are not similar in mood, details or characterization.

Id. at 92. Summarizing, we said the works differed in their “total feel.” Id.
In Reyher, “total feel” functioned as a shorthand way of explaining that — while a
children’s story whose sequence of events is not protected might nonetheless be
infringed by other forms of inexact copying — no such copying was present in the
allegedly infringing work. See also Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498,
500-01 (2d Cir.1982) (explaining the divergent “total concept and feel” of two toy
snowmen with reference to a host of specific differences in the designs).
Some commentators have worried that the “total concept and feel” standard may
“invite an abdication of analysis,” because “feel” can seem a “wholly amorphous
referent.” Likewise, one may wonder whether a copyright doctrine whose aspiration
is to protect a work’s “concept” could end up erroneously protecting “ideas.” But
our caselaw is not so incautious. Where we have described possible infringement in
terms of whether two designs have or do not have a substantially similar “total
concept and feel,” we generally have taken care to identify precisely the particular
aesthetic decisions — original to the plaintiff and copied by the defendant — that
might be thought to make the designs similar in the aggregate. This is evident from
Reyher and Eden Toys, supra, and also from our more recent textile-infringement
decisions. Thus in Knitwaves v. Lollytogs Ltd., we explained:
Lollytogs has chosen to feature the same two fall symbols that Knitwaves used,
leaves and squirrels. Not only do Lollytogs’ renderings of these symbols
substantially resemble Knitwaves’ renderings, but Lollytogs has employed them in
virtually the same manner as Knitwaves has (as felt appliques stitched to the
sweaters’ surface); on strikingly similar backgrounds (“shadow-striped” for the Leaf
Sweater, and four-paneled for the Squirrel Cardigan); and in virtually the same color
scheme.

71 F.3d 996, 1004 (2d Cir.1995). Cf. Boisson, 273 F.3d at 273-74 (finding infringement
on the basis of protectible and similar combinations of letters, colors and patterns in

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two alphabet rugs — in sum, on the basis of the “enormous amount of sameness”
between the two designs).7
Footnote 7: Knitwaves and other recent cases portray this Circuit’s protection of a complex work’s
“total concept and feel” as a necessary result of the Supreme Court’s statement in Feist, 499 U.S. at
350, 361-64, that compilations of unprotectible elements merit copyright protection insofar as they
contain an original and non-mechanical selection, coordination or arrangement of those elements. See
Boisson, 273 F.3d at 272-73; Streetwise Maps, 159 F.3d at 748; Knitwaves, 71 F.3d at 1003-04.

Essentially, the total-concept-and-feel locution functions as a reminder that, while
the infringement analysis must begin by dissecting the copyrighted work into its
component parts in order to clarify precisely what is not original, infringement
analysis is not simply a matter of ascertaining similarity between components viewed
in isolation.8
Footnote 8: Ascertaining the “component parts” of the work is, of course, a case-specific inquiry that
begins by considering what is distinctive about a given design. The process is well illustrated in Boisson,
273 F.3d at 272-75.

For the defendant may infringe on the plaintiff’s work not only through literal
copying of a portion of it, but also by parroting properties that are apparent only
when numerous aesthetic decisions embodied in the plaintiff’s work of art — the
excerpting, modifying, and arranging of public domain compositions, if any, together
with the development and representation of wholly new motifs and the use of
texture and color, etc. — are considered in relation to one another. The court,
confronted with an allegedly infringing work, must analyze the two works closely to
figure out in what respects, if any, they are similar, and then determine whether these
similarities are due to protected aesthetic expressions original to the allegedly
infringed work, or whether the similarity is to something in original that is free for
the taking.
II.
The appellant charges that, in comparing the two designs’ total concept and feel, the
district court improperly factored out public domain elements from the Heriz and
the Bromley. As the above discussion of doctrine indicates, however, the court was
surely correct to factor such elements out. For copying is not unlawful if what was
copied from the allegedly infringed work was not protected, for example, if the
copied material had itself been taken from the public domain. This principle applies,
moreover, whether the copied, unprotected expression at issue is a selection,
coordination, or arrangement of elements, or whether it is the exact design itself.
But in its comparison of the two rugs, the district court failed to consider — apart
from total concept and feel — whether material portions of the Bromley infringed
on corresponding parts of the Heriz. Here the court erred. See generally 3 Nimmer
on Copyright § 13.03[A][1][c] (“‘Total concept and feel’ should not be viewed as a
sine qua non for infringement — similarity that is otherwise actionable cannot be
rendered defensible simply because of a different ‘concept and feel.’”
What makes this case perplexing is that, to the judicial observer who has a passing
familiarity with carpet design, many of the plaintiff’s expressive choices may seem to
be 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
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a de minimis amount of protected expression.10 Consider, for example, the cropping
and elongating of the Battilossi half-field so as to create a typical “longer than wide”
field for the Heriz; the use of one primary and two minor borders; the proportions
between borders and field; and the design of the outer minor border. On the other
hand, the record contains little evidence of what is conventional (and hence, by
analogy to “scènes à faire,” unprotected) in these respects.
Footnote 10: Furthermore, one apparently original element in the plaintiff’s design — the inner minor
border — is not closely reproduced in the Bromley. True, like the Heriz, the Bromley uses a stickfigure motif in its inner border, but the Bromley stick figures are not particularly similar to their
counterparts in the Heriz.

Even the Heriz’s pairing of the Battilossi half-field with the Blau-derived border was,
arguably, a fairly simple exercise. One might contend that the pairing is too minor to
surmount even the low threshold for copyright protection, or else conclude that it is
protected only against very close copies.11 The question of infringement thus might
be thought to turn on subtle differences in the Heriz and Bromley adaptations of the
Blau border.
Footnote 11: In suggesting these possibilities, we note only that they are arguable, and we express no
opinion as to whether the arguments, if made, would prove correct. We do believe, however, that the
district court probably erred in categorically dismissing as an unprotected “idea” the plaintiff’s
combination of the Battilossi half-field and Blau-ish border. The plaintiff’s particular combination of
these two rugs is an expression, albeit one protected by a thin copyright. Cf. Beaudin v. Ben & Jerry’s
Homemade, Inc., 95 F.3d 1, 2 (2d Cir. 1996) (“Where the quantum of originality is slight and the
resulting copyright is ‘thin,’ infringement will be established only by very close copying....”).

Whether the Bromley infringes on the Heriz, however, need not depend on variation
between the primary borders, or on a determination of the extent to which various
features of the Heriz design are conventions. There is one substantial respect in
which the creator of the Heriz made distinctly idiosyncratic and particular design
decisions — decisions whose effect permeates the entire field of the Heriz — and in
this respect the Bromley is a virtually exact copy of the Heriz. The plaintiff not only
cropped and elongated the Battillossi half-field, he also selectively eliminated
numerous design motifs, creating a more open, less busy aesthetic.
Of course, mere simplification of an ornate public domain carpet into a mass market
knock-off may not be protectible.12 But the plaintiff’s half-field modification was not
a uniform or homogeneous simplification akin to removing all serifs from a font,
blurring the petals on all flowers, or eliminating every third leaf on a stem. Rather,
the plaintiff seems to have engaged in a selective and particularized culling of a leaf
here, a complex of leaves and flowers there, and so forth. And close visual inspection
of the two rugs confirms that the Bromley precisely mimics the Heriz in nearly all of
these choices.
Footnote 12: Compare in this regard the use of the “merger” doctrine in Computer Assocs. Int’l, 982
F.2d at 707-10 (applying “merger” doctrine to computer code features dictated by efficiency and
external functional constraints).

This non-mechanical adaptation of individually unprotectible elements from the
public domain is precisely the type of “original selection” that the Supreme Court
indicated was protectible expression in Feist. There, the Court clarified that a
telephone directory contained protectible expression insofar as the compiler had
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“selected, coordinated, or arranged [its] uncopyrightable facts in an original way.”
499 U.S. at 362. The Court cautioned, however, that the protection given is “thin,” id.
at 349, because the scope of the copyright “is limited to the particular selection or
arrangement,” and a “subsequent [author] remains free to use [the public domain
elements] to aid in preparing a competing work, so long as the competing work does
not feature the same selection and arrangement,” id. at 349-51.13
Footnote 13: There may arise visual-arts cases in which the “selection, coordination, and
arrangement” of public domain elements is so aesthetically complex and sophisticated that the
copyright is more than “thin.” As mediums of expression, mosaic and montage can support artistry of
high order. But in the case before us the selective deletion of elements from the Battilossi, while
idiosyncratic, was relatively simple and supports only a thin copyright. Cf. Beaudin, 95 F.3d at 2.

We conclude that this is one of those relatively unusual cases in which the infringing
work has copied the original and “particular” or “same” selections embodied in the
allegedly infringed upon work. The number of motifs present (or absent) in the
Bromley field which mirror those the Heriz selected (or deleted) in an original way
from the Battilossi is overwhelming. And the structural layout of these elements is
essentially the same in both designs.
It should be noted that while the Bromley field is based on a near-exact copy of the
Heriz’s original selections from the Battilossi, the Bromley does depart from the
Heriz in one salient respect. Specifically, the Bromley field has a second, anchoring
“beetle” or “flower” element, which conveys a sense of balance that is absent in the
Heriz. This addition, and the resulting faux symmetry, was important to the district
court’s determination that the “total concept and feel” of the Bromley was not
substantially similar to that of the Heriz. Whatever the possible relevance of the
Bromley’s second beetle element to a comparison of the two rugs’ “overall feel” —
an issue we need not decide today — this addition does not alter the fact that the
rest of the Bromley field is a near-exact copy of the Heriz field, and therefore
infringing. To hold otherwise would be rather like holding that one who closely
copies a long poem can do so without prima facie infringement if she replaces one
(admittedly significant) stanza with verse of her own invention and thereby alters the
poem’s “feel.” Cf. Sheldon, 81 F.2d at 56 (“[N]o plagiarist can excuse the wrong by
showing how much of his work he did not pirate.”)
III.
For the forgoing reasons, we hold that the Bromley is substantially similar to the
Heriz. We therefore VACATE the judgment of the district court and REMAND for
further proceedings.
Notes and questions
(1) In Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir.
2003), the Second Circuit reversed the district court’s finding that one rug did not infringe
upon another similar rug.
(2) Notice that the Second Circuit in Tufenkian does not treat “total concept and feel” as a
test for infringement, but merely as part of the infringement analysis. On this view, “total
concept and feel” functions as a reminder that courts should not take dissection too far. At
134 the court said:
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Essentially, the total-concept-and-feel locution functions as a reminder that, while
the infringement analysis must begin by dissecting the copyrighted work into its
component parts in order to clarify precisely what is not original, infringement
analysis is not simply a matter of ascertaining similarity between components viewed
in isolation.

The Second Circuit is not concerned that “total concept and feel” is an invitation to the
“abdication of analysis” as some have suggested, because its consideration of total concept
and feel is balanced with and preceded by analytical dissection. At 134, the court responds to
its critics:
But our caselaw is not so incautious. Where we have described possible
infringement in terms of whether two designs have or do not have a substantially
similar “total concept and feel,” we generally have taken care to identify precisely
the particular aesthetic decisions — original to the plaintiff and copied by the
defendant — that might be thought to make the designs similar in the aggregate.

Is that enough?

The abstraction, filtration, and comparison test
In Computer Associates Intern., Inc. v. Altai, Inc., 982 F. 2d 693 (2d Cir. 1992), the Second Circuit
recognized that the ordinary observer test generally applied to determine that substantial
similarity was unlikely to be of much use in the context of computer software. At 713, the
court said:
… in deciding the limits to which expert opinion may be employed in ascertaining
the substantial similarity of computer programs, we cannot disregard the highly
complicated and technical subject matter at the heart of these claims. Rather, we
recognize the reality that computer programs are likely to be somewhat
impenetrable by lay observers — whether they be judges or juries — and, thus,
seem to fall outside the category of works contemplated by those who engineered
the Arnstein test.

In place of an ordinary observer test, the court announced an approach that has become
known as the “abstraction, filtration, and comparison” test. The AFC test is widely used in
computer software cases and occasionally in other contexts.
As its name suggests, the AFC test has three steps. As the court explained in Computer
Associates (at 706),
… we think that district courts would be well-advised to undertake a three-step
procedure, based on the abstractions test utilized by the district court, in order to
determine whether the non-literal elements of two or more computer programs are
substantially similar. This approach breaks no new ground; rather, it draws on such
familiar copyright doctrines as merger, scènes à faire, and public domain. …
In ascertaining substantial similarity under this approach, a court would first break
down the allegedly infringed program into its constituent structural parts. Then, by
examining each of these parts for such things as incorporated ideas, expression that
is necessarily incidental to those ideas, and elements that are taken from the public
domain, a court would then be able to sift out all non-protectable material. Left with
a kernel, or possible kernels, of creative expression after following this process of
elimination, the court’s last step would be to compare this material with the

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structure of an allegedly infringing program. The result of this comparison will
determine whether the protectable elements of the programs at issue are
substantially similar so as to warrant a finding of infringement.

Using this AFC approach, the court was able to set aside similarities based on high-level
abstractions, standard programming techniques, and any aspects of the software that would
have been dictated by external factors. Without this kind of systematic dissection, courts
would be far too quick to conclude that two programs performing the same function in the
same environment were substantially similar.

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6. THE RIGHT TO PREPARE A DERIVATIVE WORK BASED UPON THE
COPYRIGHTED WORK

Legislative history
Earlier Copyright Acts
The express statutory right to “prepare a derivative work based upon the copyrighted work”
is recent addition to American copyright law. Section 1 of the Copyright Act of 1790 gave
domestic authors who complied with certain formalities the “sole right and liberty” to print,
reprint, publish, and to vend (sell or offer for sale) qualifying maps, charts, and books, for a
term of fourteen years. Section 2 added an importation right, but the Act did not expressly
recognize a derivative right.
In 1909, Congress provided a more expansive but still specific list of derivatives that authors
were entitled to control. The Copyright Act of 1909, Section 1(b) conferred an exclusive
right (among other things) to translate literary works, to dramatize nondramatic literary
works, and to novelize a dramatic work. It is important to note the structure of the 1909 Act.
The Act not only identified specific types of derivatives that authors were entitled to control;
it also tied each type of derivative to the type of work being adapted. It was not until the
Copyright Act of 1976 that United States copyright law conferred an express general right to
control the preparation of derivative works based upon copyrighted works.

The Copyright Act of 1976
Section 106(2) of the Copyright Act of 1976 grants copyright owners the exclusive right “to
prepare derivative works based upon the copyrighted work”. But what does this mean?
Before delving into the caselaw it is important to take stock of the other provisions of the
Copyright Act that illuminate the meaning of Section 106(2).
17 U.S. Code §101
A “derivative work” is a work based upon one or more preexisting works, such as a
translation, musical arrangement, dramatization, fictionalization, motion picture
version, sound recording, art reproduction, abridgment, condensation, or any other
form in which a work may be recast, transformed, or adapted. A work consisting of
editorial revisions, annotations, elaborations, or other modifications, which, as a
whole, represent an original work of authorship, is a “derivative work”.
Section 101 of the Copyright Act of 1976 defines a “derivative work” as “a work based upon
one or more preexisting works” and then lists several examples followed by a catchall “or
any other form in which a work may be recast, transformed, or adapted.”
What does it mean for one work to be “based upon one or more preexisting works”?
Assuming that there are two conceptually distinguishable works, what is the nature and
extent of connection between required to assert that one is a derivative work (or, “a work
based upon”) the other? Speaking loosely, one could say that a musical composition inspired
by a painting is a work ‘based upon’ a preexisting copyrighted work, but that is obviously not
what Congress intended.
House Report on the Copyright Act of 1976 (p. 62)

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To be an infringement the “derivative work” must be “based upon the copyrighted
work.” … Thus, to constitute a violation of section 106(2), the infringing work must
incorporate a portion of the copyrighted work in some form; for example, a detailed
commentary on a work or programmatic musical composition inspired by a novel
would not normally constitute infringements under this clause.

Not all transformations, recastings, or adaptations will create a derivative work as that term
is used in the Copyright Act because many such activities do not produce a work that
includes a sufficient amount of the original copyrighted expression. Explanations,
commentaries, indexes, and bibliographies and similar supplementary works are not
derivative works. These works would not exist but for the copyrighted work which they
supplement, however, “but for” causation is not enough.

Limiting principles
There are at least three key limiting principles that apply to the exclusive right “to prepare
derivative works based upon the copyrighted work” under United States copyright law.
First, making a derivative work necessitates recasting a qualitatively and quantitatively
significant amount of the primary work’s original expression into a new form or a new
version. Assessing whether this threshold has been met requires some understanding of what
made the primary work copyrightable in the first place. Suppose we reduced a novel such as
Fifty Shades of Gray down to a table of individual words and the frequency with which they
appeared in the text. We could program a computer to randomly construct an alternative
novel, Gray Fifty Shades Of, which followed traditional rules of English grammar and used the
same individual words. A few things should be obvious about, Gray Fifty Shades Of: (i) it
would be terrible; (ii) it would not exist, but for Fifty Shades Of Gray, (iii) but it would not
convey any of the original expression of the primary work. Without some nontrivial overlap
in original expression Gray Fifty Shades Of would not be a derivative work. On the other hand,
a sequel to the primary work that uses the same characters and settings would be very likely
to be a derivative work.
Second, not all reproductions are derivative works, but all infringing derivatives must meet
the same threshold of similarity that is required to infringe the reproduction right. This
means that the right to “produce a derivative work based upon the copyrighted work” is in
some sense superfluous to the reproduction right. 56 But Section 106(2) is not entirely
pointless. It makes it easier for a copyright owner to license reproduction but still object to
unauthorized changes to her work. Also, the existence of the right to “produce a derivative
work based upon the copyrighted work” gives courts some guidance as to the extent of
similarity required to make one work a reproduction of some prior work. Without the
derivative work right it may not be obvious that translations, abridgments, fictionalizations,
and dramatizations are presumptively within the scope of the copyright owners rights.
Third, the relationship between fair use and derivative works can be confusing.
Transformative use and derivative works are not mutually exclusive categories, although
once a work has been determined to be fair use there not much clarity to be gained by

56 Melville B.

Nimmer & David Nimmer, Nimmer On Copyright § 8.09 [A] (2012). See also 4 Patry on
Copyright § 12:13 “In order to infringe the derivative right, there must be substantial similarity in protectible
expression between the parties’ works.”

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continuing to refer to it as a derivative work as well. This issue is addressed in more detail in
a later chapter on fair use.

Illustrative cases
The Harry Potter Lexicon Case
The Harry Potter Lexicon Case illustrates the relationship between the concepts of
reproduction, adaptation, and fair use.
At the time of the litigation, J.K. Rowling was the author of seven highly acclaimed Harry
Potter books and two short companion books to the Harry Potter series. Steven Vander Ark
began work on The Harry Potter Lexicon website in 1999 and opened it to the public in
2000. The Harry Potter Lexicon was a crowd-sourced fan website that collected and organized
information from the Harry Potter books in encyclopedic form. The lexicon website was
well received, and received positive feedback from Rowling herself. At the trial Rowling said:
“this is such a great site that I have been known to sneak into an internet cafe while out
writing and check a fact rather than go into a bookshop and buy a copy of Harry Potter
(which is embarrassing).”
In 2007, RDR Books contacted Vander Ark about the possibility of publishing a Harry
Potter encyclopedia based on some of the materials from the Lexicon website. RDR
overcame Vander Ark initial reluctance to publish by agreeing to defend and indemnify
Vander Ark in the event of any lawsuit. The Harry Potter Lexicon was published as an
encyclopedia of Harry Potter information.
The extract that follows has been significantly edited to focus on the derivative work
discussion.
Warner Brothers Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y.
2008)
The Lexicon is an A-to-Z guide to the creatures, characters, objects, events, and
places that exist in the world of Harry Potter. As received by the Court in evidence,
the Lexicon manuscript is more than 400 type-written pages long and contains 2,437
entries organized alphabetically. The first few pages contain a list of abbreviations
used throughout the Lexicon to cite to the original sources of the material.
The Lexicon itself makes clear that the only source of its content is the work of J.K.
Rowling. The first page of the Lexicon manuscript states: “All the information in the
Harry Potter Lexicon comes from J.K. Rowling, either in the novels, the
‘schoolbooks,’ from her interviews, or from material which she developed or wrote
herself.” Aside from four dictionary citations, no other citations to third-party works
appear in the Lexicon.
The Lexicon entries cull every item and character that appears in the Harry Potter
works, no matter if it plays a significant or insignificant role in the story. The entries
cover every spell (e.g., Expecto Patronum, Expelliarmus, and Incendio), potion (e.g.,
Love Potion, Felix Felicis, and Draught of Living Death), magical item or device (e.g.,
Deathly Hallows, Horcrux, Cloak of Invisibility), form of magic (e.g., Legilimency,

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Occlumency, and the Dark Arts), creature (e.g., Blast-Ended Skrewt, Dementors, and
Blood-Sucking Bugbears), character (e.g., Harry Potter, Hagrid, and Lord
Voldemort), group or force (e.g., Aurors, Dumbledore’s Army, Death Eaters),
invented game (e.g., Quidditch), and imaginary place (e.g., Hogwarts School of
Witchcraft and Wizardry, Diagon Alley, and the Ministry of Magic) that appear in the
Harry Potter works. The Lexicon also contains entries for items that are not
explicitly named in the Harry Potter works but which Vander Ark has identified,
such as medical magic, candle magic, wizard space, wizard clothing, and remorse.
Some of the entries describe places or things that exist in the real world but also have
a place in the Harry Potter works, such as moors, Greece, and Cornwall.
Each entry, with the exception of the shortest ones, gathers and synthesizes pieces of
information relating to its subject that appear scattered across the Harry Potter
novels, the companion books, The Daily Prophet newsletters, Famous Wizard Cards,
and published interviews of Rowling. The types of information contained in the
entries include descriptions of the subject’s attributes, role in the story, relationship
to other characters or things, and events involving the subject. Repositories of such
information, the entries seek to give as complete a picture as possible of each item or
character in the Harry Potter world, many of which appear only sporadically
throughout the series or in various sources of Harry Potter material.
The snippets of information in the entries are generally followed by citations in
parentheses that indicate where they were found within the corpus of the Harry
Potter works. The thoroughness of the Lexicon’s citation, however, is not consistent;
some entries contain very few citations in relation to the amount material provided.
When the Lexicon cites to one of the seven Harry Potter novels, the citation
provides only the book and chapter number.
While not its primary purpose, the Lexicon includes commentary and background
information from outside knowledge on occasion. For example, the Lexicon
contains sporadic etymological references, (e.g., entries for “Colloportus,” “Lupin,
Remus,” “Alohamora,” “Fidelius Charm”), analogies to characters outside the Harry
Potter world such as Merlin, and observations of Rowling’s allusions to other works
of literature such as “the weird sisters” from Shakespeare’s Macbeth. The Lexicon
also points to the very few “flints,” or errors in the continuity of the story, that
appear in the Harry Potter series.
While there was considerable opining at trial as to the type of reference work the
Lexicon purports to be and whether it qualifies as such (no doubt in part due to its
title), the Lexicon fits in the narrow genre of non-fiction reference guides to fictional
works. As Defendant’s expert testified, the Harry Potter series is a multi-volume
work of fantasy literature, similar to the works of J.R.R. Tolkien and C.S. Lewis. Such
works lend themselves to companion guides or reference works because they reveal
an elaborate imaginary world over thousands of pages, involving many characters,
creatures, and magical objects that appear and reappear across thousands of pages.
The Lexicon, an A-to-Z guide which synthesizes information from the series and
generally provides citations for location of that information rather than offering
commentary, is most comparable to the comprehensive work of Paul F. Ford,
Companion to Narnia: A Complete Guide to the Magical World of C.S. Lewis’s The

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Chronicles of Narnia, or the unauthorized A-to-Z guide by George W. Beahm, Fact,
Fiction, and Folklore in Harry Potter’s World: An Unofficial Guide.
At trial, Rowling testified that the Lexicon took all the highlights of her work, in
other words her characters’ secret history, the jokes certainly, certain exciting
narrative twists, all the things that are the highlights of her stories. She compared this
taking of her work to plundering all of the “plums in [her] cake.” At trial, the
testimony of Rowling and the expert opinion of Johnson focused at length on the
Lexicon’s verbatim copying of language from the Harry Potter works. Johnson
testified that in particular, entries that deal with invented terms, creatures, places and
things from the Harry Potter books use “again and again the specific, very colorful,
idiosyncratic ... nouns and phrases of Ms. Rowling.”
Although it is difficult to quantify how much of the language in the Lexicon is
directly lifted from the Harry Potter novels and companion books, the Lexicon
indeed contains at least a troubling amount of direct quotation or close paraphrasing
of Rowling’s original language. The Lexicon occasionally uses quotation marks to
indicate Rowling’s language, but more often the original language is copied without
quotation marks, often making it difficult to know which words are Rowling’s and
which are Vander Ark’s.
For example, in the entry for “armor, goblin made,” the Lexicon uses Rowling’s
poetic language nearly verbatim without quotation marks. The original language from
Harry Potter and the Deathly Hallows reads:
“Muggle-borns,” he said. “Goblinmade armour does not require cleaning, simple
girl. Goblins’ silver repels mundane dirt, imbibing only that which strengthens it.”

The Lexicon entry for “armor, goblin made” reads in its entirety:
Some armor in the wizarding world is made by goblins, and it is quite valuable. (e.g.,
HBP20) According to Phineas Nigellus, goblin-made armor does not require
cleaning, because goblins’ silver repels mundane dirt, imbibing only that which
strengthens it, such as basilisk venom. In this context, “armor” also includes blades
such as swords.

Although the Lexicon entry introduces Rowling’s language with the phrase,
“According to Phineas Nigellus,” it does not use quotation marks.
The Lexicon entry for “Dementors” reproduces Rowling’s vivid description of this
creature sometimes using quotation marks and sometimes quoting or closely
paraphrasing without indicating which language is original expression. The original
language appears in Chapters 5 and 10 of Harry Potter and the Prisoner of Azkaban
as follows:
Its face was completely hidden beneath its hood. … There was a hand protruding
from the cloak and it was glistening, grayish, slimy-looking, and scabbed, like
something dead that had decayed in water. … And then the thing beneath the hood,
whatever it was, drew a long, slow, rattling breath, as though it were trying to suck
something more than air from its surroundings.
***
“Dementors are among the foulest creatures to walk this earth. They infest the
darkest, filthiest places, they glory in decay and despair, they drain peace, hope, and

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happiness out of the air around them. Even Muggles feel their presence, though
they can’t see them. Get too near a dementor and every good feeling, every happy
memory will be sucked out of you. If it can, the dementor will feed on you long
enough to reduce you to something like itself . . . soulless and evil. . . .”

The Lexicon entry for “Dementors” reads in its entirety:
Dementors are some of the most terrible creatures on earth, flying tall black spectral
humanoid things with flowing robes. They “infest the darkest, filthiest places, they
glory in decay and despair, they drain peace, hope, and happiness out of the air
around them,” according to Lupin (PA10). Dementors affect even Muggles,
although Muggles can’t see the foul, black creatures. Dementors feed on positive
human emotions; a large crowd is like a feast to them. They drain a wizard of his
power if left with them too long. They were the guards at Azkaban and made that
place horrible indeed. The Ministry used Dementors as guards in its courtrooms as
well (GF30, DH13). There are certain defenses one can use against Dementors,
specifically the Patronus Charm. A Dementor’s breath sounds rattling and like it’s
trying to suck more than air out of a room. Its hands are “glistening, grayish, slimylooking, and scabbed”. It exudes a biting, soulfreezing cold (PA5).

[Discussion of additional examples omitted]
The entries for the hero and the villain of the Harry Potter series (Harry Potter and
Lord Voldemort) present the closest thing to “plot summaries,” but are more aptly
characterized as synopses or outlines of the narrative revolving around those
characters. Because Harry Potter and Lord Voldemort drive the narrative and
because they appear in nearly every chapter of the series, an encapsulation of the
events surrounding them ultimately yields a synopsis of the primary narrative thread
in the Harry Potter series.
Copying
[The trial court found that the Lexicon was substantially similar to Rowling’s original
works, not so much in terms of the overall plot (the court’s analysis not entirely
consistent on this point), character and story of the works, but in terms of excessive
literal quotation.]
Although it is difficult to quantify how much of the language in the Lexicon is
directly lifted from the Harry Potter novels and companion books, the Lexicon
indeed contains at least a troubling amount of direct quotation or close paraphrasing
of Rowling’s original language. The Lexicon occasionally uses quotation marks to
indicate Rowling’s language, but more often the original language is copied without
quotation marks, often making it difficult to know which words are Rowling’s and
which are Vander Ark’s.
[The court reviewed several examples.] … Although in these instances, the Lexicon
often changes a few words from the original or rewrites original dialogue in the third
person, the language is nonetheless substantially similar.
Derivative Work
Plaintiffs allege that the Lexicon not only violates their right of reproduction, but
also their right to control the production of derivative works. The Copyright Act
defines a “derivative work” as “a work based upon one or more preexisting works,

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such as a translation, musical arrangement, dramatization, fictionalization, motion
picture version, sound recording, art reproduction, abridgment, condensation, or any
other form in which a work may be recast, transformed, or adapted” 17 U.S.C. § 101
(emphasis added). A work “consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a whole, represents an original work of
authorship” is also a derivative work.
A work is not derivative, however, simply because it is “based upon” the preexisting
works. If that were the standard, then parodies and book reviews would fall under
the definition, and certainly “ownership of copyright does not confer a legal right to
control public evaluation of the copyrighted work.” Ty, Inc. v. Publ’ns Int’l Ltd., 292
F.3d 512, 521 (7th Cir.2002). The statutory language seeks to protect works that are
“recast, transformed, or adapted” into another medium, mode, language, or revised
version, while still representing the “original work of authorship.” Thus in Ty, Inc. v.
Publications International Ltd., Judge Posner concluded, as the parties had stipulated,
that a collectors’ guide to Beanie Babies was not a derivative work because “guides
don’t recast, transform, or adapt the things to which they are guides.” 292 F.3d at
520 (emphasis added).
Plaintiffs argue that based on the Twin Peaks decision “companion guides constitute
derivative works where, as is the case here, they ‘contain a substantial amount of
material from the underlying work.’” This argument inaccurately states the holding
of Twin Peaks and overlooks two important distinctions between the Lexicon and the
guidebook in Twin Peaks. First, as mentioned earlier, the portions of the Lexicon that
encapsulate plot elements or sketch plotlines bear no comparison with the
guidebook in Twin Peaks, whose plot summaries giving “elaborate recounting of plot
details” were found to constitute an “abridgement” of the original work. See Twin
Peaks, 996 F.2d at 1373 n. 2 (reproducing an excerpt of the infringing book
containing a high degree of detail). Given that the Lexicon’s use of plot elements is
far from an “elaborate recounting” and does not follow the same plot structure as
the Harry Potter novels, Plaintiffs’ suggestion that these portions of the Lexicon are
“unauthorized abridgements” is unpersuasive. Second, and more importantly,
although the Lexicon contains a substantial amount of material from the Harry
Potter works, the material is not merely “transformed from one medium to another,”
as was the case in Twin Peaks. Id. at 1373. By condensing, synthesizing, and
reorganizing the preexisting material in an A-to-Z reference guide, the Lexicon does
not recast the material in another medium to retell the story of Harry Potter, but
instead gives the copyrighted material another purpose. That purpose is to give the
reader a ready understanding of individual elements in the elaborate world of Harry
Potter that appear in voluminous and diverse sources. As a result, the Lexicon no
longer “represents [the] original work[s] of authorship.” 17 U.S.C. § 101. Under these
circumstances, and because the Lexicon does not fall under any example of
derivative works listed in the statute, Plaintiffs have failed to show that the Lexicon
is a derivative work.
Fair use
[The court found that the overall purpose of the Lexicon was transformative because
the purpose of the original works was to tell an entertaining and thought-provoking
story, whereas the purpose of the Lexicon was to make information about the
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intricate world of Harry Potter readily accessible to readers through a reference guide.
However, the claim to fair use ultimately failed because (a) the Lexicon was not really
transformative in relation to the companion books and (b) in spite of its general
transformativeness, the Lexicon’s use of the underlying Harry Potter books was not
reasonable in light of that purpose. The Lexicon not contained too much slapdash
cut-and-paste and thus the lexicon slipped from transformative reference guide to
expressive substitute.]
Notes and questions
Warner Brothers Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008),
illustrates how fact-intensive copyright cases can be. It is also an excellent illustration of the
convergence of issues relating to substantial similarity, adaptation, and fair use. The Harry
Potter Lexicon case also illustrates that guidebooks to fictional worlds must walk a fine line,
but it nonetheless offers some encouragement for those who wish to make the attempt. A
less encouraging case is Castle Rock Entertainment v. Carol Publishing Group, Inc., 150 F.3d 132
(2d Cir. 1998).
Castle Rock Entertainment v. Carol Publishing Group, Inc., 150 F.3d 132 (2d Cir.
1998)
In Castle Rock, the Second Circuit held that a quiz book based on the characters and events
of the popular television series, Seinfeld, violated the show’s copyright. The differences
between the Seinfeld quiz and the Harry Potter Lexicon are subtle, but important. Like the
Seinfeld quiz, the Lexicon related “fictional facts” the author, J.K. Rowling, had created.
The Castle Rock court acknowledged (at 138) that the substantially similar standard depends
on “the copying of expression, rather than ideas” and that the quiz reproduced none of the
plot, sequence, pace, or setting of the show. The defendant’s quiz focused on “facts” internal
to the Seinfeld universe, such as the reason that Kramer enjoys going to the airport (because
he is hypnotized by the baggage carousels) or what it was that Jerry placed on Elaine’s leg
during a piano recital (a Pez dispenser), and not facts about the show.
The court of appeals took the view (at 139) that “[b]ecause these characters and events
spring from the imagination of Seinfeld’s authors, the [quiz] plainly copies copyrightable,
creative expression.” Of course, the court can’t really mean that any work that refers to the
characters and events in a creative work would be infringing, otherwise ownership of
copyright would confer a legal right to control public evaluation of the copyrighted work, an
idea anathema to copyright law.57
The real problem with the defendant’s quiz in Castle Rock Entertainment was that it sought to
“repackage Seinfeld to entertain Seinfeld viewers” and that the quiz itself was in no way
analytical. If the Seinfeld quiz infringed the copyright owner’s rights at all, it was because it
essentially recast the series’ copyrightable characters into a new format, much the same as if
the defendant had made miniature dolls of the show’s characters.58
57 Ty, Inc. v. Publ’ns Int’l. Ltd., 292 F.3d 512, 521 (7th Cir. 2002)
58 See, e.g., Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189 (2d Cir. 1985) (upholding copyrightability

of “Transformer” changeable robotic action figures as sculptural works).

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Penguin Random House LLC v. Colting, 270 F. Supp. 3d 736 (S.D.N.Y. 2017)
District Judge Jed S. Rakoff
At all times here relevant, plaintiffs owned valid copyrights to Breakfast at Tiffany’s,
The Old Man and the Sea, On the Road, and 2001: A Space Odyssey. Defendants’
“colorfully illustrated story summaries,” called “KinderGuides,” are designed to
“introduce” these works to children.
On or about September 22, 2016, defendants published their four Guides (part of a
planned 50-book series). On their front covers, the Guides very prominently display
the titles of plaintiffs’ Novels and the names of the authors of plaintiffs’ Novels,
along with the words “KinderGuides,” in large print and, in much smaller print, the
words “Early Learning Guides to Culture Classics.” The only other words are
“Illustrations by ____,” in very small print at the bottom.
All four Guides share the same layout. The first four pages feature illustrations and
one-line quotations taken from and attributed to the authors of the Novels (Capote,
Hemingway, Kerouac, and Clarke). The fifth page contains publication information,
and the sixth is a title page, stating, to take one example, “KinderGuides: Early
Learning Guides to Culture Classics,” “On the Road,” “by Jack Kerouac,” and, in
smaller font, “Illustrations by Rose Forshall,” “a division of Moppet Books/Los
Angeles, CA.” The seventh and eighth pages contain a “Table of Contents.” The
ninth displays an illustration of the original author of the Novel, and the tenth is a
page “About the Author.” Following these front-pages are “Story Summaries,”
which comprise a few dozen pages. Appended after these “Story Summaries” are a
series of back-pages, two each devoted to “Main Characters,” “Key Words,” “Quiz
Questions,” and “Analysis.”
Defendants admit that they had access to plaintiffs’ Novels in preparing their Guides
and that they relied on them. Indeed, a side-by-side comparison of plaintiffs’ and
defendants’ works reveals as much. Not only do the plots, settings, and characters of
the Guides mirror the Novels, but the Guides also include many specific details from
the Novels. For example, in both versions of Breakfast at Tiffany’s, Holly Golightly’s
business card reads “Holly Golightly, Traveling,” and in both versions Holly
describes an experience she calls “the mean reds,” or feeling afraid “but you don’t
know what you’re afraid of.” See, Truman Capote, Breakfast at Tiffany’s (2012
edition) at 32 (“the mean reds are horrible. You’re afraid ... but you don’t know what
you’re afraid of”), Kinder-Guides, Breakfast at Tiffany’s (2016) at 11, (“... the mean
reds. That means she is afraid but doesn’t know what she is afraid of.”). Similarly, in
both versions of On the Road, Sal drives across the United States with $50 in his
pocket and goes to see a blind jazz pianist named George Shearing; in both versions
of 2001: A Space Odyssey, Dr. Heywood Floyd travels to Clavius Base, a space
station on the moon, where there is a large monolith named “TMA-1” and a crater
named “Tyco”; and, in both versions of The Old Man and the Sea, Santiago has
gone 84 days without catching a fish and roots for the New York Yankees. While, of
course, many aspects of plaintiffs’ Novels do not appear in defendants’ shorter
Guides, all of the plots, characters, and settings in defendants’ Guides appear in
plaintiffs’ Novels.

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It is also undisputed that there is an established market for children’s books based on
adult novels, and that it is not unusual for copyright holders to publish, or license
publication of, children’s versions of works originally intended for adults.
Defendants, however, never sought permission to prepare children’s guides for
plaintiffs’ Novels.
It is further undisputed that plaintiffs have never authorized anyone to publish
children’s versions of their Novels. The managers of Hemingway’s literary estate
altogether rejected requests to create children’s versions of The Old Man and the Sea.
Penguin Random House considered authorizing a children’s version of 2001: A
Space Odyssey, but decided against it. The Capote estate did authorize the creation
of an illustrated, stand-alone children’s version of A Christmas Memory — a short
story originally included in the same volume as Breakfast at Tiffany’s — but did not
authorize a children’s version of Breakfast at Tiffany’s. Finally, Penguin Random
House and the Clarke Estate have authorized the creation of an ESL (“English as a
Second Language”) version of 2001: A Space Odyssey — “a simplified version,”
which includes “inserted pages of exercises and notes,” but no children’s versions.
Infringement
The Copyright Act of 1976 grants copyright owners a bundle of exclusive rights,
including the exclusive right to “reproduce the copyrighted work” and the exclusive
right “to prepare derivative works based upon the copyrighted work.” Id. § 106.
Here, plaintiffs allege that defendants’ Guides infringe both those rights.
To prevail on either ground, plaintiffs must prove that: (1) they hold a valid
ownership interest in the relevant copyrights, (2) defendants have “actually copied”
their works, and (3) defendants’ “copying is illegal” because of a “substantial
similarity” between defendants’ works and the “protectable elements” of their
copyrighted works. Castle Rock, 150 F.3d at 137. To prevail on the second ground,
plaintiffs must further prove that (4) defendants’ works are unauthorized derivatives
under 17 U.S.C. § 106(2).2
Footnote 2: With respect to the first ground, the question of whether defendants’ Guides are
derivative works is “completely superfluous,” as “infringement of the adaptation right necessarily
infringes the reproduction right.” Twin Peaks Prods., Inc, v. Publications Int’l, Ltd., 996 F.2d 1366,
1373 (2d Cir. 1993).

[The court found that the undisputed evidence established ownership and actual
copying. After reviewing different tests for substantial similarity the court continued:]
In the instant case, however, none of these special tests is even needed to establish
substantial similarity, as defendants’ Guides are not even superficially distinct from
the respective Novels. Instead, they are explicitly based on plaintiffs’ Novels, and
seek in defendant’s words, to “introduce” them to children “through colorfully
illustrated story summaries and kid-friendly analyses.”
To avoid, therefore, this obvious similarity, defendants would have the Court, in
effect, subtract from defendants’ Guides the characters, plots, and settings that were
directly lifted from plaintiffs’ Novels, on the ground that these elements do not
constitute protectable expression. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996,

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1002 (2d Cir. 1995) (noting that a court must limit its infringement inquiry to
whether “the protectable elements, standing alone, are substantially similar”).
Defendants claim that the characters, plots, and settings in plaintiffs’ Novels are
merely “a collection of made-up facts” or “fictional facts,” and, since (historical or
independently-existing) facts are not protected, these elements are not aspects of “an
author’s original expression” subject to copyright. As defendants put it, their Guide
to 2001: A Space Odyssey “merely summarized some of the facts of the book and
the characters, not the creative expression that makes Dr. David Bowman and HAL
[the characters] memorable.” In other words, the aspects of plaintiffs’ Novels that
appear in defendants’ Guides, such as the character of Holly Golightly, her place of
residence, her trips to the prison, her relationship to Sally Tomato, are not protected
expression but, according to defendants, “fictional facts.”
This exercise in sophistry, however, which confuses the difference between historical
or independently-existing facts and fictional details created by a novelist, finds no
support in applicable law. As the Second Circuit has clearly stated, “characters and
events” that “spring from the imagination” of authors are copyrightable, creative
expression. See Castle Rock, 150 F.3d at 139. Thus, the Copyright Act protects both
the literal text describing, for example, Dr. Bowman and HAL, and the “made-up
facts” about Dr. Bowman and HAL. “Unlike the facts in a phone book, which do
not owe their origin to an act of authorship,” each “fact” in defendants’ Guides is
really “fictitious expression” created by plaintiffs’ authors. Castle Rock, 150 F.3d at
139. Because the “characters and events” in defendants’ Guides “spring from the
imagination of” Capote, Hemingway, Kerouac, and Clarke, each Guide “plainly
copies copyrightable, creative expression.” Id.
By any reasonable comparison, defendants’ Guides copy substantial aspects of the
themes, characters, plots, sequencing, pace, and settings of plaintiffs’ Novels. Indeed,
that is their stated purpose. The defendants admit that “they wanted to be true to the
author’s original conception” at least “as far as possible given the nature of the
Kinder-Guides as children’s books” and that defendants’ works seek to convey to
children “the stories and characters” in plaintiffs’ Novels. Defendants thus
effectively admit to copyright infringement as a matter of law.
Derivative Works
Plaintiffs also allege that defendants’ Guides violate their right to control the
preparation of derivative works. See 17 U.S.C. § 106(2). The Copyright Act defines a
“derivative work” as: “a work based upon one or more preexisting works, such as a
translation, musical arrangement, dramatization, fictionalization, motion picture
version, sound recording, art reproduction, abridgment, condensation, or any other
form in which a work may be recast, transformed, or adapted.” 17 U.S.C. § 101. “A
work is not derivative, however, simply because it is ‘based upon’ the preexisting
works.” Harry Potter, 575 F.Supp.2d at 538. Only works that are “recast, transformed,
or adapted” into another medium, mode, or language while still representing the
“original work of authorship” are derivative. Id.; Castle Rock, 150 F.3d at 143 n. 9.
For example, book reviews and parodies of copyrighted works are not derivative
works, despite being based on, and potentially reproducing, substantial amounts of
protected expression. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 592 (1994)

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(stating the general rule that the “market for potential derivative uses includes only
those that creators of original works would in general develop or license others to
develop”).
Depending on its nature, a “guide” may or may not qualify as a derivative work. The
issue turns on whether the guide changes the copyrighted material in such a way that
the guide no longer represents the original “work of authorship.” 17 U.S.C. § 101;
Warner Bros. Entm’t Inc. v. RDR Books, 575 F.Supp.2d 513, 539 (S.D.N.Y. 2008). For
example, the Second Circuit found that a guide to the TV show Twin Peaks, which
“merely transformed” the original work “from one medium to another,” was a
derivative work. But an encyclopedia based on the Harry Potter world, which did not
tell the same story as the original copyrighted books and movies, was not a derivative
work. Id. (“by condensing, synthesizing, and reorganizing the preexisting material in
an A-to-Z reference guide, the Lexicon does not recast the material in another
medium to retell the story of Harry Potter, but instead gives the copyrighted material
another purpose. That purpose is to give the reader a ready understanding of
individual elements in the elaborate world of Harry Potter that appear in voluminous
and diverse sources.”).
Here, though defendants’ Guides add additional material at the end, specifically a few
brief pages of “Analysis,” “Quiz Questions,” and information about the author, they
are primarily dedicated to retelling plaintiffs’ stories. Two pages of analysis do not
convert the Guides overall — which are largely composed of “Story Summaries” —
into something that no longer “represents the original work of authorship.” Like a
translation, dramatization, or motion picture adaptation (three categories explicitly
delineated by Congress as derivative works, see 17 U.S.C. § 101), and like the guide
in Twin Peaks, defendants’ works basically retell the story of plaintiffs’ works in
another medium (in this case illustrated children’s books). Thus, because defendants
never received permission from plaintiffs to produce their Guides, the Guides are
unauthorized derivatives as a matter of law.
For the aforementioned reasons, defendants’ Guides are infringing; they infringe
upon plaintiffs’ exclusive right to reproduce their Novels, including the character of
Holly Golightly (a separate count), and they infringe upon plaintiffs’ exclusive right
to exploit the market for derivative works based on their Novels.
Fair Use
… U.S. law no longer protects abridgements as fair use, even in cases where the
shortening involves, as Justice Story put it, “real, substantial condensation of the
materials, and intellectual labor and judgment bestowed thereon; and not merely the
facile use of the scissors.” Folsom v. Marsh, 9 F.Cas. 342, 344-45 (C.C.D. Mass. 1841).
Instead, under the Copyright Act, abridgements are generally considered to be
derivative works, and the right to prepare them is reserved exclusively to the
copyright holder. See Twin Peaks, 996 F.2d at 1376.
With respect to modifying the Novels for a younger audience, the mere removal of
adult themes does not meaningfully “recast” the work any more than an airline’s
editing of R-rated films so that they can be shown to children on a flight absolve the
airline from paying a royalty. As Judge Leval puts it, the question is whether the work
produces new insights and understandings. Here, defendants’ expurgated Guides are
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a vehicle for conveying to children the Novels’ original stories and insights. Indeed,
it is quite clear that defendants’ Guides seek to fairly represent the original work of
authorship — defendants admit as much.
Finally, there is the question of whether defendants’ Guides qualify as educational
criticism or commentary. Works of criticism and commentary provide the sort of
new insights and understandings that are the sine qua non of transformative use.
Defendants suggest that their Guides should be considered commentary, arguing
that their works serve educational purposes. As evidence, defendants point to the
few pages of analysis, quiz questions, and background information at the back of
each Guide.
But tacking on these few pages does not provide safe harbor for an otherwise infringing
work. Here, defendants’ story summaries do not recount plaintiffs’ Novels in the service
of literary analysis, they provide literary analysis in the service of trying to make the
Guides qualify for the fair use exception. Indeed, defendants admitted this in open
court, when their counsel explained that Colting and Medina “went to great lengths” to
achieve fair use protection. See Transcript at 17 (“the very fact that we have these
sections in the book [e.g. the “Main Characters” and “Keywords” and “Analysis”
sections] these are all things that were done to make these books fair use, at least in the
minds of the defendants”). Fair use, however, is not a jacket to be worn over an
otherwise infringing outfit. One cannot add a bit of commentary to convert an
unauthorized derivative work into a protectable publication.
[Having rejected the defendant’s arguments that their use was transformative, the court
applied the statutory fair use factors and concluded that their use was not fair.]
Notes and questions
(1) Obviously the KinderGuides were quite different to the original literary works that
inspired them. How significantly would the Guides have to change in order not be seen as
an infringing reproduction, derivative work, or to qualify as fair use?
(2) Why were the KinderGuides in Penguin Random House LLC v. Colting held to be a
derivative work based upon the copyrighted work while the Harry Potter Lexicon in Warner
Brothers Entertainment, Inc. v. RDR Books was not?
(3) The district court in Penguin Random House LLC v. Colting repeated the Second Circuit’s
suggestion in Castle Rock that fictional facts are copyrightable, i.e., because the characters and
events in a novel “spring from the imagination” of authors they must be copyrightable,
creative expression. As noted above, the court can’t really mean that any work that refers to
the characters and events in a creative work is infringing, can it?
(4) Does the Wikipedia page describing the plot and main characters of a novel infringe on
the copyright in that book? If not, how would you distinguish the Wikipedia entry for The
Old Man and the Sea59 from The Old Man and the Sea, by Ernest Hemingway: A Kinderguides
Illustrated Learning Guide?

59 https://en.wikipedia.org/wiki/The_Old_Man_and_the_Sea

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Figure 17 Kinderguides version of the Old Man and the Sea

The scope of copyright in derivative works
Section 103(a) of the Act contains a provision clarifying that compilations and derivative
works are eligible copyright subject matter, meaning that a derivative work can also be a new
copyrighted work, possibly with a different owner to the original and entitled to a new term
of protection.
The same section also provides that copyright protection is not available any part of a
compilation or derivative work that incorporates infringing material. It is worth noting that
the U.S. rule deviates from the international norm in this respect.
17 U.S. Code § 103(a)
The subject matter of copyright as specified by section 102 includes compilations
and derivative works, …
… but protection for a work employing preexisting material in which copyright
subsists does not extend to any part of the work in which such material has been
used unlawfully.
The Act also clarifies that copyrights in compilations and derivative works extends only to
the original material contributed by their authors and were independent of and had no effect
on the scope, duration, ownership, or subsistence of copyright in preexisting material.
17 U.S. Code §103(b)
The copyright in a compilation or derivative work extends only to the material
contributed by the author of such work, as distinguished from the preexisting
material employed in the work, and does not imply any exclusive right in the
preexisting material. The copyright in such work is independent of, and does not
affect or enlarge the scope, duration, ownership, or subsistence of, any copyright
protection in the preexisting material.

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Keeling v. Hars, 809 F. 3d 43 (2d Cir. 2015)
Circuit Judge José A. Cabranes
The primary question presented is whether an unauthorized work that makes “fair
use” of its source material may itself be protected by copyright.
We hold, for substantially the reasons stated by the United States District Court for
the Southern District of New York (Thomas P. Griesa, Judge), that, if the creator of
an unauthorized work stays within the bounds of fair use and adds sufficient
originality, she may claim protection under the Copyright Act, 17 U.S.C. § 103, for
her original contributions. We also reject defendant’s challenges to the District
Court’s jury charge. The District Court’s January 11, 2013 judgment is therefore
AFFIRMED.
BACKGROUND
Plaintiff-Appellee Jaime Keeling is the author of Point Break Live! (“PBL”), a parody
stage adaptation of the 1991 Hollywood action movie Point Break, starring Keanu
Reeves and Patrick Swayze. In the film, Reeves plays a rookie FBI agent who goes
undercover to infiltrate a gang of bank-robbing surfers led by Swayze’s character.
The Keeling-authored PBL parody parallels the characters and plot elements from
Point Break and relies almost exclusively on selected dialogue from the screenplay.
To this raw material, Keeling added jokes, props, exaggerated staging, and humorous
theatrical devices to transform the dramatic plot and dialogue of the film into an
irreverent, interactive theatrical experience. For example, in Keeling’s PBL parody,
Point Break’s death-defying scene in which Reeves’s character must pick up bricks,
blindfolded, in a swimming pool takes place, instead, in a kiddie pool. Massive waves
in the film are replaced by squirt guns in the PBL parody. A central conceit of the
PBL parody is that the Keanu Reeves character is selected at random from the
audience and reads his lines from cue cards, thereby lampooning Reeves’s reputedly
stilted performance in the movie. Keeling added to the effect that the audience was
watching the making of the film by creating a set of film-production characters in the
PBL parody, including a director, cinematographer, and production assistants.
Keeling possesses no copyright or license with regard to the Point Break motion
picture.
Defendant-Appellant Eve Hars, proceeding pro se on appeal, owns production
company New Rock Theater Productions, LLC (“New Rock”). In 2007, Keeling
executed a production agreement with Hars, pursuant to which New Rock would
stage a two-month production run of PBL from October through December 2007.
During that time period, Hars conferred with an entertainment attorney and the
holder of the copyright to the Hollywood screenplay for Point Break, and eventually
Hars came to believe that Keeling did not lawfully own any rights to the PBL parody
play. Accordingly, after its initial two-month run, Hars sought to renegotiate the
terms of the contract upon its expiration and, in effect, continue to produce PBL
without further payment to Keeling. Keeling refused renegotiation, threatened suit,
and registered a copyright in PBL, without first obtaining permission from the
copyright holders of the original Point Break. Keeling’s asserted copyright in PBL
became effective on January 4, 2008. Hars and New Rock continued to stage

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performances of PBL for four years thereafter without payment to or authorization
from Keeling.
In December 2010, Keeling brought suit against Hars, New Rock, and New Rock
investor Ethan Garber, asserting claims for copyright infringement, breach of
contract, and tortious interference with contract. In the District Court proceedings,
all parties were represented by counsel. After the District Court denied defendants’
motion to dismiss, defendants asserted counterclaims seeking, inter alia, a declaration
that Keeling’s PBL copyright registration was invalid. Upon completion of discovery,
defendants moved for summary judgment, arguing primarily that PBL, an
unauthorized derivative work, was not entitled to copyright protection as a matter of
law. The District Court denied defendants’ successive motions for summary
judgment, ruling that a parody that makes “fair use” of another copyrighted work
may contain sufficient originality to merit copyright protection itself. The District
Court also rejected defendants’ argument that a script heavily reliant on theatrical
devices, as was PBL’s, could not lawfully constitute original creative expression
deserving of copyright protection. Finally, the Court found that multiple outstanding
issues of material fact remained — including whether PBL constituted a “fair use”
parody of Point Break and whether PBL contained sufficient originality to merit
copyright protection.
In December 2012, the case proceeded to a five-day trial by jury. At the close of the
evidence, the parties delivered summations focused largely on whether PBL was a
parody at all, and if so, whether that parody constituted non-infringing “fair use.”
The District Court then charged the jury, beginning with the first question the jury
would be asked to answer: “whether [PBL] was a fair use by way of a parody of the
original movie Point Break.” The District Court declined to enumerate each of the
four statutory factors pertaining to “fair use,” opting instead to attempt to “put a
little more content on the discussion,” which the District Court believed that the
“list of factors” alone lacked. The pertinent instructions on fair use were as follows:
Now, the person who creates the derivative work has a copyright in that derivative
work. Now, if the derivative work is simply somehow really a copy of the original
then it may be somehow called a derivative work but it infringes on the owner of
the original. But if it is what we call “fair use” then it is not an infringement on the
original and it is a new work and it has its own copyright and the author or the
creator of the new work owns that copyright as well as owns the new work....
The plaintiff contends that [PBL] is a fair use of sections of the script of the original
movie. The plaintiff contends that this is fair use as a parody and a parody, certainly,
can be fair use....
A proper parody is something which generally ridicules to some extent, makes fun
of, makes light of the original. Suppose the original is the very serious drama of
some kind and if someone comes along and makes a parody, it is generally turning it
into something different, humorous, ridiculous. And if that is done it is fair use to
use even substantial amounts of the script of the original movie. It is fair use to even
use the high points or the high point as long as it is not simply conveying again the
original movie. If it takes the script of the original movie and creates something
which uses that script to ridicule to make fun of, to make light of to produce humor
instead of the original seriousness, then that is a legitimate parody.

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Now, the amount of script taken from the original cannot completely go beyond the
needs of the parody. In other words, if the parody is for, if we could imagine, a third
it is not legitimate to copy the other two thirds and put them out again. But if the
amount of script used is reasonably related to the production of the humor, the
ridicule, the lightheartedness and so forth that is a legitimate parody and that is fair
use.
Now, it is sometimes said that the judge in instructing a jury on fair use is supposed
to refer to a list of factors. The list of factors is a list of factors without much
content or meaning. And what I am trying do with you now is to refer to the
necessary factors but I hope put a little more content on the discussion. And really
that’s all I have to say to define fair use by way of parody.

No party objected to the District Court’s jury instructions.
The jury returned a verdict in Keeling’s favor in the amount of $250,000, finding (a)
that Keeling’s use of material from the film Point Break was “fair use in the way of a
parody,” (b) that Keeling was the sole owner of the copyright to PBL, and (c) that
defendants infringed Keeling’s copyright. The District Court entered judgment on
January 11, 2013.
Defendant Hars, now proceeding pro se, appealed. She challenges the District
Court’s denial of her pretrial motion for summary judgment as well as the
subsequent jury verdict in favor of Keeling.
DISCUSSION
Though not a model of clarity, Hars’s appellate briefing primarily raises three issues:
first, whether PBL, as an unauthorized “fair use,” is entitled to copyright protection
capable of supporting Keeling’s claim of infringement by a third party; second,
whether Keeling’s contributions to the work — consisting of individually noncopyrightable elements — could be sufficient to support a copyright in PBL; and
third, whether the District Court’s jury instructions were erroneous. The first two
issues relate to the same question: whether Keeling’s work was copyrightable. We
consider each issue in turn.
I. Challenges to Copyright Law
In general, where summary judgment is denied and the movant subsequently loses
after a full trial on the merits, the denial of summary judgment may not be appealed.
However, this rule does not apply where, as here, the district court’s purported error
was purely one of law. In such circumstances, we review de novo the legal issues
underlying the district court’s denial of summary judgment.
The Copyright Act principally offers copyright protection for “original works of
authorship.” 17 U.S.C. § 102(a). Pursuant to the statute’s terms, authors may control
the copying of their original works and also retain “the exclusive rights” to “prepare
derivative works based upon the copyrighted work.” 17 U.S.C. § 106. Thus,
unauthorized derivative works are typically afforded no copyright protection because
they unlawfully infringe the exclusive rights of the original author. Id.; see also id. §
103 (“Protection for a work employing preexisting material in which copyright
subsists does not extend to any part of the work in which such material has been
used unlawfully.”).

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The doctrine of “fair use” constitutes a critical and long-standing limitation on the
exclusive rights of the original copyright owner. Though only made a part of
statutory copyright law in 1976, “from the infancy of copyright protection, some
opportunity for fair use of copyrighted materials has been thought necessary to fulfill
copyright’s very purpose, to promote the Progress of Science and useful Arts.”
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994). Under Section 107 of the
Copyright Act, certain unauthorized “fair use of a copyrighted work,” for purposes
such as criticism, comment, news reporting, teaching, scholarship and research, “is
not an infringement of copyright” and thus is lawful. 17 U.S.C. § 107. While parody
is not expressly mentioned in the statute, the Supreme Court has instructed that
“parody, like other comment or criticism, may claim fair use under § 107.” Campbell,
510 U.S. at 579.
In this case, Hars does not dispute the jury’s factual determination that Keeling’s use
of Point Break material in her creation of PBL was “fair use in the way of a parody.”
Indeed, she repeatedly disclaims any “fair use” challenge, explaining that she “is not
concerned about whether Keeling’s script is a fair use of Point Break because it is
completely irrelevant to any and all of Hars’ arguments.” [And also] “The issue of
whether Keeling’s script qualifies as fair use was astutely and consciously avoided by
Hars in her brief.... Hars is not asking the Court to spend even one second of
valuable time trying to determine whether Keeling’s script qualifies for fair use.”.
Instead, Hars presents two legal arguments for why copyright protection should not
extend to Keeling’s work, both of which were first raised in defendants’ summary
judgment briefing and denied by the District Court.
A. Copyright Protection: Fair Use
First, Hars argues that an unauthorized derivative work like PBL categorically may
not receive independent copyright protection, regardless of whether it makes fair use
of its source material.6
Footnote 6: Both parties characterize PBL as a “derivative work.” We note that, as a general matter,
“derivative works” and “fair use” are discrete legal categories. Under the Copyright Act, a derivative
work involves a transformation to the work’s “form,” 17 U.S.C. § 101, while fair use involves a
transformation of the work’s “purpose and character,” 17 U.S.C. § 107. PBL is both — it involves the
dramatization of a motion picture, making it a derivative work, and it involves a transformation of the
motion picture’s character from serious to parody, making it non-infringing fair use. The parties here
seem to confuse the distinction between derivative works and fair use. Nonetheless, because neither
party has raised this issue on appeal, and because our analysis applies equally to derivative and nonderivative works so long as the work constitutes lawful fair use, we need not further address questions
raised by the parties’ characterization. This argument flows from the admittedly unusual posture in
which this case arises. Typically, fair use is invoked as a defense against a claim of copyright
infringement brought by the source-material rightsholder. Here, however, Keeling invoked the fairuse principle to establish an affirmative claim against defendants for unauthorized use of her PBL
parody. Hars concedes that Keeling could use the “fair use” doctrine as a “shield” against a claim of
copyright infringement, but argues that she may not use the doctrine as a “sword” to vest a work with
independent copyright protection against third-party infringement.

This argument is inconsistent with the operative statutory language. The Copyright
Act provides that derivative works are entitled to “independent” copyright
protection, separate from any copyright in the preexisting material. 17 U.S.C. §
103(b). Though copyright protection expressly may extend to derivative works

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“employing preexisting material in which copyright subsists,” the statute cautions
that protection “does not extend to any part of the work in which such material has
been used unlawfully.” 17 U.S.C. § 103(a) (emphases supplied). If, however, a work
employs preexisting copyrighted material lawfully — as in the case of a “fair use” —
nothing in the statute prohibits the extension of the “independent” copyright
protection promised by Section 103.7 Id. § 103(b).
Footnote 7: To be sure, the independent copyright protection in the new work is limited to that
work’s original content: “copyright in a compilation or derivative work extends only to the material
contributed by the author of such work, as distinguished from the preexisting material employed in
the work.” 17 U.S.C. § 103(b).

A close reading of the statute therefore makes plain that an unauthorized but lawful
fair use employing preexisting copyrighted material may itself merit copyright
protection. It is not the invocation of fair use that provides the work copyright
protection, and perhaps thinking so has created some confusion on the part of the
defendant. It is the originality of the derivative work that makes it protectable, and
fair use serves only to render lawful the derivative work, such that it may acquire —
as would other lawful derivative works — such protection.
Resisting this statutory principle, Hars argues that the case law does not permit the
extension of independent copyright protection to an unauthorized fair use, and
contends that the only court to have dealt with the issue found that “Congress did
not contemplate such” a result. But in fact, Congress did expressly contemplate the
extension of copyright protection where, as here, a work constituted non-infringing
fair use. The relevant legislative report stated that,
under this provision [(i.e., Section 103(a) of the Copyright Act)], copyright could be
obtained as long as the use of the preexisting work was not “unlawful,” even though
the consent of the copyright owner had not been obtained. For instance, the
unauthorized reproduction of a work might be “lawful” under the doctrine of fair use or an
applicable foreign law, and if so the work incorporating it could be copyrighted.

House Report at 58 (1976) (emphases supplied). This language addresses precisely
the issue raised in the instant appeal. Although “the consent of the copyright owner”
— here, the rightsholder in the Hollywood screenplay Point Break — “had not been
obtained” by Keeling, her resulting parody PBL was “‘lawful’ under the doctrine of
fair use,” and accordingly, it “could be copyrighted.”
We have previously confirmed that, because “derivative works are explicitly included
in the subject matter of copyright as defined by the Copyright Act,” the mere fact
that a litigant’s unauthorized “creations are derivative works is in itself, of course, no
bar to copyrightability.” Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (2d
Cir.1980) (citing 17 U.S.C. § 103). And this statutory interpretation is consistent with
the animating policy behind the fair use doctrine — to fulfill copyright’s core
purpose of promoting development in arts and science. See Campbell, 510 U.S. at 575.
Without any possibility of copyright protection against infringement for her original
fair-use parody, playwrights like Keeling might be dissuaded from creating at all.
Accordingly, we agree with the District Court’s holding that, when a derivative
work’s unauthorized use of preexisting material is fair use and the work contains

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sufficient originality, its author may claim copyright protection under § 103 for her
original creative contributions.
B. Copyright Protection: Selection, Coordination, and Arrangement of UnProtectable Elements
Hars’s second legal argument fares no better. Hars contends that if an author’s
original contributions to a derivative work consist solely of non-copyrightable
individual elements, those contributions cannot support a copyright. Specifically, she
claims that Keeling’s original contributions to the PBL script are insufficient to
warrant copyright protection because they consist entirely of non-copyrightable stage
directions and theatrical devices. See 17 U.S.C. § 102(b) (providing that copyright
protection does not extend to “any idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work”).
We disagree. As the District Court properly found, copyright law protects not only
the individual elements themselves, but the creative choices made in selecting and
arranging even uncopyrightable elements. Indeed, the Copyright Act itself explicitly
protects “compilations,” 17 U.S.C. § 103, and a long line of case law confirms that
copyright covers compilations of raw data or facts, elements which are not
themselves protectable, so long as the compilation itself (including the arrangement
of those elements) possesses some “minimal degree” of creativity, “no matter how
crude, humble or obvious.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345
(1991) (internal quotation marks omitted); see also Harper & Row v. Nation Enters.,
471 U.S. 539, 547 (1985) (“Creation of a nonfiction work, even a compilation of pure
fact, entails originality.”); Silverstein v. Penguin Putnam, Inc., 368 F.3d 77, 80 (2d
Cir.2004) (“It is well settled that compilations of fact may be copyrightable even
though facts themselves are not protected”). The Supreme Court has made clear that
even a telephone directory may be copyrighted if its non-copyrightable factual
elements are arranged with the requisite “minimal degree” of originality. See Feist,
499 U.S. 340. Keeling’s original contributions to PBL clearly exceed this creativity
threshold.8
Footnote 8: We similarly reject Hars’s related argument that Point Break material improperly
“pervades” the PBL script in contravention of Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27
(2d Cir.1982). To the extent it even applies in this case, which is uncertain, Eden Toys requires merely
“some substantial, not merely trivial, originality” to meet the standard for sufficient originality. 697
F.2d at 34 (internal quotation marks omitted). PBL’s transformative parody fulfills this standard, and
its use of a substantial portion of the underlying work presents no hindrance to findings of either fair
use or originality.

To be sure, Hars is correct that Keeling could not copyright the commonly used
individual stage directions and theatrical devices — e.g., the concept of drafting an
audience member to play the lead, the reliance on cue cards, or the use of squirt guns
— which together comprise PBL’s jokes. But Keeling has never sought to do so.
Rather, as the District Court correctly held, “Keeling’s creative contribution, and
thus her copyright, is in the original way in which [she] has selected, coordinated, and
arranged the elements of ... her work” to create new parodic meaning.

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Hars’s legal challenges to the jury’s infringement verdict thus fail. [The Court also
held that the District Court did not err in delivering its jury instructions on originality
and fair use.]
CONCLUSION
To summarize, we hold that:
(1) the author of an unauthorized fair use exhibiting sufficient originality may claim
independent copyright protection under the Copyright Act, 17 U.S.C. § 103, against
infringement for the original creative contributions therein;
(2) copyright protection may extend to a work that exhibits the sufficient minimal
degree of originality in selecting, coordinating, and arranging otherwise unprotectable underlying elements; and
Having rejected each of defendant Hars’s arguments, we AFFIRM the District
Court’s January 11, 2013 judgment in its entirety.
Notes and questions
(1) Point Break Live! was a stage play parody of the unintentionally absurd 1991 film, Point
Break. Point Break Live! took the plot, characters, and much of the dialogue from the
original and added a parodic twist with “jokes, props, exaggerated staging, and humorous
theatrical devices.” The result “irreverent, interactive theatrical experience.” The defendant,
Eve Hars contracted with Keeling to stage the play. However, apparently following the
advice of her lawyer, Hars decided that she did not need Keeling's permission on the theory
that Keeling's copyright claim was invalid. Hars was poorly advised. The Copyright Act
provides that derivative works are entitled to “independent” copyright protection, separate
from any copyright in the preexisting material, provided the new material satisfies the
requirements of originality (i.e., some “modicum of creativity”). Hars seems to have been
relying on the part of Section 103(a) that provides that copyright protection “does not
extend to any part of the work in which such material has been used unlawfully.” Her
reliance was misplaced, “unlawfully” does not mean without the authorization of the
copyright owner. In this case, Keeling was not authorized to make a derivative work by the
owners of the copyright in Point Break, but she was authorized by the Section 107 of the
Act, to the extent that her parody was a fair use, something that the parties seemed to accept.
(2) In Keeling v. Hars, 809 F. 3d 43 (2d Cir. 2015) the Second Circuit held that where the fair
use of a copyrighted work creates a new work, that new work is protected by copyright. That
fair use results in a new copyrightable work has been the law since at least the early 19th
Century. As Robert Maugham explained his Treatise On The Laws Of Literary Property, published
in 1828, “An abridgment of a voluminous work, executed with skill and labor, in a bona fide
manner, is not only lawful in itself . . . and exempt from the charge of piracy[,] but is protected
from invasion by subsequent writers.” (emphasis added). In the late 18th and early 19th Century,
copyright law treated abridgments as noninfringing under principles that we would now
identify as fair use, and it accorded copyright those abridgments themselves and protected
them against “invasion by subsequent writers.”60
60 Robert Maugham, Treatise On The Laws Of Literary Property 126 (Longman, Rees, Orme, Brown, & Green,

1828).

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7. AN OVERVIEW OF COPYRIGHT LIMITATIONS AND EXCEPTIONS
How to think about copyright limitations and exceptions
“True limitations and exceptions” versus “inherent limitations”
Every copyright system creates space for certain limitations and exceptions. The field, scope,
nature, and design of these exceptions vary widely. The processes by which limitations and
exceptions are created are almost equally as varied.
In the United States, there are many specific limitations and exceptions directed at particular
acts, particular actors, and particular circumstances; but there are also significant common
law limitations and exceptions such as the fair use doctrine.
Copyright limitations and exceptions may be legislative in nature, the result of executive
action, the outcome of delegated rule-making authority, or simply a matter of judicial
determination. As the scope and duration of copyright has expanded over the years, the
importance of limitations and exceptions has increased.
Copyright law contains a number of policy levers that determine the scope of the rights of
copyright owners. These include:
•
•
•
•
•
•
•
•
•
•

the threshold of substantial similarity,
the definition of performance,
the definition of public,
the merger doctrine,
the idea expression distinction, scènes à faire, the non-copyrightability of systems, processes
and methods of operation;
the volitional act requirement,
the first sale doctrine (and copyright exhaustion more broadly).
the scope of secondary liability,
the scope and qualifications for notice and take-down safeharbor, and
the doctrine of copyright misuse.

If you take the Blackstonian view of property (“sole and despotic dominion”) and apply it to
copyright, copyright is a right to the absolute control over every use of every word of a
copyrighted book and every pixel of a copyrighted picture. Obviously, no sane person thinks
about copyright this way. Copyright consists of a broad set of rights given the authors for a
particular purpose, so the fact that singing in the shower does not amount to copyright
infringement is not loophole or an exemption, it simply reflects the fundamentally limited
nature of the performance right. Giving authors a veto right over shower singing would not
serve the purposes for which the public performance right was created. As an exercise in
taxonomy, it makes sense to think of some features of copyright law as inherent in the
definition of the rights themselves and others as true limitations and exceptions. Such
inherent limitations would certainly include the idea-expression distinction, and would also
extend to many applications of the fair use doctrine.

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Copyright limitations and exceptions required by international
agreements
[Placeholder for discussion of Berne and TRIPs requirements]

Significant limitations and exceptions to copyright in the United States
Statutory licenses
The Copyright Act of 1976 contains statutory licensing provisions relating to cable and
satellite retransmission of broadcast television, the public performance of sound recordings
over the Internet or via other forms of digital transmission, coin-operated jukeboxes, and the
use of certain works by public broadcasters. Each of these provisions is the result of a
complicated legislative process, and the resulting text often dense and impenetrable.
•
•
•
•
•
•
•
•

§111. Limitations on exclusive rights: Secondary transmissions of broadcast programming by
cable
§112. Limitations on exclusive rights: Ephemeral recordings
§114. Scope of exclusive rights in sound recordings
§115. Scope of exclusive rights in nondramatic musical works: Compulsory license for
making and distributing phonorecords
§116. Negotiated licenses for public performances by means of coin-operated phonorecord
players
§118. Scope of exclusive rights: Use of certain works in connection with noncommercial
broadcasting
§119. Limitations on exclusive rights: Secondary transmissions of distant television
programming by satellite
§122. Limitations on exclusive rights: Secondary transmissions of local television
programming by satellite

Codifying inherent limitations
The Copyright Act of 1976 also codifies at least two significant inherent limitations on
copyright. As noted above, these are provisions that codify limits in copyright that are in
some sense inherent to the definition of the rights themselves. For example, Section 105
excludes United States Government works from copyright subject matter and Section 109
codifies the common law first sale doctrine (a topic discussed in more detail in another
chapter). Both of these provisions could be regarded as codifying inherent limitations in the
scope of copyright rather than as true limitations and exceptions. The same could be said of
Section 113 and Section 120, which address limits on copyright with respect to pictorial,
graphic, and sculptural works and architectural works respectively.

True limitations and exceptions
Four sections of the Act stand out as “true exceptions and limitations” in the terms set out
above. These provisions overlap with the more general application of the fair use doctrine,
but it is important to note such codified fair uses are not subject to the fair use balancing test
(discussed below) and are permissible regardless of the harm to the rights owner.

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Section 110 of the Copyright Act contains a number of other exceptions to the performance
and display rights. These exceptions relate to church services, veterans halls, non-profit
public performances, incidental performances of broadcast radio in small shops and
restaurants, the performance of sound recordings in record stores, performance in the
course of a transmission for the visually disabled, and more. The bulk of the Section 110
limitations are true limitations and exceptions, although the provision (sometimes referred to
as the boom-box exception) could easily be seen as part of the definition of what truly
constitutes a public performance.
Section 108 contains a specific set of exemptions for library photocopying. [Placeholder for
more detailed summary]
Section 117 authorizes the owner of computer software to make a copy or an adaptation of
that software as an essential step in the utilization of the computer program or for
maintenance or repair. [Placeholder for more detailed summary]
Section 121 allows ‘authorized entities’ to reproduce and/or distribute certain works in
specialized formats exclusively for use by blind or other persons with disabilities.
Section 1008 of provides that “no action may be brought under this title alleging
infringement of copyright based on the manufacture, importation, or distribution of a digital
audio recording device, a digital audio recording medium, an analog recording device, or an
analog recording medium, or based on the noncommercial use by a consumer of such a
device or medium for making digital musical recordings or analog musical recordings.” This
section was added to the Act in 1992 by the Audio Home Recording Act (“AHRA”). The
AHRA was a legislative response to the new technology of digital audio tape.

Where does fair use fit in?
In its modern context, fair use is a flexible standard that limits the scope of copyright
protection and renders certain actions relating to copyrighted works noninfringing. Activities
that courts have regarded as fair use that may have otherwise been infringing include:
quoting a significant portion of a work for the purpose of criticism, illustration, comment, or
clarification; parodying a work; and copying part of a work in the course of classroom
activities.61
Fair use is necessary, in part, because licensing and other private ordering mechanisms do
not provide a solution for cases involving high transaction costs, strategic holdouts, and
inadvertent copying. The fair use doctrine is particularly important in situations where the
costs of obtaining permission outweigh the benefits of the use. The doctrine also plays a
mediating role in situations where the copyright owner withholds permission for reasons
that society finds unacceptable. For example, as illustrated by Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994), a copyright owner usually cannot deny permission to copy in order to
stifle parody, criticism, or social debate.
The fair use doctrine does a lot of work in the modern American copyright system. In many
ways fair use functions as an inherent limitation on copyright, similar to the idea-expression
dichotomy or the requirement of substantial similarity. However, in other respects the fair
use doctrine produces a set of rules through case law that look more like true limitations and
61 See U.S. COPYRIGHT OFFICE, REPORT OF THE REGISTER OF COPYRIGHTS ON THE GENERAL REVISION OF

THE U.S. COPYRIGHT LAW (1961).

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exceptions. There is much more that could be said about this topic, but we will forego an
extended theoretical discussion and move directly into the relevant fair use case law.

International constraints on copyright limitations and exceptions
[The current section is a placeholder for a more in-depth discussion to be developed at a
later date.]

The Three Step Test
The Berne Convention, the TRIPs Agreement, and a number of other multilateral and
bilateral agreements contain some version of the “three-step” test for evaluating copyright
limitations and exceptions.
Berne Convention (Paris Text 1971) Article 9
(1) Authors of literary and artistic works protected by this Convention shall have the
exclusive right of authorizing the reproduction of these works, in any manner or
form.
(2) It shall be a matter for legislation in the countries of the Union to permit the
reproduction of such works in certain special cases, provided that such reproduction
does not conflict with a normal exploitation of the work and does not unreasonably
prejudice the legitimate interests of the author.
TRIPs Agreement. Article 13. Limitations and Exceptions
Members shall confine limitations or exceptions to exclusive rights to certain special
cases which do not conflict with a normal exploitation of the work and do not
unreasonably prejudice the legitimate interests of the right holder.

It is worth noting that the Berne convention itself contains a number of significant
limitations and exceptions such as those relating to the reporting and broadcasting of public
speeches. The Berne Convention also contains special provisions relating to developing
countries in the Appendix to the Convention. These provisions are incorporated into the
TRIPs Agreement as well.
World Trade Organization Panel Decision re: US – Section 110(5) (DS160)
No doubt, some individual limitations and exceptions on copyright may fall foul of the three
step test. The European Union successfully objected to section 110(5) of the Copyright Act
on this basis in a dispute resolution proceeding before the WTO in 2000. Section 110 of the
United States Copyright Act provides for limitations on exclusive rights granted to copyright
holders for their copyrighted work, in the form of exemptions for broadcast by non-right
holders of certain performances and displays, namely, “homestyle exemption” (for “dramatic”
musical works) and “business exemption” (works other than “dramatic” musical works).
The Panel concluded that the “homestyle exemption” was an acceptable copyright exception
under the requirements of Art. 13 because it was confined to “certain special cases”, did not
conflict with a normal exploitation of the work, and did not cause unreasonable prejudice to
the legitimate interests of the right holders.
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However, the Panel found that the “business exemption” did not meet these requirements
because its scope was too broad – the provisions could apply to 70 percent of eating and
drinking establishments and 45 percent of retail establishments in the United States – and
because the exemption deprived the owners of musical works the chance to earn royalties
from broadcasts of their works on radio and television.

How Restrictive is the Three-Step Test?
This 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
Canadian provisions on fair dealing.
Although it is occasionally raised for rhetorical flair, the compatibility of fair use with various
international agreements should not be a matter of serious concern for three reasons:
1. Drafting history of Berne Article 9(2)
2. Subsequent international agreements and state practice
3. The United States position on the compatibility of fair use with Berne Article 9(2)
The drafting history of Berne Article 9(2) reveals that it was not intended as a rigid
prohibition on limitations and exceptions to copyright, but rather as an abstract open
formula capable of encompassing a wide range of exceptions.
Martin Senftleben has made a detailed study of the history of the three step test, beginning
with its adoption in 1967. 62 Senftleben’s research shows that an early draft of 9(2) used the
language “in certain particular cases where the reproduction is not contrary to the legitimate
interests of the author.” This text was modified at the suggestion of the United Kingdom
delegation to the now familiar language — “in certain special cases where the reproduction
does not unreasonably prejudice the legitimate interests of the authors.”
Although fair dealing in the U.K. by the late 1960’s was arguably narrower than fair use in
the U.S., it was nonetheless an abstract standard (applied to particular circumstances)
requiring judicial application and development. It is inconceivable that the U.K. intended to
abandon fair dealing when it suggested that limitations and exceptions be limited to “certain
special cases”.
Read as a single sentence, Article 9(2) is a general statement that does as much to enable
limitations and exceptions as it does to confine them. As is so often the case in international
agreements, this generality was necessary in order to reconcile the many different types of
exceptions various nations had already adopted.63
Second, subsequent international agreements and state practice confirm this understanding.
Versions of the three step test have been incorporated into international agreements such as
62 See generally, Martin Senftleben, Copyright, Limitations, and the Three-Step Test: Analysis of the Three-Step Test in

International and EC Copyright Law, Kluwer Law International, 2004.
63 The

literature on this topic is extensive. For the leading account, see, Martin Senftleben, COPYRIGHT,
LIMITATIONS, AND THE THREE-STEP TEST: ANALYSIS OF THE THREE-STEP TEST IN INTERNATIONAL AND EC
COPYRIGHT LAW, KLUWER LAW INTERNATIONAL, 2004; see also Declaration on a Balanced Interpretation of the
“Three Step Test” in Copyright Law released by leading legal scholars from the Max Planck Institute and other
leading
institutions,
July
2008,
at:
http://www.ip.mpg.de/files/pdf2/declaration_three_step_test_final_english1.pdf

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TRIPs, the WIPO Copyright treaty, NAFTA, and United States Free Trade Agreements with
Australia, Bahrain, Chile, Jordan, Morocco, Singapore, and South Korea. In 1996, the
signatories to the WIPO Copyright Treaty released the following ‘Agreed Statement
Concerning Article 10 WIPO Copyright Treaty’:
It is understood that the provisions of Article 10 permit Contracting Parties to carry
forward and appropriately extend into the digital environment limitations and
exceptions in their national laws which have been considered acceptable under the
Berne Convention.

Similarly, these provisions should be understood to permit Contracting Parties to devise new
exceptions and limitations that are appropriate in the digital network environment.64
Third, the United States takes the position that nothing in existing United States copyright
law, as interpreted by the federal courts of appeals, would be inconsistent with the three-step
test.65 The United States made a number of changes to its law when it joined the Berne
Convention in 1989. However, the fair use doctrine does not appear to have been
considered as an obstacle to Berne compliance at that time. It is hard to imagine that the
United States would have agreed to accede to the Berne Convention if it believed that such a
central aspect of its copyright law was not Berne compatible. It is inconceivable that the
United States would actively promote the incorporation of a three step test into TRIPs in
1994, the WCT in 1996, and FTAs with Australia, Bahrain, Chile, Jordan, Morocco,
Singapore, and South Korea (among others) if the fair use doctrine presented a fundamental
conflict with that test.

Agreed Statements Concerning the WIPO Copyright Treaty, Statement Concerning Article 10, WIPO
Diplomatic Conference, WIPO Doc. No. CRNR/DC/96 (1996).
64

65 See,

Letter of Peter Jaszi, Michael Carroll and Sean Flynn to United States Trade Representative,
Ambassador
Ronald
Kirk, September 8, 2012. Available at http://infojustice.org/wpcontent/uploads/2012/09/PIJIP-letter-to-Kirk-September-8-2012.pdf.

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8. EXPRESSIVE FAIR USE—TRANSFORMATIVE USE

Campbell v. Acuff-Rose and the modern era of fair use
Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994) was a major turning point in the modern
doctrine of fair use. So much so that cases decided prior to Campbell must be read with
caution. To understand the confused state of fair use jurisprudence prior to the Supreme
Court’s 1994 intervention in Campbell v. Acuff-Rose requires a digression into the facts and
reasoning of two other fair use cases decided by the Supreme Court.

The Sony “Betamax” case
The Sony Betamax machine was the first mass-market video cassette recorder. The Betamax
went on sale in the United States in 1975; a year later two film studios, Universal City
Studios and Walt Disney Productions, filed a law suit alleging that consumers were using the
Betamax to infringe their copyrights and that Sony Corporation, the manufacturer of the
device, was responsible for any copyright infringement made possible by the new machine.
Before the Supreme Court could determine the manufacturer’s liability, it first had to
determine whether the consumers who used the Betamax machines in their own homes were
infringing copyright in the first place. Sony v. Universal City Studios was initially argued before
the Court in January of 1983, but the issues proved to be so fraught that the Justices held the
case over for a term and scheduled it for re-argument in October 1983. In December the
following year the Supreme Court finally issued its ruling.
In Sony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984), the Supreme Court
held by a five to four majority that non-commercial consumer time-shifting of free-to-air
broadcast television was fair use. In other words, although consumers had no right to use
the VCR to permanent copies of broadcasts, they did have the right to make temporary
copies so that they could watch programs at a more convenient time. The majority opinion,
authored by Justice Stevens, found time-shifting in these circumstances was fair use for two
principle reasons. First, because time-shifting merely enabled viewers to see works which
they had been invited to watch in their entirety free of charge, the fact that the entire work
was reproduced, did not have its ordinary effect of militating against a finding of fair use.
Second, because the plaintiffs had offered no convincing evidence of market harm, the noncommercial use of the VCR by consumers should be considered fair use. We consider the
merits and significance of this decision as it relates to the VCR later in this chapter.
Harper & Row
Harper & Row v. The Nation took place in the aftermath of the Watergate Crisis and the
ensuing resignation of President Richard M. Nixon. Nixon’s suspected involvement with the
cover-up of the politically motivated burglary of the Democratic National Headquarters at
the Watergate hotel complex led to dramatic confrontations between the President and the
other branches of government. With impeachment by the House of Representatives and
conviction by the Senate appearing all but certain, Nixon resigned as President on August 9,
1974. On September 8, 1974, his successor, President Gerald Ford, pardoned him of any and
all crimes relating to Watergate even though he not yet been indicted.
A Time to Heal, President Ford’s memoir of his personal and political life was due to be
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published in mid-1979. Ford’s publisher had given Time Magazine exclusive advanced access
to the book for a fee of $25,000 (about $90,000 in 2018 dollars) and Time was licensed to
publish excerpts in its mid-April issue, a week before the memoir was to be released publicly.
However, Time’s story was scooped by another magazine, The Nation, which published an
article entitled, The Ford Memoirs, Behind the Pardon on April 3, 1979. Victor Navasky, The
Nation’s editor, had been given temporary access to a draft of Ford’s memoir from an
undisclosed source. Navasky worked quickly to produce a 2250 word article quoting and
paraphrasing from a number of sections of the memoirs, focusing on the most newsworthy
aspect of the book, Ford’s account of the Nixon pardon which he considered to be “a real
hot news story.” Having been preempted by The Nation, Time abandoned its story and
withheld the second half of its payment under the contract with Ford’s publisher, Harper &
Row. Harper & Row, in turn, sued the Nation for copyright infringement.
In Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985), the majority of the Supreme
Court held that various quotes and paraphrases taken from A Time to Heal by the defendants
were substantial enough to infringe copyright and were not protected by the fair use doctrine.
The Supreme Court majority saw The Nation as a bad actor in possession of a “purloined
manuscript.” Writing for the majority, Justice O’Connor gave no credence to The Nation’s
assertion of a news reporting privilege. Instead, she emphasized how the magazine had gone
beyond merely reporting the facts and usurped the most valuable portions of Ford’s original
expression prior to publication. For the majority, Time’s cancellation of its own article and
refusal to pay the second installment under the contract were a direct consequence of being
scooped by the defendant. These facts proved beyond any doubt that the defendant’s
conduct had an adverse market effect. This market effect was, according to the majority,
undoubtedly the single most important element of fair use.
Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994)
Justice Souter delivered the opinion of the Court.
We are called upon to decide whether 2 Live Crew’s commercial parody of Roy
Orbison’s song, “Oh, Pretty Woman,” may be a fair use within the meaning of the
Copyright Act of 1976, 17 U.S. C. § 107. Although the District Court granted
summary judgment for 2 Live Crew, the Court of Appeals reversed, holding the
defense of fair use barred by the song’s commercial character and excessive
borrowing. Because we hold that a parody’s commercial character is only one
element to be weighed in a fair use enquiry, and that insufficient consideration was
given to the nature of parody in weighing the degree of copying, we reverse and
remand.
I
In 1964, Roy Orbison and William Dees wrote a rock ballad called “Oh, Pretty
Woman” and assigned their rights in it to respondent Acuff-Rose Music, Inc. See
Appendix A, infra. Acuff-Rose registered the song for copyright protection.
Petitioners Luther R. Campbell, Christopher Wongwon, Mark Ross, and David
Hobbs are collectively known as 2 Live Crew, a popular rap music group. In 1989,
Campbell wrote a song entitled “Pretty Woman,” which he later described in an
affidavit as intended, “through comical lyrics, to satirize the original work. . . .” On
July 5, 1989, 2 Live Crew’s manager informed Acuff-Rose that 2 Live Crew had
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written a parody of “Oh, Pretty Woman,” that they would afford all credit for
ownership and authorship of the original song to Acuff-Rose, Dees, and Orbison,
and that they were willing to pay a fee for the use they wished to make of it.
Enclosed with the letter were a copy of the lyrics and a recording of 2 Live Crew’s
song. Acuff-Rose’s agent refused permission, stating that “I am aware of the success
enjoyed by ‘The 2 Live Crews’, but I must inform you that we cannot permit the use
of a parody of ‘Oh, Pretty Woman.’” Nonetheless, in June or July 1989, 2 Live Crew
released records, cassette tapes, and compact discs of “Pretty Woman” in a collection
of songs entitled “As Clean As They Wanna Be.” The albums and compact discs
identify the authors of “Pretty Woman” as Orbison and Dees and its publisher as
Acuff-Rose.
Almost a year later, after nearly a quarter of a million copies of the recording had
been sold, Acuff-Rose sued 2 Live Crew and its record company, Luke Skyywalker
Records, for copyright infringement. The District Court granted summary judgment
for 2 Live Crew, reasoning that the commercial purpose of 2 Live Crew’s song was
no bar to fair use; that 2 Live Crew’s version was a parody, which “quickly
degenerates into a play on words, substituting predictable lyrics with shocking ones”
to show “how bland and banal the Orbison song” is; that 2 Live Crew had taken no
more than was necessary to “conjure up” the original in order to parody it; and that
it was “extremely unlikely that 2 Live Crew’s song could adversely affect the market
for the original.” The District Court weighed these factors and held that 2 Live
Crew’s song made fair use of Orbison’s original.
The Court of Appeals for the Sixth Circuit reversed and remanded. 972 F. 2d 1429,
1439 (1992). Although it assumed for the purpose of its opinion that 2 Live Crew’s
song was a parody of the Orbison original, the Court of Appeals thought the District
Court had put too little emphasis on the fact that “every commercial use . . . is
presumptively . . . unfair,” Sony Corp. of America v. Universal City Studios, Inc., 464 U.S.
417, 451 (1984), and it held that “the admittedly commercial nature” of the parody
“requires the conclusion” that the first of four factors relevant under the statute
weighs against a finding of fair use. Next, the Court of Appeals determined that, by
“taking the heart of the original and making it the heart of a new work,” 2 Live Crew
had, qualitatively, taken too much. Finally, after noting that the effect on the
potential market for the original (and the market for derivative works) is
“undoubtedly the single most important element of fair use,” Harper & Row,
Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 566 (1985), the Court of Appeals
faulted the District Court for “refusing to indulge the presumption” that “harm for
purposes of the fair use analysis has been established by the presumption attaching
to commercial uses.” In sum, the court concluded that its “blatantly commercial
purpose . . . prevents this parody from being a fair use.”
We granted certiorari to determine whether 2 Live Crew’s commercial parody could
be a fair use.
II
It is uncontested here that 2 Live Crew’s song would be an infringement of AcuffRose’s rights in “Oh, Pretty Woman,” under the Copyright Act of 1976, 17 U.S. C. §
106, but for a finding of fair use through parody. From the infancy of copyright

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protection, some opportunity for fair use of copyrighted materials has been thought
necessary to fulfill copyright’s very purpose, “[t]o promote the Progress of Science
and useful Arts. . . .” U.S. Const., Art. I, § 8, cl. 8.5
Footnote 5: The exclusion of facts and ideas from copyright protection serves that goal as well. See §
102(b) (“In no case does copyright protection for an original work of authorship extend to any idea,
procedure, process, system, method of operation, concept, principle, or discovery...”); Feist Publications,
Inc. v. Rural Telephone Service Co., 499 U.S. 340, 359 (1991) (“[F]acts contained in existing works may be
freely copied”); Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 547 (1985) (copyright
owner’s rights exclude facts and ideas, and fair use).

For as Justice Story explained, “[i]n truth, in literature, in science and in art, there are,
and can be, few, if any, things, which in an abstract sense, are strictly new and
original throughout. Every book in literature, science and art, borrows, and must
necessarily borrow, and use much which was well known and used before.” Emerson v.
Davies, 8 F. Cas. 615, 619 (No. 4,436) (CCD Mass. 1845). Similarly, Lord
Ellenborough expressed the inherent tension in the need simultaneously to protect
copyrighted material and to allow others to build upon it when he wrote, “while I
shall think myself bound to secure every man in the enjoyment of his copy-right, one
must not put manacles upon science.” Carey v. Kearsley 170 Eng. Rep. 679, 681 (K. B.
1803). In copyright cases brought under the Statute of Anne of 1710, English courts
held that in some instances “fair abridgements” would not infringe an author’s rights,
and although the First Congress enacted our initial copyright statute, Act of May 31,
1790, 1 Stat. 124, without any explicit reference to “fair use,” as it later came to be
known, the doctrine was recognized by the American courts nonetheless.
In Folsom v. Marsh, 9 F. Cas. 342 (No. 4,901) (CCD Mass. 1841), Justice Story distilled
the essence of law and methodology from the earlier cases: “look to the nature and
objects of the selections made, the quantity and value of the materials used, and the
degree in which the use may prejudice the sale, or diminish the profits, or supersede
the objects, of the original work.” Id., at 348. Thus expressed, fair use remained
exclusively judge-made doctrine until the passage of the 1976 Copyright Act, in
which Justice Story’s summary is discernible:
§ 107. Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A, the fair use of a
copyrighted work, including such use by reproduction in copies or phonorecords or
by any other means specified by that section, for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for classroom use),
scholarship, or research, is not an infringement of copyright. In determining
whether the use made of a work in any particular case is a fair use the factors to be
considered shall include—
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.

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The fact that a work is unpublished shall not itself bar a finding of fair use if such
finding is made upon consideration of all the above factors.

Congress meant § 107 “to restate the present judicial doctrine of fair use, not to
change, narrow, or enlarge it in any way” and intended that courts continue the
common-law tradition of fair use adjudication. H. R. Rep. No. 94-1476, p. 66 (1976)
(hereinafter House Report); S. Rep. No. 94-473, p. 62 (1975) (hereinafter Senate
Report). The fair use doctrine thus “permits [and requires] courts to avoid rigid
application of the copyright statute when, on occasion, it would stifle the very
creativity which that law is designed to foster.” Stewart v. Abend, 495 U.S. 207, 236
(1990) (internal quotation marks and citation omitted).
The task is not to be simplified with bright-line rules, for the statute, like the doctrine
it recognizes, calls for case-by-case analysis. Harper & Row, 471 U. S., at 560; Sony,
464 U.S., at 448, and n. 31; House Report, pp. 65-66; Senate Report, p. 62. The text
employs the terms “including” and “such as” in the preamble paragraph to indicate
the “illustrative and not limitative” function of the examples given, § 101; see Harper
& Row, supra, at 561, which thus provide only general guidance about the sorts of
copying that courts and Congress most commonly had found to be fair uses. Nor
may the four statutory factors be treated in isolation, one from another. All are to be
explored, and the results weighed together, in light of the purposes of copyright.10
Footnote 10: Because the fair use enquiry often requires close questions of judgment as to the extent
of permissible borrowing in cases involving parodies (or other critical works), courts may also wish to
bear in mind that the goals of the copyright law, “to stimulate the creation and publication of edifying
matter,” Leval, Toward a Fair Use Standard, 103 Harvard Law Review 1105, 1134 (1990) (hereinafter
Leval), are not always best served by automatically granting injunctive relief when parodists are found
to have gone beyond the bounds of fair use. See 17 U.S. C. § 502(a) (court “may . . . grant . . .
injunctions on such terms as it may deem reasonable to prevent or restrain infringement”) (emphasis
added); Leval 1132 (while in the “vast majority of cases, [an injunctive] remedy is justified because
most infringements are simple piracy,” such cases are “worlds apart from many of those raising
reasonable contentions of fair use” where “there may be a strong public interest in the publication of
the secondary work [and] the copyright owner’s interest may be adequately protected by an award of
damages for whatever infringement is found”); Abend v. MCA, Inc., 863 F. 2d 1465, 1479 (CA9 1988)
(finding “special circumstances” that would cause “great injustice” to defendants and “public injury”
were injunction to issue), aff’d sub nom. Stewart v. Abend, 495 U.S. 207 (1990).

A
The first factor in a fair use enquiry is “the purpose and character of the use,
including whether such use is of a commercial nature or is for nonprofit educational
purposes.” § 107(1). This factor draws on Justice Story’s formulation, “the nature
and objects of the selections made.” Folsom v. Marsh, supra, at 348. The enquiry here
may be guided by the examples given in the preamble to § 107, looking to whether
the use is for criticism, or comment, or news reporting, and the like, see § 107. The
central purpose of this investigation is to see, in Justice Story’s words, whether the
new work merely “supersede[s] the objects” of the original creation, Folsom v. Marsh,
supra, at 348; accord, Harper & Row, supra, at 562 (“supplanting” the original), or
instead adds something new, with a further purpose or different character, altering
the first with new expression, meaning, or message; it asks, in other words, whether
and to what extent the new work is “transformative.” Leval 1111. Although such
transformative use is not absolutely necessary for a finding of fair use, Sony, supra, at
455, n. 40,11 the goal of copyright, to promote science and the arts, is generally
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furthered by the creation of transformative works. Such works thus lie at the heart of
the fair use doctrine’s guarantee of breathing space within the confines of copyright,
see, e.g., Sony, supra, at 478-480 (Blackmun, J., dissenting), and the more
transformative the new work, the less will be the significance of other factors, like
commercialism, that may weigh against a finding of fair use.
Footnote 11: The obvious statutory exception to this focus on transformative uses is the straight
reproduction of multiple copies for classroom distribution.

This Court has only once before even considered whether parody may be fair use,
and that time issued no opinion because of the Court’s equal division. Benny v. Loew’s
Inc., 239 F. 2d 532 (CA9 1956), aff’d sub nom. Columbia Broadcasting System, Inc. v.
Loew’s Inc., 356 U.S. 43 (1958). Suffice it to say now that parody has an obvious claim
to transformative value, as Acuff-Rose itself does not deny. Like less ostensibly
humorous forms of criticism, it can provide social benefit, by shedding light on an
earlier work, and, in the process, creating a new one. We thus line up with the courts
that have held that parody, like other comment or criticism, may claim fair use under
§ 107. See, e.g., Fisher v. Dees, 794 F. 2d 432 (CA9 1986) (“When Sonny Sniffs Glue,”
a parody of “When Sunny Gets Blue,” is fair use); Elsmere Music, Inc. v. National
Broadcasting Co., 482 F. Supp. 741 (SDNY), aff’d, 623 F. 2d 252 (CA2 1980) (“I Love
Sodom,” a “Saturday Night Live” television parody of “I Love New York,” is fair
use); see also House Report, p. 65; Senate Report, p. 61 (“[U]se in a parody of some of
the content of the work parodied” may be fair use).
The germ of parody lies in the definition of the Greek parodeia, quoted in Judge
Nelson’s Court of Appeals dissent, as “a song sung alongside another.” 972 F. 2d, at
1440, quoting 7 Encyclopedia Britannica 768 (15th ed. 1975). Modern dictionaries
accordingly describe a parody as a “literary or artistic work that imitates the
characteristic style of an author or a work for comic effect or ridicule,” or as a
“composition in prose or verse in which the characteristic turns of thought and
phrase in an author or class of authors are imitated in such a way as to make them
appear ridiculous.” For the purposes of copyright law, the nub of the definitions, and
the heart of any parodist’s claim to quote from existing material, is the use of some
elements of a prior author’s composition to create a new one that, at least in part,
comments on that author’s works. See, e.g., Fisher v. Dees, supra, at 437; MCA, Inc. v.
Wilson, 677 F. 2d 180, 185 (CA2 1981). If, on the contrary, the commentary has no
critical bearing on the substance or style of the original composition, which the
alleged infringer merely uses to get attention or to avoid the drudgery in working up
something fresh, the claim to fairness in borrowing from another’s work diminishes
accordingly (if it does not vanish), and other factors, like the extent of its
commerciality, loom larger.14
Footnote 14: A parody that more loosely targets an original than the parody presented here may still
be sufficiently aimed at an original work to come within our analysis of parody. If a parody whose
wide dissemination in the market runs the risk of serving as a substitute for the original or licensed
derivatives (see infra, at 590-594, discussing factor four), it is more incumbent on one claiming fair use
to establish the extent of transformation and the parody’s critical relationship to the original. By
contrast, when there is little or no risk of market substitution, whether because of the large extent of
transformation of the earlier work, the new work’s minimal distribution in the market, the small
extent to which it borrows from an original, or other factors, taking parodic aim at an original is a less

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critical factor in the analysis, and looser forms of parody may be found to be fair use, as may satire
with lesser justification for the borrowing than would otherwise be required.

Parody needs to mimic an original to make its point, and so has some claim to use
the creation of its victim’s (or collective victims’) imagination, whereas satire can
stand on its own two feet and so requires justification for the very act of borrowing.15
Footnote 15: Satire has been defined as a work “in which prevalent follies or vices are assailed with
ridicule,” 14 Oxford English Dictionary at 500, or are “attacked through irony, derision, or wit,”
American Heritage Dictionary at 1604.

The fact that parody can claim legitimacy for some appropriation does not, of course,
tell either parodist or judge much about where to draw the line. Like a book review
quoting the copyrighted material criticized, parody may or may not be fair use, and
petitioners’ suggestion that any parodic use is presumptively fair has no more
justification in law or fact than the equally hopeful claim that any use for news
reporting should be presumed fair, see Harper & Row, 471 U.S., at 561. The Act has
no hint of an evidentiary preference for parodists over their victims, and no
workable presumption for parody could take account of the fact that parody often
shades into satire when society is lampooned through its creative artifacts, or that a
work may contain both parodic and nonparodic elements. Accordingly, parody, like
any other use, has to work its way through the relevant factors, and be judged case
by case, in light of the ends of the copyright law.
Here, the District Court held, and the Court of Appeals assumed, that 2 Live Crew’s
“Pretty Woman” contains parody, commenting on and criticizing the original work,
whatever it may have to say about society at large. As the District Court remarked,
the words of 2 Live Crew’s song copy the original’s first line, but then “quickly
degenerate into a play on words, substituting predictable lyrics with shocking ones
that derisively demonstrate how bland and banal the Orbison song seems to them.”
Judge Nelson, dissenting below, came to the same conclusion, that the 2 Live Crew
song “was clearly intended to ridicule the white-bread original” and “reminds us that
sexual congress with nameless streetwalkers is not necessarily the stuff of romance
and is not necessarily without its consequences. The singers (there are several) have
the same thing on their minds as did the lonely man with the nasal voice, but here
there is no hint of wine and roses.” Although the majority below had difficulty
discerning any criticism of the original in 2 Live Crew’s song, it assumed for
purposes of its opinion that there was some.
We have less difficulty in finding that critical element in 2 Live Crew’s song than the
Court of Appeals did, although having found it we will not take the further step of
evaluating its quality. The threshold question when fair use is raised in defense of
parody is whether a parodic character may reasonably be perceived.16
Footnote 16: The only further judgment, indeed, that a court may pass on a work goes to an
assessment of whether the parodic element is slight or great, and the copying small or extensive in
relation to the parodic element, for a work with slight parodic element and extensive copying will be
more likely to merely “supersede the objects” of the original. See infra, at 586-594, discussing factors
three and four.

Whether, going beyond that, parody is in good taste or bad does not and should not
matter to fair use. As Justice Holmes explained, “it would be a dangerous
undertaking for persons trained only to the law to constitute themselves final judges
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of the worth of [a work], outside of the narrowest and most obvious limits. At the
one extreme some works of genius would be sure to miss appreciation. Their very
novelty would make them repulsive until the public had learned the new language in
which their author spoke.” Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251
(1903) (circus posters have copyright protection); cf. Yankee Publishing Inc. v. News
America Publishing, Inc., 809 F. Supp. 267, 280 (SDNY 1992) (Leval, J.) (“First
Amendment protections do not apply only to those who speak clearly, whose jokes
are funny, and whose parodies succeed”) (trademark case).
While we might not assign a high rank to the parodic element here, we think it fair to
say that 2 Live Crew’s song reasonably could be perceived as commenting on the
original or criticizing it, to some degree. 2 Live Crew juxtaposes the romantic
musings of a man whose fantasy comes true, with degrading taunts, a bawdy demand
for sex, and a sigh of relief from paternal responsibility. The later words can be taken
as a comment on the naivete of the original of an earlier day, as a rejection of its
sentiment that ignores the ugliness of street life and the debasement that it signifies.
It is this joinder of reference and ridicule that marks off the author’s choice of
parody from the other types of comment and criticism that traditionally have had a
claim to fair use protection as transformative works.17
Footnote 17: We note in passing that 2 Live Crew need not label their whole album, or even this
song, a parody in order to claim fair use protection, nor should 2 Live Crew be penalized for this
being its first parodic essay. Parody serves its goals whether labeled or not, and there is no reason to
require parody to state the obvious (or even the reasonably perceived).

The Court of Appeals, however, immediately cut short the enquiry into 2 Live
Crew’s fair use claim by confining its treatment of the first factor essentially to one
relevant fact, the commercial nature of the use. The court then inflated the
significance of this fact by applying a presumption ostensibly culled from Sony, that
“every commercial use of copy-righted material is presumptively unfair. . . .” Sony,
464 U.S., at 451. In giving virtually dispositive weight to the commercial nature of
the parody, the Court of Appeals erred.
The language of the statute makes clear that the commercial or nonprofit educational
purpose of a work is only one element of the first factor enquiry into its purpose and
character. Section 107(1) uses the term “including” to begin the dependent clause
referring to commercial use, and the main clause speaks of a broader investigation
into “purpose and character.” As we explained in Harper & Row, Congress resisted
attempts to narrow the ambit of this traditional enquiry by adopting categories of
presumptively fair use, and it urged courts to preserve the breadth of their
traditionally ample view of the universe of relevant evidence. 471 U. S., at 561; House
Report, p. 66. Accordingly, the mere fact that a use is educational and not for profit
does not insulate it from a finding of infringement, any more than the commercial
character of a use bars a finding of fairness. If, indeed, commerciality carried
presumptive force against a finding of fairness, the presumption would swallow
nearly all of the illustrative uses listed in the preamble paragraph of § 107, including
news reporting, comment, criticism, teaching, scholarship, and research, since these
activities “are generally conducted for profit in this country.” Harper & Row, supra, at
592 (Brennan, J., dissenting). Congress could not have intended such a rule, which
certainly is not inferable from the common-law cases, arising as they did from the

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world of letters in which Samuel Johnson could pronounce that “[n]o man but a
blockhead ever wrote, except for money.” 3 Boswell’s Life of Johnson 19 (G. Hill ed.
1934).
Sony itself called for no hard evidentiary presumption. There, we emphasized the
need for a “sensitive balancing of interests,” 464 U.S., at 455, n. 40, noted that
Congress had “eschewed a rigid, bright-line approach to fair use,” id., at 449, n. 31,
and stated that the commercial or nonprofit educational character of a work is “not
conclusive,” id., at 448-449, but rather a fact to be “weighed along with other[s] in
fair use decisions,” id., at 449, n. 32 (quoting House Report, p. 66). The Court of
Appeals’ elevation of one sentence from Sony to a per se rule thus runs as much
counter to Sony itself as to the long common-law tradition of fair use adjudication.
Rather, as we explained in Harper & Row, Sony stands for the proposition that the
“fact that a publication was commercial as opposed to nonprofit is a separate factor
that tends to weigh against a finding of fair use.” 471 U.S., at 562. But that is all, and
the fact that even the force of that tendency will vary with the context is a further
reason against elevating commerciality to hard presumptive significance. The use, for
example, of a copyrighted work to advertise a product, even in a parody, will be
entitled to less indulgence under the first factor of the fair use enquiry than the sale
of a parody for its own sake, let alone one performed a single time by students in
school. See generally Fisher v. Dees, 794 F. 2d, at 437; Maxtone-Graham v. Burtchaell, 803
F. 2d 1253, 1262 (CA2 1986); Sega Enterprises Ltd. v. Accolade, Inc., 977 F. 2d 1510,
1522 (CA9 1992).18
Footnote 18: Finally, regardless of the weight one might place on the alleged infringer’s state of mind,
compare Harper & Row, 471 U. S., at 562 (fair use presupposes good faith and fair dealing) (quotation
marks omitted), with Folsom v. Marsh, 9 F. Cas. 342, 349 (No. 4,901) (CCD Mass. 1841) (good faith
does not bar a finding of infringement); Leval 1126-1127 (good faith irrelevant to fair use analysis), we
reject Acuff-Rose’s argument that 2 Live Crew’s request for permission to use the original should be
weighed against a finding of fair use. Even if good faith were central to fair use, 2 Live Crew’s actions
do not necessarily suggest that they believed their version was not fair use; the offer may simply have
been made in a good-faith effort to avoid this litigation. If the use is otherwise fair, then no
permission need be sought or granted. Thus, being denied permission to use a work does not weigh
against a finding of fair use. See Fisher v. Dees, 794 F. 2d 432, 437 (CA9 1986).

B
The second statutory factor, “the nature of the copy-righted work,” § 107(2), draws
on Justice Story’s expression, the “value of the materials used.” Folsom v. Marsh, 9 F.
Cas., at 348. This factor calls for recognition that some works are closer to the core
of intended copyright protection than others, with the consequence that fair use is
more difficult to establish when the former works are copied. We agree with both
the District Court and the Court of Appeals that the Orbison original’s creative
expression for public dissemination falls within the core of the copyright’s protective
purposes. This fact, however, is not much help in this case, or ever likely to help
much in separating the fair use sheep from the infringing goats in a parody case,
since parodies almost invariably copy publicly known, expressive works.
C
The third factor asks whether “the amount and substantiality of the portion used in
relation to the copyrighted work as a whole,” § 107(3) (or, in Justice Story’s words,

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“the quantity and value of the materials used,” Folsom v. Marsh, supra, at 348) are
reasonable in relation to the purpose of the copying. Here, attention turns to the
persuasiveness of a parodist’s justification for the particular copying done, and the
enquiry will harken back to the first of the statutory factors, for, as in prior cases, we
recognize that the extent of permissible copying varies with the purpose and
character of the use. See Sony, supra, at 449-450 (reproduction of entire work “does
not have its ordinary effect of militating against a finding of fair use” as to home
videotaping of television programs); Harper & Row, supra, at 564 (“[E]ven substantial
quotations might qualify as fair use in a review of a published work or a news
account of a speech” but not in a scoop of a soon-to-be-published memoir). The
facts bearing on this factor will also tend to address the fourth, by revealing the
degree to which the parody may serve as a market substitute for the original or
potentially licensed derivatives. See Leval 1123.
The District Court considered the song’s parodic purpose in finding that 2 Live
Crew had not helped themselves overmuch. The Court of Appeals disagreed, stating
that “[w]hile it may not be inappropriate to find that no more was taken than
necessary, the copying was qualitatively substantial. . . . We conclude that taking the
heart of the original and making it the heart of a new work was to purloin a
substantial portion of the essence of the original.”
The Court of Appeals is of course correct that this factor calls for thought not only
about the quantity of the materials used, but about their quality and importance, too.
In Harper & Row, for example, the Nation had taken only some 300 words out of
President Ford’s memoirs, but we signaled the significance of the quotations in
finding them to amount to “the heart of the book,” the part most likely to be
newsworthy and important in licensing serialization. 471 U.S., at 564-566, 568
(internal quotation marks omitted). We also agree with the Court of Appeals that
whether “a substantial portion of the infringing work was copied verbatim” from the
copyrighted work is a relevant question, for it may reveal a dearth of transformative
character or purpose under the first factor, or a greater likelihood of market harm
under the fourth; a work composed primarily of an original, particularly its heart,
with little added or changed, is more likely to be a merely superseding use, fulfilling
demand for the original.
Where we part company with the court below is in applying these guides to parody,
and in particular to parody in the song before us. Parody presents a difficult case.
Parody’s humor, or in any event its comment, necessarily springs from recognizable
allusion to its object through distorted imitation. Its art lies in the tension between a
known original and its parodic twin. When parody takes aim at a particular original
work, the parody must be able to “conjure up” at least enough of that original to
make the object of its critical wit recognizable. See, e.g., Elsmere Music, 623 F. 2d, at
253, n. 1; Fisher v. Dees, 794 F. 2d, at 438-439. What makes for this recognition is
quotation of the original’s most distinctive or memorable features, which the
parodist can be sure the audience will know. Once enough has been taken to assure
identification, how much more is reasonable will depend, say, on the extent to which
the song’s overriding purpose and character is to parody the original or, in contrast,
the likelihood that the parody may serve as a market substitute for the original. But
using some characteristic features cannot be avoided.

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We think the Court of Appeals was insufficiently appreciative of parody’s need for
the recognizable sight or sound when it ruled 2 Live Crew’s use unreasonable as a
matter of law. It is true, of course, that 2 Live Crew copied the characteristic opening
bass riff (or musical phrase) of the original, and true that the words of the first line
copy the Orbison lyrics. But if quotation of the opening riff and the first line may be
said to go to the “heart” of the original, the heart is also what most readily conjures
up the song for parody, and it is the heart at which parody takes aim. Copying does
not become excessive in relation to parodic purpose merely because the portion
taken was the original’s heart. If 2 Live Crew had copied a significantly less
memorable part of the original, it is difficult to see how its parodic character would
have come through. See Fisher v. Dees, supra, at 439.
This is not, of course, to say that anyone who calls himself a parodist can skim the
cream and get away scot free. In parody, as in news reporting, see Harper & Row,
supra, context is everything, and the question of fairness asks what else the parodist
did besides go to the heart of the original. It is significant that 2 Live Crew not only
copied the first line of the original, but thereafter departed markedly from the
Orbison lyrics for its own ends. 2 Live Crew not only copied the bass riff and
repeated it, but also produced otherwise distinctive sounds, interposing “scraper”
noise, over-laying the music with solos in different keys, and altering the drum beat.
This is not a case, then, where “a substantial portion” of the parody itself is
composed of a “verbatim” copying of the original. It is not, that is, a case where the
parody is so insubstantial, as compared to the copying, that the third factor must be
resolved as a matter of law against the parodists.
Suffice it to say here that, as to the lyrics, we think the Court of Appeals correctly
suggested that “no more was taken than necessary,” but just for that reason, we fail
to see how the copying can be excessive in relation to its parodic purpose, even if the
portion taken is the original’s “heart.” As to the music, we express no opinion
whether repetition of the bass riff is excessive copying, and we remand to permit
evaluation of the amount taken, in light of the song’s parodic purpose and character,
its transformative elements, and considerations of the potential for market
substitution sketched more fully below.
D
The fourth fair use factor is “the effect of the use upon the potential market for or
value of the copyrighted work.” § 107(4). It requires courts to consider not only the
extent of market harm caused by the particular actions of the alleged infringer, but
also “whether unrestricted and widespread conduct of the sort engaged in by the
defendant . . . would result in a substantially adverse impact on the potential market”
for the original. Harper & Row, 471 U. S., at 569; Senate Report, p. 65; Folsom v. Marsh,
9 F. Cas., at 349. The enquiry “must take account not only of harm to the original
but also of harm to the market for derivative works.” Harper & Row, supra, at 568.
Since fair use is an affirmative defense,20 its proponent would have difficulty carrying
the burden of demonstrating fair use without favorable evidence about relevant
markets.21
Footnote 20: Harper & Row, 471 U. S., at 561; H. R. Rep. No. 102-836, p. 3, n. 3 (1992).

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Footnote 21: Even favorable evidence, without more, is no guarantee of fairness. Judge Leval gives
the example of the film producer’s appropriation of a composer’s previously unknown song that turns
the song into a commercial success; the boon to the song does not make the film’s simple copying
fair. Leval 1124, n. 84. This factor, no less than the other three, may be addressed only through a
“sensitive balancing of interests.” Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 455,
n. 40 (1984). Market harm is a matter of degree, and the importance of this factor will vary, not only
with the amount of harm, but also with the relative strength of the showing on the other factors.

In moving for summary judgment, 2 Live Crew left themselves at just such a
disadvantage when they failed to address the effect on the market for rap derivatives,
and confined themselves to uncontroverted submissions that there was no likely
effect on the market for the original. They did not, however, thereby subject
themselves to the evidentiary presumption applied by the Court of Appeals. In
assessing the likelihood of significant market harm, the Court of Appeals quoted
from language in Sony that “‘[i]f the intended use is for commercial gain, that
likelihood may be presumed. But if it is for a noncommercial purpose, the likelihood
must be demonstrated.’” The court reasoned that because “the use of the
copyrighted work is wholly commercial, . . . we presume that a likelihood of future
harm to Acuff-Rose exists.” In so doing, the court resolved the fourth factor against
2 Live Crew, just as it had the first, by applying a presumption about the effect of
commercial use, a presumption which as applied here we hold to be error.
No “presumption” or inference of market harm that might find support in Sony is
applicable to a case involving something beyond mere duplication for commercial
purposes. Sony’s discussion of a presumption contrasts a context of verbatim
copying of the original in its entirety for commercial purposes, with the
noncommercial context of Sony itself (home copying of television programming). In
the former circumstances, what Sony said simply makes common sense: when a
commercial use amounts to mere duplication of the entirety of an original, it clearly
“supersede[s] the objects,” Folsom v. Marsh, supra, at 348, of the original and serves as
a market replacement for it, making it likely that cognizable market harm to the
original will occur. Sony, supra, at 451. But when, on the contrary, the second use is
transformative, market substitution is at least less certain, and market harm may not
be so readily inferred. Indeed, as to parody pure and simple, it is more likely that the
new work will not affect the market for the original in a way cognizable under this
factor, that is, by acting as a substitute for it (“superseding its objects”). This is so
because the parody and the original usually serve different market functions.
We do not, of course, suggest that a parody may not harm the market at all, but
when a lethal parody, like a scathing theater review, kills demand for the original, it
does not produce a harm cognizable under the Copyright Act. Because “parody may
quite legitimately aim at garroting the original, destroying it commercially as well as
artistically,” B. Kaplan, An Unhurried View of Copyright 69 (1967), the role of the
courts is to distinguish between “biting criticism that merely suppresses demand and
copyright infringement, which usurps it.” Fisher v. Dees, 794 F. 2d, at 438.
This distinction between potentially remediable displacement and unremediable
disparagement is reflected in the rule that there is no protectible derivative market
for criticism. The market for potential derivative uses includes only those that
creators of original works would in general develop or license others to develop. Yet
the unlikelihood that creators of imaginative works will license critical reviews or
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lampoons of their own productions removes such uses from the very notion of a
potential licensing market. “People ask . . . for criticism, but they only want praise.” S.
Maugham, Of Human Bondage 241 (Penguin ed. 1992). Thus, to the extent that the
opinion below may be read to have considered harm to the market for parodies of
“Oh, Pretty Woman,” the court erred.22
Footnote 22: We express no opinion as to the derivative markets for works using elements of an
original as vehicles for satire or amusement, making no comment on the original or criticism of it.

In explaining why the law recognizes no derivative market for critical works,
including parody, we have, of course, been speaking of the later work as if it had
nothing but a critical aspect (i. e., “parody pure and simple”). But the later work may
have a more complex character, with effects not only in the arena of criticism but
also in protectible markets for derivative works, too. In that sort of case, the law
looks beyond the criticism to the other elements of the work, as it does here. 2 Live
Crew’s song comprises not only parody but also rap music, and the derivative market
for rap music is a proper focus of enquiry, see Harper & Row, supra, at 568. Evidence
of substantial harm to it would weigh against a finding of fair use, because the
licensing of derivatives is an important economic incentive to the creation of
originals. Of course, the only harm to derivatives that need concern us, as discussed
above, is the harm of market substitution. The fact that a parody may impair the
market for derivative uses by the very effectiveness of its critical commentary is no
more relevant under copyright than the like threat to the original market.24
Footnote 24: In some cases it may be difficult to determine whence the harm flows. In such cases, the
other fair use factors may provide some indicia of the likely source of the harm. A work whose
overriding purpose and character is parodic and whose borrowing is slight in relation to its parody will
be far less likely to cause cognizable harm than a work with little parodic content and much copying.

Although 2 Live Crew submitted uncontroverted affidavits on the question of
market harm to the original, neither they, nor Acuff-Rose, introduced evidence or
affidavits addressing the likely effect of 2 Live Crew’s parodic rap song on the
market for a nonparody, rap version of “Oh, Pretty Woman.” And while Acuff-Rose
would have us find evidence of a rap market in the very facts that 2 Live Crew
recorded a rap parody of “Oh, Pretty Woman” and another rap group sought a
license to record a rap derivative, there was no evidence that a potential rap market
was harmed in any way by 2 Live Crew’s parody, rap version. The fact that 2 Live
Crew’s parody sold as part of a collection of rap songs says very little about the
parody’s effect on a market for a rap version of the original, either of the music alone
or of the music with its lyrics. The District Court essentially passed on this issue,
observing that Acuff-Rose is free to record “whatever version of the original it
desires,” the Court of Appeals went the other way by erroneous presumption.
Contrary to each treatment, it is impossible to deal with the fourth factor except by
recognizing that a silent record on an important factor bearing on fair use disentitled
the proponent of the defense, 2 Live Crew, to summary judgment. The evidentiary
hole will doubtless be plugged on remand.
III
It was error for the Court of Appeals to conclude that the commercial nature of 2
Live Crew’s parody of “Oh, Pretty Woman” rendered it presumptively unfair. No

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such evidentiary presumption is available to address either the first factor, the
character and purpose of the use, or the fourth, market harm, in determining
whether a transformative use, such as parody, is a fair one. The court also erred in
holding that 2 Live Crew had necessarily copied excessively from the Orbison
original, considering the parodic purpose of the use. We therefore reverse the
judgment of the Court of Appeals and remand the case for further proceedings
consistent with this opinion.
It is so ordered.
APPENDIX A TO OPINION OF THE COURT
“Oh, Pretty Woman” by Roy Orbison and William Dees
Pretty Woman, walking down the street,
Pretty Woman, the kind I like to meet,
Pretty Woman, I don’t believe you, you’re not the truth,
No one could look as good as you Mercy
Pretty Woman, won’t you pardon me,
Pretty Woman, I couldn’t help but see,
Pretty Woman, that you look lovely as can be Are you lonely just like me?
Pretty Woman, stop a while,
Pretty Woman, talk a while,
Pretty Woman give your smile to me
Pretty Woman, yeah, yeah, yeah
Pretty Woman, look my way,
Pretty Woman, say you’ll stay with me
‘Cause I need you, I’ll treat you right
Come to me baby, Be mine tonight
Pretty Woman, don’t walk on by,
Pretty Woman, don’t make me cry,
Pretty Woman, don’t walk away,
Hey, O. K.
If that’s the way it must be, O. K.
I guess I’ll go on home, it’s late
There’ll be tomorrow night, but wait!
What do I see
Is she walking back to me?
Yeah, she’s walking back to me!

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Oh, Pretty Woman.

APPENDIX B TO OPINION OF THE COURT
“Pretty Woman” as Recorded by 2 Live Crew
Pretty woman walkin’ down the street
Pretty woman girl you look so sweet
Pretty woman you bring me down to that knee
Pretty woman you make me wanna beg please
Oh, pretty woman
Big hairy woman you need to shave that stuff
Big hairy woman you know I bet it’s tough
Big hairy woman all that hair it ain’t legit
‘Cause you look like ‘Cousin It’
Big hairy woman
Bald headed woman girl your hair won’t grow
Bald headed woman you got a teeny weeny afro
Bald headed woman you know your hair could look nice
Bald headed woman first you got to roll it with rice
Bald headed woman here, let me get this hunk of biz for ya
Ya know what I’m saying you look better than rice a roni
Oh bald headed woman
Big hairy woman come on in
And don’t forget your bald headed friend
Hey pretty woman let the boys Jump in
Two timin’ woman girl you know you ain’t right
Two timin’ woman you’s out with my boy last night
Two timin’ woman that takes a load off my mind
Two timin’ woman now I know the baby ain’t mine
Oh, two timin’ woman
Oh pretty woman

The significance of Campbell v. Acuff-Rose
In Campbell v. Acuff-Rose, the Supreme Court granted certiorari to review the Sixth Circuit’s
rather extreme conclusion that fair use afforded virtually no protection for commercial
parody. 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
Circuit had gone too far. Instead, the Court seized the opportunity to set a major course
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correction in the doctrine of fair use that came just in time for copyright to meet some of
the challenges of the Internet age. In Campbell v. Acuff-Rose, a unanimous Supreme Court
abandoned much of the language in Sony and Harper & Row and adopted a new vocabulary
centered on the concept of transformative use. This new language of transformative use
crystallized a positive theory of fair use that the Court derived from the purpose of copyright
law and the structure of the modern copyright act.
Justice Souter’s opinion for the Court in Campbell made four critical interventions in the law
of fair use: it returned fair use analysis back to its judge-made and essentially common-law
origins; it discarded any notion that fair use was confined to market failure; it adopted a
positive theory of fair use centered on transformative use; and it began the process of
burying the dual negative presumptions against commercial fair use announced in Sony and
amplified in Harper & Row. These interventions set the foundation for the modern law of
fair use in the United States just in time for the new questions of the Internet era that began
in the mid-1990s.

1. Returning fair use to its common law origins
The modern law of fair use begins with a series of Eighteenth Century cases about the scope
of “fair abridgment.” Making a shortened version or an abstract of a longer published text
was a common practice in the English publishing world of the 1700s. Both the practice and
the resulting shorted text were known as “abridgement”—verb and noun, respectively.
Although abridgment was common in the early days of copyright, whether and to what
extent it was legal was a hotly contested topic throughout the Eighteenth century and into
the Nineteenth century. One the most significant of these cases was the 1741 English Court
of Chancery decision in Gyles v. Wilcox. In that case, Lord Chancellor Hardwicke ruled that
an abridgment of a famous legal text, Sir Matthew Hale’s Historia Placitorum Coronæ (The
History of the Pleas of the Crown) into a new volume to be called Modern Crown Law did not
necessarily infringe the original publisher’s rights under the Statute of Anne. Hardwicke
agreed that some works termed abridgments may violate the copyright owner’s rights, but he
held that there was a distinction to be made between reprints with minor alterations and
“true abridgments” or “real and fair abridgments” which “may with great propriety be called
a new book [due to] the invention, learning, and judgment of the author is shown in them.”
No one would suggest that fair use today is the same as it was in 1741, but it is important to
recognize that, in one form or another, fair use has been part of Anglo-American copyright
law virtually from the beginning. The dividing line between fair and unfair abridgements was
initially adjudicated case by case, but over time a recognizable doctrine of fair dealing and
fair use emerged with the two terms being used interchangeably for some time. In Gyles v.
Wilcox and the cases that came after it, the dividing line between infringing and
noninfringing abridgements was drawn with a view to two factors. First, the degree of
intellectual labor contributed by the defendant. This was not simply an assessment of the
amount of work added by the defendant; usually the question was presented as whether the
defendant’s work should fairly be seen as a new work. The second factor was whether the
defendant’s work was likely to substitute for the plaintiff’s original work. The same
considerations were also paramount in Justice Story’s 1841 decision in Folsom v. Marsh, widely
regarded as the first American fair use case. As copyright law evolved, the fair use doctrine
played an increasingly important role. Even as the scope of the author’s copyright expanded
to include adaptations, abridgments, and translations, the fair use doctrine continued to

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provide courts with a framework to determine when technical acts of copying, such as
quotation for the purpose of comment and review, were nonetheless non-infringing.
Although fair use and its predecessor doctrines of fair dealing and fair abridgment have been
part of Anglo-American copyright law virtually from its inception, it was only in the
Copyright Act of 1976 that Congress expressly recognized the fair use doctrine in statute.
The full text of section 107 as originally enacted is as follows:
Section 107 Limitations on exclusive rights: Fair use
Notwithstanding the provisions of section 106, the fair use of a copyrighted work,
including such use by reproduction in copies or phonorecords or by any other
means specified by that section, for purposes such as criticism, comment, news
reporting, teaching (including multiple copies for classroom use), scholarship, or
research, is not an infringement of copyright. In determining whether the use made
of a work in any particular case is a fair use the factors to be considered shall
include—
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.

Both the text and the legislative history of section 107 make it clear that Congress had no
intention of displacing or freezing in place to judge-made law that had elaborated and
applied the fair use doctrine in the United States since 1841. On this point at least, the
legislative history of the Copyright Act is clear: According to both the House Report and the
Senate Report on the Copyright Act of 1976, when Congress approved Section 107, it
intended “to restate the present judicial doctrine of fair use, not to change, narrow, or
enlarge it in any way.” Just as importantly, Congress intended that courts would continue
their common-law tradition of fair use adjudication. As the House Report on the new
Copyright Act explained:
The bill endorses the purpose and general scope of the judicial doctrine of fair use,
but there is no disposition to freeze the doctrine in the statute, especially during a
period of rapid technological change. Beyond a very broad statutory explanation of
what fair use is and some of the criteria applicable to it, the courts must be free to
adapt the doctrine to particular situations on a case-by-case basis.66

There are equally strong signals in the text of section 107 the courts must continue to play a
significant role in the development of the fair use doctrine. The first sentence of section 107
declares that:
Notwithstanding the provisions of section 106, the fair use of a copyrighted work,
… is not an infringement of copyright.

66 H. R. Rep. No. 94-1476, supra, at 65-66.

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In the middle of that sentence, i.e., in the ellipsis in the above quotation, Congress listed six
examples of fair use preceded by the words “for purposes such as”. The exemplar purposes
are: criticism, comment, news reporting, teaching (including multiple copies for classroom
use), scholarship, and research. The words “for purposes such as” make it clear that this is
by no means a closed or definitive list. In addition to the six examples, the second sentence
of section 107 outlines four factors for courts to consider in determining whether a
challenged use is fair use. While the language “the factors to be considered shall include”
suggests that the four fair use factors are mandatory, it also leaves open the possibility that
they are not exclusive of other considerations in appropriate cases.
Courts often refer to section 107 as a “codification” of fair use, but this term can be
somewhat misleading. The best that can be said of section 107 is that it establishes a
consistent framework for analyzing fair use cases and that the exemplar purposes give some
hint as to the sorts of applications Congress had in mind. Justice Souter’s opinion in Campbell
showed how courts should approach fair use cases: Souter followed the structure of inquiry
laid down in section 107, but he also recognized that the four fair use factors are hard to
interpret in the abstract without reference to the long history of judge-made law that
established and refined the concept of fair use over the years.
Justice Souter was careful to stress the continuity of fair use case law and the essentially a
common law nature of the doctrine in Campbell. He explained, “although the First Congress
enacted our initial copyright statute [in 1790] without any explicit reference to ‘fair use,’ as it
later came to be known, the doctrine was recognized by the American courts nonetheless.”67
He drew particular attention to Folsom v. Marsh and noted that the statutory framework in
section 107 could be traced back directly to Justice Story’s summation of fair use in 1841.
This history should have made it clear to the courts that the new section 107 was not merely
a checklist and did not displace the caselaw that had developed prior to the Copyright Act of
1976. Justice Souter rejected any attempt to reduce the four statutory factors to a selfexecuting score card: instead he emphasized that the fair use factors were interrelated and
thus had “to be explored, and the results weighed together, in light of the purposes of
copyright.”
This holistic approach to fair use that recognizes the interdependencies between the
statutory factors was a direct rebuke to the notion that commercial use was presumptively
unfair or that the fourth factor, market effect, should be accorded special primacy in the fair
use calculus.

2. A positive vision of fair use centered on transformative use
The Supreme Court’s rulings in the decade prior to Campbell seemed to lack any sense of the
structural role of the fair use doctrine, or even a rationale for retaining fair use. It was as
though by making fair use an explicit part of the Copyright Act, Congress had relieved the
Court of any obligation to try to understand it. To the extent that there is any theory of fair
use in Sony at all, it is that fair use can be used as a tool for fine-tuning the incentive function
of copyright where Congress’ views on whether something should or should not be covered
by copyright were unclear. This approach was very favorable to new consumer technologies,
but it said little about the application of fair use in other contexts. What is more, although
the majority decision in Sony found in favor of fair use in the new context of the VCR, it did
67 Campbell at 576 (internal citations omitted).

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so in terms that suggested a significant narrowing of the doctrine in other contexts. In saving
the Betamax video recorder, Justice Stevens inadvertently sacrificed more traditional fair uses
that happened to be associated with profit making enterprises, uses like biography,
journalism, and parody.
Justice O’Connor’s theory of fair use in Harper & Row is even more opaque than that of the
majority in Sony. O’Connor framed fair use as a matter of the author’s implied consent to
“reasonable use.” One need only replace “reasonable” with “fair” to grasp just how
uninstructive that formulation is. Some have read the majority in Harper & Row as adopting a
“market failure” theory of fair use, but for the reasons discussed below, this seems unlikely.
A more sober assessment is that neither Sony nor Harper & Row was grounded on coherent
rationale for fair use. This lack of any organizing principle suggested that the doctrine only
had a modest role to play in correcting the most obvious excesses of copyright. This was the
state of the law when Judge Leval complained in his 1990 Harvard Law Review article,
Toward A Fair Use Standard, that judges were attempting to apply “widely differing notions of
the meaning of fair use” without the benefit of any consistent guiding principles. As Leval
suggested, the Supreme Court in Campbell placed the fair use doctrine back in its historical
context and expressly adopted a positive theory of fair use centered on transformative use.
The Court’s focus on transformative use as the central organizing concept in fair use analysis
reoriented the doctrine towards a set of principles consistent with the objectives of copyright
law itself. Like Judge Leval, whose influence he acknowledged, Justice Souter argued that the
central purpose of fair use was to permit transformative uses—i.e., uses that employ some
amount of the author’s original expression for a fundamentally different purpose, or that
give that expression a manifestly different character. Speaking to the first fair use factor, but
crystalizing its view of the doctrine as a whole the Court held in Campbell that the central
purpose of the inquiry turns on
… whether the new work merely supersedes the objects of the original creation, or
instead adds something new, with a further purpose or different character, altering
the first with new expression, meaning, or message; it asks, in other words, whether
and to what extent the new work is transformative. (emphasis added)68

Souter’s reasoning was straightforward: A copyright law that did not allow such
transformative uses would inhibit reference to and reinterpretation of existing works and
thus contradict the utilitarian purpose for which copyright was established. In short, the
Court in Campbell saw the purpose of copyright and the purpose of fair use as one in the
same: to promote the creation and dissemination of new works of authorship. As the Court
noted (at 575):
From the infancy of copyright protection, some opportunity for fair use of
copyrighted materials has been thought necessary to fulfill copyright’s very purpose,
to promote the Progress of Science and useful Arts.

There was nothing new about this sentiment. In 1803 the English jurist, Lord Ellenborough
explained, “while I shall think myself bound to secure every man in the enjoyment of his
copy-right, one must not put manacles upon science.”69 In a similar vein, as Justice Story put
it in Emerson v. Davies (1845):
68 Campbell v. Acuff-Rose at 579.
69 Carey v. Kearsley, 4 Esp. 168, 170 Eng. Rep. 679 (K. B. 1803).

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In truth, in literature, in science and in art, there are, and can be, few, if any, things,
which in an abstract sense, are strictly new and original throughout. Every book in
literature, science and art, borrows, and must necessarily borrow, and use much
which was well known and used before.70

In Campbell, the Supreme Court recognized that fair use has a vital role to play in the
copyright system because almost all progress, whether intellectual, scientific or creative, is
cumulative in nature. A balanced copyright law can provide opportunities for commentary,
criticism and the generation of new insights without undermining the core of the author’s
incentive to create. The Court recognized that a fair use doctrine centered on transformative
use would serve the ultimate purposes of copyright law by enabling critical, analytical, and
referential uses of copyrighted works that transcended their original function.

3. The end of “market failure”
Justice Souter’s common law approach to fair use ran directly counter to academic
suggestions that the guiding principle of fair use should be the presence of absence of
“market failure,” and the suggestion in Harper & Row that market effect was the “most
important” of the fair use factors. In Fair Use as Market Failure, an influential 1982 Columbia
Law Review article, Professor Wendy Gordon argued that under ordinary circumstances,
copyright owners and would-be users of their works should coordinate through voluntary
market transactions. However, Gordon explained, this voluntary coordination was unlikely
in a number of contexts where transaction costs were high in relation to the value of the
proposed use. Suppose an author values the right to quote a few sentences from a particular
source at $1, but it will cost her $2 to seek out the source, request permission, and haggle
over the price. Even if the ultimate price was $0.01 or zero dollars, the transaction costs
attendant in the exchange make the whole endeavor a waste of time. In this scenario, the fact
that transaction costs exceed any potential gains from trade leads to a market failure.
Gordon argued that fair use should only be awarded when market conditions prevent
socially beneficial access to copyrighted works. To that end, she proposed a three-part test
for determining fair use:
Fair use should be awarded to the defendant in a copyright infringement action
when (1) market failure is present; (2) transfer of the use to defendant is socially
desirable; and (3) an award of fair use would not cause substantial injury to the
incentives of the plaintiff copyright owner.71

Market failure is a negative account of fair use in the sense that it focuses on case-by-case
exceptions to the copyright owner’s presumed entitlement. Market failure captures part of
the fair use doctrine and it helps explain some of the caselaw. Some of the photocopying
cases (discussed later in this book) finding for and against fair use are readily explicable in
terms of market failure. Likewise, one could see the decision in Sony in terms of market
failure, although that is a better fit for the result than for the reasoning.
Nonetheless, market failure it is a best an incomplete theory. The problem with the market
failure theory is that it struggles to explain some of the most basic applications of the
doctrine. For example, quotation in service of criticism has long been recognized as fair use,
and criticism is the very first of the examples of fair use referred to the statute. Market
70 Emerson v. Davies, 8 F. Cas. 615 (No. 4,436) (CCD Mass. 1845).
71 Wendy Gordon, Fair Use as Market Failure, at 1614.

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exchanges for permission to criticize are rare, but not because transaction costs prevent
buyers and sellers from coming together. They are rare because the seller’s valuation in not
being criticized generally exceeds the price the critic is willing to pay. Gordon gets around
this problem by including the copyright owner’s interest in suppressing unfavorable views as
a potential source of market failure. She treats such “anti-dissemination” motives as intently
non-market considerations, but this concession undermines the aura of objectivity that gives
the market failure approach its surface allure. The market failure framework gives us no basis
to know which sources of copyright owner utility should be so discounted. When courts
disregard an author’s utility in thwarting criticism they are not identifying a market failure,
they are defining the scope of the legitimate copyright interest and thus the parameters of
the market in the first place. There are some cases where the prospect of market failure
should lead to a finding of fair use, but most of the fair use issues that courts are actually
called upon to decide require a deeper analysis of which uses should be part of the copyright
owner’s exclusive domain and which should not. These more fundamental questions are a
precursor to market failure analysis, they are not an outcome of it.
Justice O’Connor’s assertion in Harper & Row that the effect of the use upon the potential
market for or value of the copyrighted work “is undoubtedly the single most important
element of fair use” has been seen by some as embracing the market failure theory of fair use.
This inference is bolstered by the fact that the relevant sentence in the judgment cites
directly to Gordon’s 1982 article. Certainly, the idea that the fourth factor is the most
important factor in fair use analysis is consistent with the notion that the copyright owner’s
rights should only be limited when the cost of obtaining permission exceed the value of the
permission. But is also possible that scholars have read too much into Justice O’Connor’s
observation about the primacy of the fourth factor. The Court certainly did not expressly
adopt a market failure rationale for fair use. Moreover, Harper & Row was a very unusual
case. In most fair use cases, market effect or its absence is established indirectly, by inference,
or by presumption. But in Harper & Row, the defendant’s news article clearly scooped a
similar piece by Time magazine and constituted clear and tangible market interference.
Given her view of the facts, it is little wonder that O’Connor considered market effect to be
the most important factor, in that particular case.
Whatever the majority in Harper & Row intended by its proclamation that market effect was
the single most important factor, the unanimous Supreme Court in Campbell rejected that
premise—although not as clearly as it could have. The Campbell Court did not expressly
disavow the comment, but it certainly contradicted it. After restoring the focus of analysis on
to fair use as a common law doctrine the Justice Souter cautioned:
Nor may the four statutory factors be treated in isolation, one from another. All are
to be explored, and the results weighed together, in light of the purposes of
copyright.72

To say that the factors cannot be treated in isolation and that they must be considered
together in light of the purposes of copyright is the antithesis of the notion that the fourth
factor, or indeed any factor, is “undoubtedly the single most important element of fair use.”
In addition to demoting the fourth factor, Campbell’s positive vision of fair use as centered on
transformative use is entirely inconsistent with the market failure paradigm. Just as
72 (Campbell v. Acuff-Rose at 578)

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reasonableness defines the parameters of the duty of care in the law of negligence, fair use
plays a significant role in defining the limits of the exclusive rights under the Copyright Act.
Whereas a market failure approach to fair use takes no account of the scope defining
function of the doctrine, the Court’s decision in Campbell was almost entirely concerned with
this question. The Campbell Court did not accept that the rights of the copyright owner are
limitless by presumption; quite the contrary, it was careful to expressly state significant limits
on the scope of the copyright owner’s cognizable market interests.
In Campbell the Supreme Court explained that for harm to the copyright owner to be
recognized under the fourth factor, it must relate to usurpation of the author’s original
expression. Criticism that merely subdues demand by hitting its target obviously causes harm
of a certain sort, but not the sort harm that copyright law prevents. Elaborating on this point
the Justice Souter wrote:
We do not, of course, suggest that a parody may not harm the market at all, but
when a lethal parody, like a scathing theater review, kills demand for the original, it
does not produce a harm cognizable under the Copyright Act. Because parody may
quite legitimately aim at garroting the original, destroying it commercially as well as
artistically, the role of the courts is to distinguish between biting criticism that
merely suppresses demand and copyright infringement, which usurps it.73

Put simply, copyright law recognizes the author’s interest not to have her own expression
used in competition with her, but not her interest in preventing critical and non-substitutive
uses of that same expression. Although the Court referred to the improbability of potential
licensing markets for parody and review, it did not condition “the rule that there is no
protectible derivative market for criticism” upon market failure in the transactional sense.
Instead, the Court said that these uses were simply not part of the cognizable market in the
first place.
This distinction between potentially remediable displacement and unremediable
disparagement is reflected in the rule that there is no protectible derivative market
for criticism. The market for potential derivative uses includes only those that
creators of original works would in general develop or license others to develop. Yet
the unlikelihood that creators of imaginative works will license critical reviews or
lampoons of their own productions removes such uses from the very notion of a
potential licensing market. “People ask . . . for criticism, but they only want praise.”
Thus, to the extent that the opinion below may be read to have considered harm to
the market for parodies of “Oh, Pretty Woman,” the court erred.74

This idea of cognizable markets is very important. Under a narrow market failure theory of
fair use, the copyright owner has an interest in preventing any non-trivial use of her work
that involves copying, unless there is no money to be made in exercising that right. That in
turn suggests that the market effect inquiry under the fourth factor could be entirely circular.
In most cases, if there is a defendant, there is a market—even if it is only a market of one.
Indeed, in Campbell the defendants had offered to pay a license for their parody and had
successfully negotiated a very modest license with Bruce Springsteen to parody Born in the
USA. The decision in Campbell means that no license is required where a work is copied for
the purpose of parody, the amount copied is reasonable in light of that purpose and there is
73 Campbell v. Acuff-Rose at 591-592.
74 Campbell v. Acuff-Rose at 592, quoting Somerset Maugham’s famous novel, Of Human Bondage.

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no likely substitution for non-parody adaptations of the work. Transformative uses such as
parody are simply not part of the copyright owner’s “cognizable market.” If the potential
market for a work was defined purely in terms of that which might be licensed if the law says
that it must be licensed, then copyright owners could expand the scope of their rights by
offering to license them. For example, the major film studies could establish a rights-clearing
center for reviews, parodies, and references to their movies, thus converting these noninfringing activities into infringing ones.
None of this suggests that market failure is irrelevant to fair use, but it is neither necessary
nor sufficient. Market failure becomes relevant where the defendant’s use falls within the
presumptive scope of the copyright owner’s entitlement but the use is so inconsequential or
the transaction costs are so high that no actual harm is likely to result. Market failures arising
from insurmountable exchange costs, information costs, strategic behavior or externalities,
might require a finding of fair use in particular situations, but this only captures part of the
doctrine. Even beyond these exculpatory market failures, the fair use plays an important role
in defining the scope of the copyright owner’s rights against the world. In other words, fair
use is constitutive, not merely exculpatory. Transformative uses that are unlikely to result in
a cognizable copyright harm will be afforded fair use status regardless of whether one could
imagine a market mechanism for negotiating permissions. Such transformative uses are not
part of the copyright owner’s market, and thus no suggestion of market failure is required.

4. Unwinding the presumption against commercial fair use
Campbell’s fourth major contribution to restoring fair use was its rejection of the
presumptions against commercial use that the Court suggested in Sony and reiterated in
Harper & Row. The majority opinions in both of those cases had avowed that commercial
uses were presumptively unfair in “purpose and character” under the first fair use factor and
that commercial uses presumably harmed the copyright owner’s market under the fourth fair
use factor. In other words, Sony and Harper & Row stacked the deck against commercial uses
twice over. There is no doubt that, at the time section 107 was drafted, Congress believed
that commerciality had some relevance to the purpose and character of the use: the first
factor specifically refers to “the purpose and character of the use, including whether such use is of
a commercial nature or is for nonprofit educational purposes.” However, in the wake of Harper
& Row it seemed that any commercial use was inevitably incompatible with fair use. The
Sixth Circuit in Acuff Rose v. Campbell understood the Supreme Court to have instructed that
commerciality was the predominant issue under the first factor and that it was virtually
conclusive of market harm under the fourth factor. It is difficult to know whether the
majority justices in Harper & Row, Chief Justice Burger, and Justices Blackmun, Powell,
Rehnquist, Stevens, and O’Connor had intended such an extreme application of the
presumption against commercial use, but it is notable that four of those Justices, Rehnquist,
Blackmun, Stevens, and O’Connor, were still on the Court when it unanimously reversed the
Sixth Circuit in Campbell v. Acuff-Rose.
What would account for such a sharp reversal in the Court’s understanding of fair use? The
best explanation is that it became clear to the Court that any presumption against
commercial uses qualifying as far use was entirely at odds with any traditional rationale for
copyright. As the Constitution suggests, copyright promotes the progress of knowledge by
creating the possibility of a market-based reward for the creation and dissemination of new
expression. The exclusive rights vested in authors by the Copyright Act do not guarantee any

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particular rewards, but they give authors a tradable entitlement that they can leverage to try
to profit from their works. This is the theory of copyright that underpins Supreme Court’s
repeated characterization of copyright as the “engine of free expression” as opposed to an
incursion on freedom of speech. The great virtue of copyright is not simply the abundance
of expression produced, but also that, as Professor Neil Netanel has explained, copyright
“supports a sector of creative and communicative activity that is relatively free from reliance
on state subsidy, elite patronage, and cultural hierarchy.”75 This independence can have
enormous cultural and democratic payoffs. In an age of media consolidation, partisan bad
faith journalism, and online fake news, the reader is entitled to wonder whether the
democratic potential of the institution of copyright law has been fulfilled. But the potential
of copyright to encourage a diversity of creativity from a diversity of sources and to reduce
the power of elites to control access to information should be apparent nonetheless. If so,
the same structural considerations apply to fair use. The central purpose of fair use is to
enable new authors to use existing works in the creation of new insights and new expression
so long as their efforts do not threaten to usurp demand for those original works. Whereas
exclusive rights establish incentives, fair use limitations on those rights create opportunities.
These opportunities and incentives are just as important in the private sector as in nonmarket aspects of the economy.
The Supreme Court in Campbell utterly rejected the Sixth Circuit’s reading of Sony and Harper
& Row in relation to commercial use. As Justice Souter observed, although the language of
the statute indicates that the commercial nature or nonprofit educational purpose of the
defendant’s use is one element of the first factor, it is only one element of a broader evaluation
of the “purpose and character of the use.” Furthermore, making commerciality more than
just one consideration in that setting makes no sense in the context of the rest of Section
107. Echoing Justice Brennan’s dissenting opinion in Harper & Row, Justice Souter
explained:
If, indeed, commerciality carried presumptive force against a finding of fairness, the
presumption would swallow nearly all of the illustrative uses listed in the preamble
paragraph of § 107, including news reporting, comment, criticism, teaching,
scholarship, and research, since these activities are generally conducted for profit in
this country. Congress could not have intended such a rule, which certainly is not
inferable from the common-law cases, arising as they did from the world of letters
in which Samuel Johnson could pronounce that “no man but a blockhead ever
wrote, except for money.”76

The vast majority journalists in the United States work for commercial enterprises; applied
research is generally a private sector activity, as is roughly half of basic research; even the
books and articles of academics employed by not-for-profits are overwhelmingly published
by commercial publishers. Congress may have envisaged that fair use would create extra
breathing space for certain non-profit activities—especially in relation to education and
disability access, topics addressed in a later chapter—but there was never any basis in theory,
legislative history, or the text of section 107 for a rigid presumption against commercial fair
use.

75 Neil Weinstock Netanel, Copyright and A Democratic Civil Society, 106 Yale L.J. 283, 288 (1996)
76 Campbell v. Acuff-Rose at 584.

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To reduce the appearance of any outright contradiction with its prior case law, and perhaps
out of deference to Justices Stevens and O’Connor, Justice Souter phrased his rejection of
the dual presumption against commercial fair use diplomatically, perhaps too diplomatically.
Souter explained that the court below had misread both Sony and Harper & Row. He noted
that in Sony the Court had emphasized the need for a “sensitive balancing of interests,” and
disclaimed any “bright-line approach to fair use.” Likewise, he argued that although
commercial use was treated as “a separate factor that tends to weigh against a finding of fair
use” in Harper & Row, it was only one element of a broader question and that “the force of
that tendency will vary with the context.”
Similarly, in relation to the suggestion that commercial use triggered a presumption of
market harm under the fourth factor, Justice Souter argued that Sony had to be read in
context. In Sony the Court was addressing complete duplication of television programming;
in that context it should be obvious that untransformative commercial duplication would
“supersede” or substitute for the original. Common sense further dictated that some
recognizable market harm was the likely consequence. But, as Justice Souter explained:
… when, on the contrary, the second use is transformative, market substitution is at
least less certain, and market harm may not be so readily inferred. Indeed, as to
parody pure and simple, it is more likely that the new work will not affect the
market for the original in a way cognizable under this factor, that is, by acting as a
substitute for it superseding its objects. This is so because the parody and the
original usually serve different market functions.77

The Court in Campbell rejected the notion that commerciality by itself had any hard
presumptive significance in relation to the first factor, the fourth factor, or indeed fair use as
a whole. The first paragraph of the decision states unambiguously: “we hold that a parody’s
commercial character is only one element to be weighed in a fair use enquiry.”
The Supreme Court’s recent holding in Google v Oracle (2021) confirms that there is no
presumption against commercial fair use. Writing for the majority, Justice Breyer said:
There is no doubt that a finding that copying was not commercial in nature tips the
scales in favor of fair use. But the inverse is not necessarily true, as many common
fair uses are indisputably commercial. … [Accordingly] even though Google’s use
was a commercial endeavor—a fact no party disputed—that is not dispositive of the
first factor, particularly in light of the inherently transformative role that the
reimplementation played in the new Android system.

The interrelated nature of the fair use factors
In Campbell the Supreme Court stressed both that there are no bright-line rules in fair use
adjudication and that transformative occupies a central role in fair use. But a transformative
purpose by itself is no guarantee of fair use. As the Campbell decision notes: finding that a
work was intended as a parody, for example, is just the beginning of the required analysis,
and the use must still “work its way through the relevant factors, and be judged case by case,
in light of the ends of copyright law.”

77 Campbell v. Acuff-Rose at 591.

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In addition to considering the defendant’s transformative purpose (factor 1), a court must
consider whether the defendant’s use was reasonable in light of that purpose (factor 3) and
whether such uses are likely to have an adverse effect on the cognizable market interests of
the copyright owner (factor 4). To make these evaluations, a court will need to keep in mind
the context, and especially the nature of the plaintiff’s copyrighted work (factor 2).
In other words, in the context of the relevant works, a court must consider purpose, congruity
with that purpose, and effect.
These factors are not separate. If a court finds that a defendant’s purpose is transformative
and the amount used is reasonable in light of that purpose, it is very unlikely that it could
find that there is a cognizable market effect. It is very unlikely that a reasonable use for a
transformative purpose would have an adverse effect on the value of the copyright owners
work in any cognizable market. As the Supreme Court noted in Campbell (at 593 n. 24):
A work whose overriding purpose and character is parodic and whose borrowing is
slight in relation to its parody will be far less likely to cause cognizable harm than a
work with little parodic content and much copying.

In contrast, if the defendant’s use is unreasonable and disproportionate, despite their
professed commitment to making a transformative use, a court could easily conclude that
this excessive borrowing showed that the purpose and character of the use was not really
transformative after all; and/or it might conclude that despite the transformative intention
the excessive borrowing was likely to harm the market interests of the plaintiff under the
fourth factor.
The following cases illustrate how transformative impacts the assessment of amount and
substantiality and vice-versa.
Mattel Inc. v. Walking Mountain Products, 353 F.3d 792 (9th Cir. 2003)
In 1997, an artist named Thomas Forsythe developed a series of photographs entitled Food
Chain Barbie, depicting Mattel’s famous Barbie doll in various absurd and often sexualized
positions. As the Malted Barbie and Oyster Dive photos reproduced below illustrate, Forsythe’s
works typically involved naked Barbie dolls imperiled by vintage household appliances.
Thomas Forsyth’s Malted Barbie & Oyster Dive

For decades Mattel has promoted Barbie as an icon of beauty, wealth, and glamour and the
ideal American woman. Others see Barbie as the quintessential representative of a consumer
culture obsessed by idealized and unobtainable notions of beauty and perfection. According
to the Copyright Act, however, the Barbie doll is a sculptural work entitled to copyright

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protection. Mattel zealously promotes its concept of Barbie and is quick to use copyright and
trademark law to try to suppress alternative less charitable views.
In Mattel Inc. v. Walking Mountain Products, Mattel argued that Forsythe’s Food Chain Barbie
series violated its copyright in the Barbie sculptures. The Ninth Circuit court of appeals
disagreed. Although each of the photos in the Food Chain Barbie series arguably reproduced
three-dimensional Barbie, albeit in two-dimensional form, the reproduction was not
infringement, but fair use.
The court held that the defendant’s use of iconic Barbie image was transformative in the
sense that it added “something new, with a further purpose or different character, altering
the first with new expression, meaning, or message.” The various Food Chain Barbie images
conveyed the image of Barbie, but they also changed the meaning of that image by exposing
Barbie to absurd and dangerous domestic situations. As the court summarized (at 802):
Forsythe turns this image on its head, so to speak, … His lighting, background,
props, and camera angles all serve to create a context for Mattel’s copyrighted work
that transform Barbie’s meaning. Forsythe presents the viewer with a different set of
associations and a different context for this plastic figure. In some of Forsythe’s
photos, Barbie is about to be destroyed or harmed by domestic life in the form of
kitchen appliances, yet continues displaying her well known smile, disturbingly
oblivious to her predicament. As portrayed in some of Forsythe’s photographs, the
appliances are substantial and overwhelming, while Barbie looks defenseless. In
other photographs, Forsythe conveys a sexualized perspective of Barbie by showing
the nude doll in sexually suggestive contexts. It is not difficult to see the
commentary that Forsythe intended or the harm that he perceived in Barbie’s
influence on gender roles and the position of women in society.

In other words, Forsythe did more than simply drop Barbie in a blender; his choice of setting,
lighting, and camera angle in each photo created a new work that quite clearly comments on
the objectification of women and the conventional beauty myth associated with Barbie.
Mattel argued that Forsythe should not be entitled to fair use because he had copied the
entirety of the Barbie figure in some photos. The toy company suggested that whatever
critical purpose Forsythe intended could have been realized by limiting his photos less than a
complete image of Barbie—severed heads, for example? But as the court explained, visual
works are often less amenable to segmentation than textual works. Forsythe’s use of the
whole doll was entirely reasonable in the circumstances because, rather than dismembering
the doll, Forsythe added to it “by creating a context around it and capturing that context in a
photograph.” The court also noted that the two-dimensional photo of a three dimensional
object scarcely constitutes a verbatim copy in any event. However, there is no indication that
the court would have decided the case any differently had the artist’s medium of choice been
sculpture rather than photography.
The Food Chain Barbie case demonstrates that the reasonableness of the amount of the
copyright owner’s original expression used by the defendant in a new work will be assessed
in light of the defendant’s transformative purpose, the nature of the work itself, and also
with a view to how the defendant has changed the work. Courts should not make arbitrary
distinctions based on whether those changes are in the form of subtraction or addition. The
case also shows how certain works require greater appropriations to convey their essence.
Moreover, certain genres of criticism justifiably require more extensive takings than others.
If the defendant’s purpose is transformative in the sense of commenting upon or criticizing
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the original, there is no requirement that she pursue that goal in a given genre or that she
take the absolute minimum amount of the copyrighted work possible within any given genre.
As the Ninth Circuit explained (at 802),
Undoubtedly, one could make similar statements through other means about society,
gender roles, sexuality, and perhaps even social class. But Barbie, and all the
associations she has acquired through Mattel’s impressive marketing success,
conveys these messages in a particular way that is ripe for social comment.

Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270 (11th Cir. 2001)
Margaret Mitchell’s 1936 novel, Gone With the Wind, is a cultural icon with an enduring hold
on our collective imagination of the American South during the Civil War and
Reconstruction. Its lasting appeal notwithstanding, Gone With the Wind is a controversial
book, in part because Mitchell’s white characters are unapologetically racist and her nonwhite characters are one-dimensional reflections of that racism. In Mitchell’s novel, the
antebellum South is idealized and the end of slavery is lamented. As Scarlett O’Hara, the
book’s focal character, says: “The more I see of emancipation the more criminal I think it is.
It’s just ruined the darkies.”
Alice Randall’s 2001 novel, The Wind Done Gone, retells this classic story from the perspective
of Scarlet’s African-American half-sister, Cynara, and in doing so attempts to rebut the
perspective, judgments, and mythology of the original work. In the course of this retelling,
The Wind Done Gone takes the characters, plot, and major scenes from the original and recasts
them. Although the narrative style and language of Randall’s book is quite different to the
original, at a more abstract level of character, plot, and location, it borrows heavily from
Gone With the Wind, especially in the latter book’s first half.
Mitchell’s literary estate viewed The Wind Done Gone as an act of piracy and sought to prevent
its publication. On appeal from a lower court injunction, the court of appeals for the
Eleventh Circuit agreed that Randall had borrowed liberally from Gone With the Wind, but in
the court’s assessment, as a specific criticism of and rejoinder to the original, The Wind Done
Gone was a transformative parody. The court had no trouble in seeing the dividing line
between a legitimate parody and an infringing derivative work. Randall had not simply used
Gone With the Wind to extend the story for its own sake, or as a platform for a general
commentary on the Civil-War-era American South. Rather, like other effective parodies, she
had conscripted the elements of the original to make war against itself. As the court
summarized (at 1270):
… Randall’s work flips Gone With the Wind’s traditional race roles, portrays powerful
whites as stupid or feckless, and generally sets out to demystify Gone With the Wind
and strip the romanticism from Mitchell’s specific account of this period of our
history.

The Wind Done Gone had taken quite liberally from Gone With the Wind, but it had done so in a
thoroughly transformative manner “shedding light on an earlier work, and, in the process,
creating a new one.”
Not unlike Mattel in the Food Chain Barbie case, the plaintiffs in Suntrust, argued that Randall
had taken too much of the original work because she could have made the same critical
points in a way that required much less borrowing from the original. The plaintiffs argument
was rooted in the misconception that fair use operates as a grudging exception to copyright.
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On the contrary, repurposing an author’s original expression to create a new work with a
new meaning or message does as much to fulfill the purpose of copyright law as did the
creation of the original work. Randall chose to convey her criticisms of Gone With The Wind
by creating a mirror world in which “every black character is given some redeeming quality
— whether depth, wit, cunning, beauty, strength, or courage — that their Gone With the Wind
analogues lacked.” The fact that there were more parsimonious choices available was
irrelevant to the fair use analysis. What mattered was that where Mitchell’s original
expression was appropriated, it was invested with a new meaning or message.
A parody must be consistently transformative, but there is no requirement that parodists
take the bare minimum amount of copyright material necessary to achieve their ends. Nor is
there any requirement that the original work should be the sole subject of the parody. In
Campbell, the Court said that all that was required was that the defendant’s work “loosely
target an original” as long as the parody “reasonably could be perceived as commenting on
the original or criticizing it, to some degree.”
In different contexts, excessive borrowing by a would-be parody might call into question
whether the overriding purpose and character of the use was genuinely transformative. One
could not simply stamp the word parody on a bestselling novel and reprint it with impunity.
Likewise, excessive borrowing in a well intended, but poorly executed parody might serve as
a market substitute for the original and thus fall outside the protection of fair use. Although
Randall had taken quite substantially from the original, in the eyes of the court, there was
nothing extraneous to her parodic purpose. As Judge Marcus summarized in his concurrence
(at 1280):
Even a cursory comparison of the two texts reveals that The Wind Done Gone
profoundly alters what it borrows—indeed, at times beyond recognition. To catch
some of Randall’s allusions, even a reader familiar with Mitchell’s work may need to
refer to the original text. To create a successful parody, an author must keep certain
elements constant while inverting or exaggerating other variables; generally there is
an incongruity between the borrowed and the new elements. In Randall’s book, the
ratio of the former to the latter is very low, and the incongruity between them wide.

***
As both the Wind Done Gone and Food Chain Barbie illustrate, there are no exact quantitative
thresholds to determine if how much borrowing is reasonable in light of the defendant’s
purpose. However, what is clear is that a defendant’s claimed fair use does not depend on
her having adopted a particular style or genre of criticism or having reproduced the bare
minimum of the author’s original expression to convey that criticism. Even extensive
borrowings can be justified if they are predominantly transformative. Although some earlier
cases, such as Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., state that “the parodist is
permitted a fair use of a copyrighted work if it takes no more than is necessary to ‘recall’ or
‘conjure up’ the object of his parody.” It would be more accurate to hold, as the court did in
Suntrust, that once enough has been taken to ‘conjure up’ the original in the minds of the
readership, any further taking must be consistent with the new work’s transformative aims.

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Transformative use without transformative purpose?
The Supreme Court’s decision in Campbell reoriented the fair use doctrine around the
concept of transformative use, going so far as to say that the creation of transformative
works “lie at the heart of the fair use doctrine’s guarantee of breathing space within the
confines of copyright.” In that landmark case, the Court held that a parody version of a
banal pop song was such a transformative use because rather than “supplanting the original,”
it added “something new, with a further purpose or different character, altering the first with
new expression, meaning, or message.” The concept of transformative use is easy to apply in
cases where the defendant has made significant changes to the original work for a purpose
that is fundamentally and intrinsically different to the original, but the Supreme Court’s
decision in Campbell left some important questions about the concept of transformative
unanswered. Since Campbell, transformative use has been applied in other scenarios far afield
from parody where content transformation was combined with an intrinsic new purpose,
leading to some concern that “transformative use has gone too far” or that a focus on
transformativeness undermines the copyright owner’s right to make derivative works. A
highwater mark of concern was reached in response to Cariou v. Prince, 714 F.3d 694 (2d Cir.
2013).
Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013)
The defendant in Cariou, well known appropriation artist Richard Prince had taken a
series of photos published in Patrick Cariou’s book, Yes Rasta, and enlarged, modified,
and combined the works in new and surprising ways (see the illustrations below).
When Cariou sued for copyright infringement, the defendant took the unusual step of
proclaiming in his deposition that, far from intending to imbue the original works with a
“new meaning or message”—the focus of transformative use since Campbell—he “didn’t
really have a message,” he was not “trying to create anything with a new meaning or a
new message.” Rather than responding to Patrick Cariou’s sympathetic classical portraits
of Rastafarians in Jamaica, Prince explained that his intent was “completely try to change
[those works] into something that’s completely different.” That something was “a kind of
fantastic, absolutely hip, up to date, contemporary take on the music scene” that had
some relationship a “post-apocalyptic screenplay” Prince had planned.
The district court was unimpressed by this explanation and concluded that given his
stated intention, Prince’s artworks were not transformative and thus not fair use. The
majority of the court of appeals for the Second Circuit, however, disagreed. On appeal,
the Second Circuit held that “the law imposes no requirement that a work comment on
the original or its author in order to be considered transformative” and furthermore that
an artist’s inability or unwillingness to advocate a narrative of transformative use is not
determinative. The majority explained (at 707):
It is not surprising that, when transformative use is at issue, the alleged infringer
would go to great lengths to explain and defend his use as transformative. Prince did
not do so here. However, the fact that Prince did not provide those sorts of
explanations in his deposition — which might have lent strong support to his
defense — is not dispositive. What is critical is how the work in question appears to
the reasonable observer, not simply what an artist might say about a particular piece
or body of work. Prince’s work could be transformative even without commenting

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on Cariou’s work or on culture, and even without Prince’s stated intention to do so.
Rather than confining our inquiry to Prince’s explanations of his artworks, we
instead examine how the artworks may “reasonably be perceived” in order to assess
their transformative nature.

So far, so good. It seems entirely reasonable that the law should be more concerned with
how the allegedly infringing work may be reasonably perceived, as opposed to the subjective
intentions of the artist. A holding to the contrary would simply encourage artists to
internalize the vocabulary of copyright law and adopt a transformative rationale as their
original purpose. The Second Circuit’s adoption of an objective standard for assessing
transformative use was not controversial or surprising, however the way the majority of the
Court of Appeal went on to apply that objective standard was both surprising and
controversial.
To begin with, the majority’s decision to remand some, but not all of the works at issue back
the district court raised more than a few eyebrows. The majority found that twenty-five of
Prince’s artworks were “transformative as a matter of law” and remanded the remaining five
works to the district court for further consideration. The Second Circuit’s ruling in Cariou
was based on a side-by-side comparison of the works at issue, some of which had been
barely altered and others that were altered almost beyond recognition. In addition to
alterations of substance, the source material was sometimes tinted and always radically
enlarged.
It is not immediately obvious why the majority remanded Charlie Company back to the
District Court but concluded that Back to the Garden was fair use as a matter of law.
Figure 18 Remanded: Charlie Company (left) and Yes Rasta (right)

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Figure 19 Not Remanded: Back to the Garden (left) and Yes Rasta (right)

Likewise, the Cariou court did not really explain its different treatment of Canal Zone
compared to Ocean Club. There are clearly some differences between the works, but how and
why those differences constitute the dividing line between “definitely fair use” and “might
be fair use” is left to the reader’s imagination.
Figure 20 Remanded: Canal Zone 2008 (left) various pages of Yes Rasta (right)

Figure 21 Not Remanded: The Ocean Club (left) various pages of Yes Rasta (right)

Also, the court’s failure to conclude that Graduation was “definitely not fair use” as a matter
of law was also perplexing given the majority’s confidence that so many works were fair use

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as a matter of law. Graduation is simply an enlarged version of Cariou’s original photo with
three blue circles and blue guitar added.
Figure 22 Remanded: Graduation (left) and Original Photograph from Yes Rasta (right)

Graduation, Collage, inkjet, and acrylic on canvas,

P. 118 of the Patrick Cariou Photograph(s) in Yes Rasta

72 3/4"
x 52 1/2"
The majority
suggested
that all the defendant needed to do to qualify for transformative use
was to change the aesthetic or genre of the work. To elaborate, the court’s conclusion in
Cariou that so many of Prince’s works were transformative was based largely on its
observation that:

Prince’s artworks manifest an entirely different aesthetic from Cariou’s photographs.
Where Cariou’s serene and deliberately composed portraits and landscape
photographs depict the natural beauty of Rastafarians and their surrounding
environs, Prince’s crude and jarring works, on the other hand, are hectic and
provocative. … Prince’s composition, presentation, scale, color palette, and media
are fundamentally different and new compared to the photographs, as is the
expressive nature of Prince’s work. (emphasis added).

This seems like a very low bar and as such it gave fuel to, largely misplaced concerns, that
the fair use doctrine would undercut the copyright owner’s rights with respect to derivative
works.
Finally, the majority’s analysis of the fourth fair use factor, market effect, seemed to indicate
that the defendant’s popularity amongst the rich and famous—the court named checks Jay-Z,
Beyonce Knowles, Damien Hirst, Jeff Koons, Tom Brady, Gisele Bundchen, Graydon
Carter, Anna Wintour, Jonathan Franzen, Candace Bushnell, Robert DeNiro, Angelina Jolie,
and Brad Pitt—meant that there was no possibility that his works would compete with those
of a little-known photographer. The Urban Dictionary has a term for this kind of fawning.78
The consideration of market effect in the fourth fair use factor was not intended to allow the
rich (and famous) to steal from the poor with impunity.
The Second Circuit’s 2021 decision in Andy Warhol Foundation for the Visual Arts, Inc. v.
Goldsmith stands in stark contrast to Cariou.
78 https://tinyurl.com/ju5pzhxn.

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Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, (2d Cir. Mar. 26,
2021)
Gerard E. Lynch, Circuit Judge:
This case concerns a series of silkscreen prints and pencil illustrations created by the
visual artist Andy Warhol based on a 1981 photograph of the musical artist Prince
that was taken by Defendant-Appellant Lynn Goldsmith in her studio, and in which
she holds copyright. In 1984, Goldsmith’s agency, Defendant-Appellant Lynn
Goldsmith, Ltd. (“LGL”), then known as Lynn Goldsmith, Inc., licensed the
photograph to Vanity Fair magazine for use as an artist reference. Unbeknownst to
Goldsmith, that artist was Warhol. Also unbeknownst to Goldsmith (and remaining
unknown to her until 2016), Warhol did not stop with the image that Vanity Fair had
commissioned him to create, but created an additional fifteen works, which together
became known as the Prince Series.
Goldsmith first became aware of the Prince Series after Prince’s death in 2016. Soon
thereafter, she notified Plaintiff-Appellee The Andy Warhol Foundation for the
Visual Arts, Inc. (“AWF”), successor to Warhol’s copyright in the Prince Series, of
the perceived violation of her copyright in the photo. In 2017, AWF sued Goldsmith
and LGL for a declaratory judgment that the Prince Series works were noninfringing or, in the alternative, that they made fair use of Goldsmith’s photograph.
Goldsmith and LGL countersued for infringement. The United States District Court
for the Southern District of New York (John G. Koeltl, J.) granted summary
judgment to AWF on its assertion of fair use and dismissed Goldsmith and LGL’s
counterclaim with prejudice.
Goldsmith and LGL contend that the district court erred in its assessment and
application of the four fair-use factors. In particular, they argue that the district
court’s conclusion that the Prince Series works are transformative was grounded in a
subjective evaluation of the underlying artistic message of the works rather than an
objective assessment of their purpose and character. We agree. We further agree that
the district court’s error in analyzing the first factor was compounded in its analysis
of the remaining three factors. We conclude upon our own assessment of the record
that all four factors favor Goldsmith and that the Prince Series works are not fair use
as a matter of law. We further conclude that the Prince Series works are substantially
similar to the Goldsmith Photograph as a matter of law.
BACKGROUND
Goldsmith is a professional photographer primarily focusing on celebrity
photography, including portrait and concert photography of rock-and-roll musicians.
Goldsmith has been active since the 1960s, and her work has been featured widely,
including on over 100 record album covers. Goldsmith also founded LGL, the first
photo agency focused on celebrity portraiture. LGL represents the work of over two
hundred photographers worldwide, including Goldsmith herself.
Andy Warhol, né Andrew Warhola, was an artist recognized for his significant
contributions to contemporary art in a variety of media. Warhol is particularly known
for his silkscreen portraits of contemporary celebrities. Much of his work is broadly
understood as “commenting on consumer culture and exploring] the relationship

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between celebrity culture and advertising.” Cariou v. Prince, 714 F.3d 694, 706 (2d Cir.
2013). AWF is a New York not-for-profit corporation established in 1987 after
Warhol’s death. AWF holds title to and copyright in much of Warhol’s work, which
it licenses to generate revenue to further its mission of advancing the visual arts,
“particularly work that is experimental, under-recognized, or challenging in nature.”
On December 3, 1981, while on assignment from Newsweek magazine, Goldsmith
took a series of portrait photographs of (then) up-and-coming musician Prince
Rogers Nelson (known through most of his career simply as “Prince”) in her studio.
Goldsmith testified that, prior to Prince’s arrival at her studio, she arranged the
lighting in a way to showcase his “chiseled bone structure.” Goldsmith also applied
additional makeup to Prince, including eyeshadow and lip gloss, which she testified
was intended both to build a rapport with Prince and to accentuate his sensuality.
Goldsmith further testified that she was trying to capture Prince’s “willing[ness] to
bust through what must be [his] immense fears to make the work that [he] wanted to
[make].” Goldsmith took black-and-white and color photographs using a Nikon 35mm camera and a mixture of 85- and 105-mm lenses, which she chose to best
capture the shape of Prince’s face.
Prince, who according to Goldsmith appeared nervous and uncomfortable, retired to
the green room shortly after the session began and ultimately left without allowing
Goldsmith to take any additional photographs. During the truncated session,
Goldsmith took 23 photographs, 12 in black and white and 11 in color. Goldsmith
retained copyright in each of the photographs that she took. Most relevant to this
litigation is the following photograph, hereinafter referred to as the “Goldsmith
Photograph”:
Figure 23 Goldsmith Photograph

In 1984, Goldsmith, through LGL, licensed the Goldsmith Photograph to Vanity
Fair magazine for use as an artist reference. Esin Goknar, who was photo editor at
Vanity Fair in 1984, testified that the term “artist reference” meant that an artist
“would create a work of art based on [the] image reference.” The license permitted
Vanity Fair to publish an illustration based on the Goldsmith Photograph in its
November 1984 issue, once as a full page and once as a quarter page. The license
further required that the illustration be accompanied by an attribution to Goldsmith.
Goldsmith was unaware of the license at the time and played no role in selecting the
Goldsmith Photograph for submission to Vanity Fair.

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Vanity Fair, in turn, commissioned Warhol to create an image of Prince for its
November 1984 issue. Warhol’s illustration, together with an attribution to
Goldsmith, was published accompanying an article about Prince by Tristan Vox and
appeared as follows:
Figure 24: Vanity Fair Article and Warhol Illustration

In addition to the credit that ran alongside the image, a separate attribution to
Goldsmith was included elsewhere in the issue, crediting her with the “source
photograph” for the Warhol illustration. Vanity Fair did not advise Goldsmith that
Warhol was the artist for whom her work would serve as a reference, and she did not
see the article when it was initially published.
Unbeknownst to Goldsmith and LGL, Warhol created 15 additional works based on
the Goldsmith Photograph, known collectively, and together with the Vanity Fair
image, as the “Prince Series.” The Prince Series comprises fourteen silkscreen prints
(twelve on canvas, two on paper) and two pencil illustrations, and includes the
following images:
Figure 25 Three images from the “Prince Series”

Although the specific means that Warhol used to create the images is unknown (and,
perhaps, at this point, unknowable), Neil Printz, the editor of the Andy Warhol
Catalogue Raisonné, testified that it was Warhol’s usual practice to reproduce a
photograph as a high-contrast two-tone image on acetate that, after any alterations
Warhol chose to make, would be used to create a silkscreen. For the canvas prints,
Warhol’s general practice was to paint the background and local colors prior to the
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silkscreen transfer of the image. Paper prints, meanwhile, were generally created
entirely by the silkscreen process without any painted embellishments. Finally,
Warhol’s typical practice for pencil sketches was to project an image onto paper and
create a contoured pencil drawing around the projected image.
At some point after Warhol’s death, AWF acquired title to and copyright in the
Prince Series. Between 1993 and 2004, AWF sold or otherwise transferred custody
of 12 of the original Prince Series works to third parties, and, in 1998, transferred
custody of the other four works to The Andy Warhol Museum. AWF retains
copyright in the Prince Series images and, through The Artist Rights Society (a thirdparty organization that serves as AWF’s agent), continues to license the images for
editorial, commercial, and museum usage.
On April 22, 2016, the day after Prince died, Condé Nast, Vanity Fair’s parent
company, contacted AWF. Its initial intent in doing so was to determine whether
AWF still had the 1984 image, which Condé Nast hoped to use in connection with a
planned magazine commemorating Prince’s life. After learning that AWF had
additional images from the Prince Series, Condé Nast ultimately obtained a
commercial license, to be exclusive for three months, for a different Prince Series
image for the cover of the planned tribute magazine. Condé Nast published the
tribute magazine in May 2016 with a Prince Series image on the cover. Goldsmith
was not given any credit or attribution for the image, which was instead attributed
solely to AWF.
It was at this point that Goldsmith first became aware of the Prince Series. In late
July 2016, Goldsmith contacted AWF to advise it of the perceived infringement of
her copyright. That November, Goldsmith registered the Goldsmith Photograph
with the U.S. Copyright Office as an unpublished work. On April 7, 2017, AWF
sued Goldsmith and LGL for a declaratory judgment of non-infringement or, in the
alternative, fair use. Goldsmith countersued for copyright infringement under 17
U.S.C. §§ 106, 501.
On July 1, 2019, the district court granted summary judgment for AWF on its fairuse claim. See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d
312, 316 (S.D.N.Y. 2019). Upon evaluating the four statutory fair-use factors set
forth in 17 U.S.C. § 107, the court concluded that: (1) the Prince Series was
“transformative” because, while the Goldsmith Photograph portrays Prince as “not a
comfortable person” and a “vulnerable human being,” the Prince Series portrays
Prince as an “iconic, larger-than-life figure;” (2) although the Goldsmith Photograph
is both creative and unpublished, which would traditionally weigh in Goldsmith’s
favor, this was “of limited importance because the Prince Series works are
transformative works;” (3) in creating the Prince Series, Warhol “removed nearly all
[of] the Goldsmith Photograph’s protectible elements;” and (4) the Prince Series
works “are not market substitutes that have harmed – or have the potential to harm
– Goldsmith.” This appeal followed.

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DISCUSSION
I. Standard of Review
“We review a grant of summary judgment de novo,” applying the standards set forth
in Federal Rule of Civil Procedure 56(c). While fair use presents a mixed question of
law and fact, it may be resolved on summary judgment where, as here, the material
facts are not in dispute.
II. Copyright, Derivative Works, and Fair Use
The Constitution empowers Congress to enact copyright laws “to promote the
Progress of Science and useful Arts.” U.S. Const. art. I, § 8, cl. 8. Congress has
exercised this delegated authority continuously since the earliest days of the nation,
beginning with the Copyright Act of 1790 and, more recently, through the Copyright
Act of 1976. Under the 1976 Act, copyright protection extends both to the original
creative work itself and to derivative works, which it defines as, in relevant part, “a
work based upon one or more preexisting works, such as a[n] ... art reproduction,
abridgement, condensation, or any other form in which a work may be recast,
transformed, or adapted.” 17 U.S.C. § 101. [Portions of the court’s boilerplate
discussion of the fair use doctrine and the statutory factors are omitted] As the
Supreme Court has held, fair use presents a holistic context-sensitive inquiry “not to
be simplified with bright-line rules. ... All [four statutory factors] are to be explored,
and the results weighed together, in light of the purposes of copyright.” Campbell, 510
U.S. at 577-78; see also, e.g., Cariou, 714 F.3d at 705 (“the fair use determination is an
open-ended and context-sensitive inquiry.”). We consider each factor in turn.
A. The Purpose and Character of The Use
This factor requires courts to consider the extent to which the secondary work is
“transformative,” as well as whether it is commercial. We address these
considerations separately below.
1. Transformative Works and Derivative Works
Following the Supreme Court’s decision in Campbell, our assessment of this first
factor has focused chiefly on the degree to which the use is “transformative,” i.e.,
“whether the new work merely supersedes the objects of the original creation, or
instead adds something new, with a further purpose or different character, altering
the first with new expression, meaning, or message.” 510 U.S. at 579. We evaluate
whether a work is transformative by examining how it may “reasonably be perceived.”
Cariou, 714 F.3d at 707, quoting Campbell, 510 U.S. at 582; see also, e.g., Leibovitz v.
Paramount Pictures Corp., 137 F.3d 109, 113-15 (2d Cir. 1998). Paradigmatic examples
of transformative uses are those Congress itself enumerated in the preamble to §
107: “criticism, comment, news reporting, teaching ..., scholarship, or research.” And,
as the Supreme Court recognized in Campbell, parody, which “needs to mimic an
original to make its point,” 510 U.S. at 580-81, is routinely held transformative. See,
e.g., Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 693 (7th Cir. 2012).
These examples are easily understood: the book review excerpting a passage of a
novel in order to comment upon it serves a manifestly different purpose from the
novel itself. See Authors Guild v. Google, Inc., 804 F.3d 202, 215-16 (2d Cir. 2015)
(“copying from an original for the purpose of criticism or commentary on the
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original ... tends most clearly to satisfy Campbell’s notion of the ‘transformative’
purpose involved in the analysis of Factor One.”).
Although the most straightforward cases of fair use thus involve a secondary work
that comments on the original in some fashion, in Cariou v. Prince, we rejected the
proposition that a secondary work must comment on the original in order to qualify
as fair use. In that case, we considered works of appropriation artist Richard Prince
that incorporated, among other materials, various black-and-white photographs of
Rastafarians taken by Patrick Cariou. After concluding that the district court had
imposed a requirement unsupported by the Copyright Act, we conducted our own
examination of Prince’s works and concluded that twenty-five of the thirty at issue
were transformative of Cariou’s photographs as a matter of law. In reaching this
conclusion, we observed that Prince had incorporated Cariou’s “serene and
deliberately composed portraits and landscape photographs” into his own “crude
and jarring works ... [that] incorporate[d] color, feature[d] distorted human and other
forms and settings, and measure[d] between ten and nearly a hundred times the size
of the photographs.” Thus, we concluded that these works “used [Cariou’s
photographs] as raw material, transformed in the creation of new information, new
aesthetics, new insights and understanding,” and were transformative within the
meaning of this first factor.
In adjudging the Prince Series transformative, the district court relied chiefly on our
decision in Cariou, which we have previously described as the “high-water mark of
our court’s recognition of transformative works.” TCA Television Corp. v. McCollum,
839 F.3d 168, 181 (2d Cir. 2016). And, as we have previously observed, that decision
has not been immune from criticism. While we remain bound by Cariou, and have
no occasion or desire to question its correctness on its own facts, our review of the
decision below persuades us that some clarification is in order.
As discussed supra, both this Court and the Supreme Court have emphasized that
fair use is a context-sensitive inquiry that does not lend itself to simple bright-line
rules. E.g., Campbell, 510 U.S. at 577-78; Cariou, 714 F.3d at 705. Notwithstanding,
the district court appears to have read Cariou as having announced such a rule, to wit,
that any secondary work is necessarily transformative as a matter of law “if looking at
the works side-by-side, the secondary work has a different character, a new
expression, and employs new aesthetics with [distinct] creative and communicative
results.” Warhol, 382 F. Supp. 3d at 325-26 (internal quotation marks omitted)
(alterations adopted). Although a literal construction of certain passages of Cariou
may support that proposition, such a reading stretches the decision too far.
Of course, the alteration of an original work “with ‘new expression, meaning, or
message,’” Cariou, 714 F.3d at 706, quoting Campbell, 510 U.S. at 579, whether by the
use of “new aesthetics,” quoting Blanch, 467 F.3d at 253, by placing the work “in a
different context,” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir.
2007), or by any other means is the sine qua non of transformativeness. It does not
follow, however, that any secondary work that adds a new aesthetic or new
expression to its source material is necessarily transformative.
Consider the five works at issue in Cariou that we did not conclude were
transformative as a matter of law. Though varying in degree both amongst

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themselves and as compared to the works that we did adjudge transformative, each
undoubtedly imbued Cariou’s work with a “new aesthetic” as that phrase might be
colloquially understood. Prince’s Canal Zone (2007) is a collage of thirty-six of
Cariou’s photographs, most of which Prince altered by, for example, painting over
the faces and bodies of Cariou’s subjects, in some instances altering them
significantly.
In Graduation, Prince added blue “lozenges” over the eyes and mouth of Cariou’s
subject and pasted an image of hands playing a blue guitar over his hands. Both of
these works certainly imbued the originals from which they derive with a “new
aesthetic;” notwithstanding, we could not “confidently ... make a determination
about their transformative nature as a matter of law.”
Moreover, as we have repeatedly observed, there exists an entire class of secondary
works that add “new expression, meaning, or message” to their source material but
are nonetheless specifically excluded from the scope of fair use: derivative works. As
one of our sister circuits has observed, an overly liberal standard of
transformativeness, such as that embraced by the district court in this case, risks
crowding out statutory protections for derivative works. See Kienitz v. Sconnie Nation
LLC, 766 F.3d 756, 758 (7th Cir. 2014) (“To say that a new use transforms the work
is precisely to say that it is derivative and thus, one might suppose, protected under §
106(2).”).
We addressed derivative works in Cariou, characterizing them as secondary works
that merely present “the same material but in a new form” without “add[ing]
something new.” 714 F.3d at 708 (citation omitted); see also Google, 804 F.3d at 21516 (derivative works generally involve transformations in the nature of changes of
form.”) (emphasis in original). While that description may be a useful shorthand, it is
likewise susceptible to misapplication if interpreted too broadly. Indeed, many
derivative works “add something new” to their source material.
Consider, for example, a film adaptation of a novel. Such adaptations frequently add
quite a bit to their source material: characters are combined, eliminated, or created
out of thin air; plot elements are simplified or eliminated; new scenes are added; the
moral or political implications of the original work may be eliminated or even
reversed, or plot and character elements altered to create such implications where the
original text eschewed such matters. And all of these editorial modifications are
filtered through the creative contributions of the screenwriter, director, cast, camera
crew, set designers, cinematographers, editors, sound engineers, and myriad other
individuals integral to the creation of a film. It is for this reason that we have
recognized that “[w]hen a novel is converted to a film ... [t]he invention of the
original author combines with the cinematographic interpretive skills of the
filmmaker to produce something that neither could have produced independently.”
Google, 804 F.3d at 216 n.18. Despite the extent to which the resulting movie may
transform the aesthetic and message of the underlying literary work, film adaptations
are identified as a paradigmatic example of derivative works. See, e.g., Authors Guild,
Inc. v. HathiTrust, 755 F.3d 87, 95 (2d Cir. 2014) (“Paradigmatic examples of
derivative works include ... the adaptation of a novel into a movie or a play.”).

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In evaluating the extent to which a work is transformative or derivative (or neither),
we typically consider the purpose of the primary and secondary works. In Bill Graham
Archives v. Dorling Kindersley Ltd., for example, we held that the reproduction in a book
about the Grateful Dead of images of posters originally created to advertise Grateful
Dead concerts was transformative because that use was “plainly different from the
original purpose for which they were created.” 448 F.3d 605, 609-10 (2d Cir. 2006).
Likewise, in HathiTrust we held that the defendants’ creation of a searchable “digital
corpus” comprising scanned copies of tens of millions of books that enabled
researchers, scholars, and others to pinpoint the exact page of any book in the
catalogue on which the searched term was used was a “quintessentially
transformative use.” 755 F.3d at 97. In Google, we reached the same conclusion when
faced with a larger digital corpus complete with tools that enabled researchers to
track how a specific word or phrase has been used throughout the development of
the English language, despite the fact that, unlike the database in HathiTrust,
Google’s database also permitted the searcher to view a “snippet” from the original
text showing the context in which the word or phrase had appeared. 804 F.3d at 21617.
But purpose is perhaps a less useful metric where, as here, our task is to assess the
transformative nature of works of visual art that, at least at a high level of generality,
share the same overarching purpose (i.e., to serve as works of visual art). While this
is not the first time we have had to conduct this inquiry, our cases on such works are
considerably fewer in number, and a brief review of them yields conflicting guidance.
In Blanch v. Koons, for example, we adjudged transformative a Jeff Koons painting
that incorporated a copyrighted photograph drawn from a fashion magazine where
Koons had testified that he intended to “use Blanch’s image as fodder for his
commentary on the social and aesthetic consequences of mass media.” 467 F.3d at
253.
Figure 26 Jeff Koons Niagara and Blanch’s Magazine Photo
(editor’s illustration, not part of original judgment)

Some time earlier, however, in Rogers v. Koons, we denied Koons’s fair-use defense as
applied to a three-dimensional sculpture recreating a photograph, notwithstanding

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his claim that he intended his sculpture to serve as a commentary on modern society.
960 F.2d 301, 309-11 (2d Cir. 1992).
Figure 27 Koons String of Puppies and Rogers' Puppies
(editor’s illustration, not part of original judgment)

And, in Cariou, we held twenty-five of Richard Prince’s works transformative as a
matter of law even though Prince had testified that he “was not ‘trying to create
anything with a new meaning or a new message.’” 714 F.3d at 707.
Matters become simpler, however, when we compare the works at issue in each case
against their respective source materials. The sculpture at issue in Rogers was a threedimensional colorized version of the photograph on which it was based. See 960
F.2d at 305. In Blanch, however, Koons used Blanch’s photograph, depicting a
woman’s legs in high-heeled shoes, as part of a larger work in which he set it
alongside several other similar photographs with “changes of its colors, the
background against which it is portrayed, the medium, the size of the objects
pictured, [and] the objects’ details.” 467 F.3d at 253. In so doing, Koons used
Blanch’s photograph “as raw material for an entirely different type of art ... that
comment[ed] on existing images by juxtaposing them against others.” Id. at 262
(Katzmann, J., concurring). And in Cariou, the copyrighted works found to have been
fairly used were, in most cases, juxtaposed with other photographs and “obscured
and altered to the point that Cariou’s original [was] barely recognizable.” 714 F.3d at
710. The works that were found potentially infringing in Cariou, however, were ones
in which the original was altered in ways that did not incorporate other images and
that superimposed other elements that did not obscure the original image and in
which the original image remained, as in the Koons sculpture at issue in Rogers, a
major if not dominant component of the impression created by the allegedly
infringing work. See id. at 710-11.
A common thread running through these cases is that, where a secondary work does
not obviously comment on or relate back to the original or use the original for a
purpose other than that for which it was created, the bare assertion of a “higher or
different artistic use,” Rogers, 960 F.2d at 310, is insufficient to render a work
transformative. Rather, the secondary work itself must reasonably be perceived as
embodying an entirely distinct artistic purpose, one that conveys a “new meaning or
message” entirely separate from its source material. While we cannot, nor do we
attempt to, catalog all of the ways in which an artist may achieve that end, we note
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that the works that have done so thus far have themselves been distinct works of art
that draw from numerous sources, rather than works that simply alter or recast a
single work with a new aesthetic.
Which brings us back to the Prince Series. The district court held that the Prince
Series works are transformative because they “can reasonably be perceived to have
transformed Prince from a vulnerable, uncomfortable person to an iconic, largerthan-life figure.” Warhol, 382 F. Supp. 3d at 326. That was error.
Though it may well have been Goldsmith’s subjective intent to portray Prince as a
“vulnerable human being” and Warhol’s to strip Prince of that humanity and instead
display him as a popular icon, whether a work is transformative cannot turn merely
on the stated or perceived intent of the artist or the meaning or impression that a
critic – or for that matter, a judge – draws from the work. Were it otherwise, the law
may well recognize any alteration as transformative. See Google, 804 F.3d at 216 n.18
(“the word ‘transformative,’ if interpreted too broadly, can also seem to authorize
copying that should fall within the scope of an author’s derivative rights.”). Rather,
as we have discussed, the court must examine how the works may reasonably be
perceived.
In conducting this inquiry, however, the district judge should not assume the role of
art critic and seek to ascertain the intent behind or meaning of the works at issue.
That is so both because judges are typically unsuited to make aesthetic judgments
and because such perceptions are inherently subjective.3 As Goldsmith argues, her
own stated intent notwithstanding, “an audience viewing the [Goldsmith]
Photograph today, across the vista of the singer’s long career, might well see him in a
different light than Goldsmith saw him that day in 1981.” We agree; it is easy to
imagine that a whole generation of Prince’s fans might have trouble seeing the
Goldsmith Photograph as depicting anything other than the iconic songwriter and
performer whose musical works they enjoy and admire.
Instead, the judge must examine whether the secondary work’s use of its source
material is in service of a “fundamentally different and new” artistic purpose and
character, such that the secondary work stands apart from the “raw material” used to
create it. Although we do not hold that the primary work must be “barely
recognizable” within the secondary work, as was the case with the works held
transformative in Cariou, the secondary work’s transformative purpose and character
must, at a bare minimum, comprise something more than the imposition of another
artist’s style on the primary work such that the secondary work remains both
recognizably deriving from, and retaining the essential elements of, its source
material.
With this clarification, viewing the works side-by-side, we conclude that the Prince
Series is not “transformative” within the meaning of the first factor. That is not to
deny that the Warhol works display the distinct aesthetic sensibility that many would
immediately associate with Warhol’s signature style – the elements of which are
absent from the Goldsmith photo. But the same can be said, for example, of the Ken
Russell film, from a screenplay by Larry Kramer, derived from D.H. Lawrence’s
novel, Women in Love: the film is as recognizable a “Ken Russell” as the Prince
Series are recognizably “Warhols.” But the film, for all the ways in which it

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transforms (that is, in the ordinary meaning of the word, which indeed is used in the
very definition of derivative works, see 17 U.S.C. § 101) its source material, is also
plainly an adaptation of the Lawrence novel.
As in the case of such paradigmatically derivative works, there can be no meaningful
dispute that the overarching purpose and function of the two works at issue here is
identical, not merely in the broad sense that they are created as works of visual art,
but also in the narrow but essential sense that they are portraits of the same person.4
Footnote 4: As much as art critics might distinguish Warhol’s aesthetic intentions from those of
portrait photographers, Warhol’s celebrity prints are invariably identifiable likenesses of their subjects.
The district court’s description of the Prince Series works as transformative because they “can
reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an
iconic, larger-than-life figure,” 382 F. Supp. 3d at 326, rests implicitly on the Warhol depiction being
perceived as a recognizable depiction of Prince.

See Gaylord v. United States, 595 F.3d 1364, 1372-73 (Fed. Cir. 2010) (photograph of
Korean War Memorial used on stamp not transformative despite “different
expressive character” brought about by subdued lighting and snow since sculpture
and stamp shared purpose of “honoring veterans of the Korean War”). Although
this observation does not per se preclude a conclusion that the Prince Series makes
fair use of the Goldsmith Photograph, the district court’s conclusion rests
significantly on the transformative character of Warhol’s work. But the Prince Series
works can’t bear that weight.
Warhol created the series chiefly by removing certain elements from the Goldsmith
Photograph, such as depth and contrast, and embellishing the flattened images with
“loud, unnatural colors.” Warhol, 382 F. Supp. 3d at 326. Nonetheless, although we
do not conclude that the Prince Series works are necessarily derivative works as a
matter of law, they are much closer to presenting the same work in a different form,
that form being a high-contrast screenprint, than they are to being works that make a
transformative use of the original. Crucially, the Prince Series retains the essential
elements of the Goldsmith Photograph without significantly adding to or altering
those elements.
Indeed, the differences between the Goldsmith Photograph and the Prince Series
here are in many respects less substantial than those made to the five works that we
could not find transformative as a matter of law in Cariou. Unlike the Prince Series,
those works unmistakably deviated from Cariou’s original portraiture in a manner
that suggested an entirely distinct artistic end; rather than recasting those
photographs in a new medium, Richard Prince added material that pulled them in
new directions. See, e.g., Cariou, 714 F.3d at 711 (“Where [Cariou’s] photograph
presents someone comfortably at home in nature, [Prince’s] Graduation combines
divergent elements to present a sense of discomfort.”). Nevertheless, we could not
confidently determine whether those modest alterations “amounted to a substantial
transformation of the original works of art such that the new works were
transformative,” and remanded the case to the district court to make that
determination in the first instance.
In contrast, the Prince Series retains the essential elements of its source material, and
Warhol’s modifications serve chiefly to magnify some elements of that material and
minimize others. While the cumulative effect of those alterations may change the
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Goldsmith Photograph in ways that give a different impression of its subject, the
Goldsmith Photograph remains the recognizable foundation upon which the Prince
Series is built.
Finally, we feel compelled to clarify that it is entirely irrelevant to this analysis that
“each Prince Series work is immediately recognizable as a ‘Warhol.’” Warhol, 382 F.
Supp. 3d at 326. Entertaining that logic would inevitably create a celebrity-plagiarist
privilege; the more established the artist and the more distinct that artist’s style, the
greater leeway that artist would have to pilfer the creative labors of others. But the
law draws no such distinctions; whether the Prince Series images exhibit the style and
characteristics typical of Warhol’s work (which they do) does not bear on whether
they qualify as fair use under the Copyright Act. As Goldsmith notes, the fact that
Martin Scorsese’s recent film The Irishman is recognizably “a Scorsese” does not
absolve him of the obligation to license the original book on which it is based.
In reaching this conclusion, we do not mean to discount the artistic value of the
Prince Series itself. As used in copyright law, the words “transformative” and
“derivative” are legal terms of art that do not express the simple ideas that they carry
in ordinary usage. We do not disagree with AWF’s contention that the cumulative
effect of Warhol’s changes to the Goldsmith Photograph is to produce a number of
striking and memorable images. And our conclusion that those images are closer to
what the law deems “derivative” than “transformative” does not imply that the
Prince Series (or Warhol’s art more broadly) is “derivative,” in the pejorative artistic
sense, of Goldsmith’s work or of anyone else’s. As Goldsmith succinctly puts it,
“[t]here is little doubt ... that the Prince Series reflects Andy Warhol’s talent,
creativity, and distinctive aesthetic.” But the task before us is not to assess the artistic
worth of the Prince Series nor its place within Warhol’s oeuvre; that is the domain of
art historians, critics, collectors, and the museum-going public. Rather, the question
we must answer is simply whether the law permits Warhol to claim it as his own, and
AWF to exploit it, without Goldsmith’s permission. And, at least as far as this aspect
of the first factor is concerned, we conclude that the answer to that question is “no.”
2. Commercial Use
The statutory language of the first factor also specifically directs courts to consider
“whether [the] use is of a commercial nature or is for nonprofit educational
purposes.” 17 U.S.C. § 107(1). Although finding that a secondary use is commercial
“tends to weigh against” finding that it is fair, we apply the test with caution since
“nearly all of the illustrative uses listed in the preamble paragraph of § 107 ... are
generally conducted for profit in this country.” Campbell, 510 U.S. at 584-85 (citation
and internal quotation marks omitted).5 And, since “[t]he crux of the
profit/nonprofit distinction is ... whether the user stands to profit from exploitation
of the copyrighted material without paying the customary price,” Harper & Row, 471
U.S. at 562, the commercial nature of a secondary use is of decreased importance
when the use is sufficiently transformative such that the primary author should not
reasonably expect to be compensated. See, e.g., Blanch, 467 F.3d at 254.
We agree with the district court that the Prince Series works are commercial in
nature, but that they produce an artistic value that serves the greater public interest.
Nevertheless, just as we cannot hold that the Prince Series is transformative as a

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matter of law, neither can we conclude that Warhol and AWF are entitled to
monetize it without paying Goldsmith the “customary price” for the rights to her
work, even if that monetization is used for the benefit of the public.
B. The Nature of the Copyrighted Work
The second factor directs courts to consider the nature of the copyrighted work,
including (1) whether it is “expressive or creative ... or more factual, with a greater
leeway being allowed to a claim of fair use where the work is factual or informational,
and (2) whether the work is published or unpublished, with the scope of fair use
involving unpublished works being considerably narrower.” Blanch, 467 F.3d at 256
(citation omitted). Although courts are required to consider and weigh this factor, it
“has rarely played a significant role in the determination of a fair use dispute.” Google,
804 F.3d at 220.
The district court correctly held that the Goldsmith Photograph is both unpublished
and creative but nonetheless concluded that the second factor should favor neither
party because LGL had licensed the Goldsmith Photograph to Vanity Fair and
because the Prince Series was highly transformative. See Warhol, 382 F. Supp. 3d at
327. That was error. That Goldsmith, through LGL, made the Goldsmith
Photograph available for a single use on limited terms does not change its status as
an unpublished work nor diminish the law’s protection of her choice of when to
make a work public and whether to withhold a work to shore up demand. Further,
though we have previously held that this factor “may be of limited usefulness where
the creative work is being used for a transformative purpose,” Bill Graham Archives,
448 F.3d at 612, this relates only to the weight assigned to it, not whom it favors. See
also Blanch, 467 F.3d at 257 (“The second fair-use factor has limited weight in our
analysis because Koons used Blanch’s work in a transformative manner.”).
Having recognized the Goldsmith Photograph as both creative and unpublished, the
district court should have found this factor to favor Goldsmith irrespective of
whether it adjudged the Prince Series works transformative within the meaning of
the first factor. And, because we disagree that the Prince Series works are
transformative, we would accord this factor correspondingly greater weight.
C. The Amount and Substantiality of the Use
The third factor considers “the amount and substantiality of the portion used in
relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3). “In assessing this
factor, we consider not only ‘the quantity of the materials used’ but also ‘their quality
and importance’” in relation to the original work. TCA Television, 839 F.3d at 185,
quoting Campbell, 510 U.S. at 587. The ultimate question under this factor is whether
“the quantity and value of the materials used are reasonable in relation to the
purpose of the copying.” Campbell, 510 U.S. at 586. To that end, there is no bright
line separating a permissible amount of borrowing from an impermissible one;
indeed, we have rejected the proposition that this factor necessarily favors the
copyright holder even where the secondary user has copied the primary work in toto
in service of a legitimate secondary purpose. See Swatch Group v. Bloomberg, 756 F.3d
73, 89-90 (2d Cir. 2014); see also Rogers, 960 F.2d at 310-11 (“Sometimes wholesale
copying may be permitted, while in other cases taking even a small percentage of the
original work has been held unfair use.”).
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In this case, AWF argues, and the district court concluded, that this factor weighs in
its favor because, by cropping and flattening the Goldsmith Photograph, thereby
removing or minimizing its use of light, contrast, shading, and other expressive
qualities, Warhol removed nearly all of its copyrightable elements. We do not agree.
We begin with the uncontroversial proposition that copyright does not protect ideas,
but only “the original or unique way that an author expresses those ideas, concepts,
principles, or processes.” Rogers, 960 F.2d at 308. As applied to photographs, this
protection encompasses the photographer’s “posing the subjects, lighting, angle,
selection of film and camera, evoking the desired expression, and almost any other
variant involved.” Id. at 307. The cumulative manifestation of these artistic choices –
and what the law ultimately protects – is the image produced in the interval between
the shutter opening and closing, i.e., the photograph itself. This is, as we have
previously observed, the photographer’s “particular expression” of the idea
underlying her photograph. Leibovitz, 137 F.3d at 115-16.
It is thus easy to understand why AWF’s contention misses the mark. The premise of
its argument is that Goldsmith cannot copyright Prince’s face. True enough. Were it
otherwise, nobody else could have taken the man’s picture without either seeking
Goldsmith’s permission or risking a suit for infringement. But while Goldsmith has
no monopoly on Prince’s face, the law grants her a broad monopoly on its image as
it appears in her photographs of him, including the Goldsmith Photograph.7
Footnote 7: It is for this reason that the cases that AWF cites in support of its position (and on which
the district court relied) are not particularly instructive; each involves a claim in which a second,
distinct work was alleged to infringe the protected expression of the original work, and each such
claim was rejected on the basis that the second work copied only the unprotected idea of the original.
See, e.g., Bill Diodato Photography, LLC v. Kate Spade, LLC, 388 F. Supp. 2d 382, 393 (S.D.N.Y.
2005) (involving separate photographs of women in bathroom stalls with jauntily placed handbags);
see also infra Section III. Had Warhol used a different photograph that Goldsmith alleged was similar
enough to her own to render the Prince Series an infringement of her work, these cases might be
more instructive. But he did not, so they are not.

Cf. Mattel, Inc. v. Goldberger Doll Mfg. Co., 365 F.3d 133, 136-37 (2d Cir. 2004)
(vacating summary judgment where district court had concluded that “defendant
could freely copy the central facial features of the Barbie dolls” and holding that
Mattel could not monopolize the idea of a doll with “upturned nose, bow lips, and
wide eyes,” but the law protected its specific rendition thereof). And where, as here,
the secondary user has used the photograph itself, rather than, for example, a similar
photograph, the photograph’s specific depiction of its subject cannot be neatly
reduced to discrete qualities such as contrast, shading, and depth of field that can be
stripped away, taking the image’s entitlement to copyright protection along with it.
With that in mind, we readily conclude that the Prince Series borrows significantly
from the Goldsmith Photograph, both quantitatively and qualitatively. While Warhol
did indeed crop and flatten the Goldsmith Photograph, the end product is not
merely a screenprint identifiably based on a photograph of Prince. Rather it is a
screenprint readily identifiable as deriving from a specific photograph of Prince, the
Goldsmith Photograph. A comparison of the images in the Prince Series makes plain
that Warhol did not use the Goldsmith Photograph simply as a reference or aidemémoire in order to accurately document the physical features of its subject. Instead,

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the Warhol images are instantly recognizable as depictions or images of the
Goldsmith Photograph itself.
To confirm this, one need look no further than the other photographs of Prince that
AWF submitted in support of its motion below to evidence its contention that
Prince’s pose was not unique to the Goldsmith Photograph. Though any of them
may have been suitable as a base photograph for Warhol’s process, we have little
doubt that the Prince Series would be quite different had Warhol used one of them
instead of the Goldsmith Photograph to create it. But the resemblance between the
Prince Series works and the Goldsmith Photograph goes even further; for example,
many of the aspects of Prince’s appearance in the Prince Series works, such as the
way in which his hair appears shorter on the left side of his face, are present in the
Goldsmith Photograph yet absent even from some other photographs that
Goldsmith took of Prince during the same photo session. In other words, whatever
the effect of Warhol’s alterations, the “essence of [Goldsmith’s] photograph was
copied” and persists in the Prince Series. Rogers, 960 F.2d at 311. Indeed, Warhol’s
process had the effect of amplifying, rather than minimizing, certain aspects of the
Goldsmith Photograph.8
Footnote 8: For example, the fact that Prince’s mustache appears to be lighter on the right side of his
face than the left is barely noticeable in the grayscale Goldsmith Photograph but is quite pronounced
in the black-and-white Prince Series screenprints. Moreover, this feature of the Goldsmith
Photograph is, again, not common to all other photographs of Prince even from that brief session.
The similarity is not simply an artefact of what Prince’s facial hair was like on that date, but of the
particular effects of light and angle at which Goldsmith captured that aspect of his appearance.

Nor can Warhol’s appropriation of the Goldsmith Photograph be deemed
reasonable in relation to his purpose. While Warhol presumably required a
photograph of Prince to create the Prince Series, AWF proffers no reason why he
required Goldsmith’s photograph. See TCA Television, 839 F.3d at 181-82, 185
(wholesale borrowing of copyrighted comedy routine not reasonable where
“defendants offered no persuasive justification” for its use). To the contrary, the
evidence in the record suggests that Warhol had no particular interest in the
Goldsmith Photograph or Goldsmith herself; Vanity Fair licensed a photograph of
Prince, and there is no evidence that Warhol (or, for that matter, Vanity Fair) was
involved in identifying or selecting the particular photograph that LGL provided.
To be clear, we do not hold that this factor will always favor the copyright holder
where the work at issue is a photograph and the photograph remains identifiable in
the secondary work. But this case is not Kienitz v. Sconnie Nation LLC, in which a
panel of the Seventh Circuit held that a t-shirt design that incorporated a photograph
in a manner that stripped away nearly every expressive element such that, “as with
the Cheshire Cat, only the [subject’s] smile remained” was fair use. 766 F.3d at 759.
As discussed, Warhol’s rendition of the Goldsmith Photograph leaves quite a bit
more detail, down to the glint in Prince’s eyes where the umbrellas in Goldsmith’s
studio reflected off his pupils. Thus, though AWF urges this court to follow the
Seventh Circuit’s lead, its decision in Kienitz would not compel a different result here,
even if it were binding on us – which, of course, it is not.

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Figure 28: T-Shirt Design and Original Photo in Kienitz v. Sconnie Nation
(editor’s illustration, not part of original judgment)

The district court, reasoning that Warhol had taken only the unprotected elements of
the Goldsmith Photograph in service of a transformative purpose, held that this
factor strongly favored AWF. Because we disagree on both counts, we conclude that
this factor strongly favors Goldsmith.
D. The Effect of the Use on the Market for the Original
The fourth factor asks “whether, if the challenged use becomes widespread, it will
adversely affect the potential market for the copyrighted work.” Bill Graham Archives,
448 F.3d at 613. “Analysis of this factor requires us to balance the benefit the public
will derive if the use is permitted and the personal gain the copyright owner will
receive if the use is denied.” Wright v. Warner Books, Inc., 953 F.2d 731, 739 (2d Cir.
1991). In assessing market harm, we ask not whether the second work would damage
the market for the first (by, for example, devaluing it through parody or criticism),
but whether it usurps the market for the first by offering a competing substitute. See,
e.g., Bill Graham Archives, 448 F.3d at 614. This analysis embraces both the primary
market for the work and any derivative markets that exist or that its author might
reasonably license others to develop, regardless of whether the particular author
claiming infringement has elected to develop such markets. See Salinger v. Colting, 607
F.3d 68, 74, 83 (2d Cir. 2010) (affirming that fourth factor favored J.D. Salinger in
suit over unauthorized sequel to Catcher in the Rye despite the fact that Salinger had
publicly disclaimed any intent to author or authorize a sequel, but vacating
preliminary injunction on other grounds). As we have previously observed, the first
and fourth factors are closely linked, as “the more the copying is done to achieve a
purpose that differs from the purpose of the original, the less likely it is that the copy
will serve as a satisfactory substitute for the original.” Google, 804 F.3d at 223, citing
Campbell, 510 U.S. at 591.
We agree with the district court that the primary market for the Warhol Prince Series
(that is, the market for the original works) and the Goldsmith Photograph do not
meaningfully overlap, and Goldsmith does not seriously challenge that determination
on appeal. We cannot, however, endorse the district court’s implicit rationale that the

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market for Warhol’s works is the market for “Warhols,” as doing so would permit
this aspect of the fourth factor always to weigh in favor of the alleged infringer so
long as he is sufficiently successful to have generated an active market for his own
work. Notwithstanding, we see no reason to disturb the district court’s overall
conclusion that the two works occupy distinct markets, at least as far as direct sales
are concerned.
We are unpersuaded, however, by the district court’s conclusion that the Prince
Series poses no threat to Goldsmith’s licensing markets. While Goldsmith does not
contend that she has sought to license the Goldsmith Photograph itself, the question
under this factor is not solely whether the secondary work harms an existing market
for the specific work alleged to have been infringed. Rather, we must also consider
whether “unrestricted and widespread conduct of the sort engaged in by [AWF]
would result in a substantially adverse impact on the potential market” for the
Goldsmith Photograph. Campbell, 510 U.S. at 590.
As an initial matter, we note that the district court erred in apparently placing the
burden of proof as to this factor on Goldsmith. See, e.g., Warhol, 382 F. Supp. 3d at
330. While our prior cases have suggested that the rightsholder bears some initial
burden of identifying relevant markets,9 we have never held that the rightsholder
bears the burden of showing actual market harm. Nor would we so hold.
Footnote 9: See HathiTrust, 755 F.3d at 96 (“To defeat a claim of fair use, the copyright holder must
point to the market harm that results because the secondary use serves as a substitute for the original
work.”); Leibovitz, 137 F.3d at 116 n.6 (“Leibovitz has not identified any market for a derivative work
that might be harmed by the Paramount ad. In these circumstances, the defendant had no obligation
to present evidence showing lack of harm in a market for derivative works.”).

Fair use is an affirmative defense; as such, the ultimate burden of proving that the
secondary use does not compete in the relevant market is appropriately borne by the
party asserting the defense: the secondary user. See Campbell, 510 U.S. at 590 (“Since
fair use is an affirmative defense, its proponent would have difficulty carrying the
burden of demonstrating fair use without favorable evidence about relevant
markets.”); Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104, 110 (2d Cir. 1998) (“As
always, [the secondary user] bears the burden of showing that his use does not”
usurp the market for the primary work); Dr. Seuss Enters., L.P. v. ComicMix LLC, 983
F.3d 443, 459 (9th Cir. 2020) (“Not much about the fair use doctrine lends itself to
absolute statements, but the Supreme Court and our circuit have unequivocally
placed the burden of proof on the proponent of the affirmative defense of fair use.”).
In any case, whatever the scope of Goldsmith’s initial burden, she satisfied it here.
Setting aside AWF’s licensing of Prince Series works for use in museum exhibits and
publications about Warhol, which is not particularly relevant for the reasons set out
in our discussion of the primary market for the works, there is no material dispute
that both Goldsmith and AWF have sought to license (and indeed have successfully
licensed) their respective depictions of Prince to popular print magazines to
accompany articles about him.
As Goldsmith succinctly states: “both [works] are illustrations of the same famous
musician with the same overlapping customer base.” Contrary to AWF’s assertions,
that is more than enough. See Cariou, 714 F.3d at 709 (“An accused infringer has

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usurped the market for copyrighted works ... where the infringer’s target audience
and the nature of the infringing content is the same as the original.”). And, since
Goldsmith has identified a relevant market, AWF’s failure to put forth any evidence
that the availability of the Prince Series works poses no threat to Goldsmith’s actual
or potential revenue in that market tilts the scales toward Goldsmith.
Finally, the district court entirely overlooked the potential harm to Goldsmith’s
derivative market, which is likewise substantial. Most directly, AWF’s licensing of the
Prince Series works to Condé Nast without crediting or paying Goldsmith deprived
her of royalty payments to which she would have otherwise been entitled. Although
we do not always consider lost royalties from the challenged use itself under the
fourth factor (as any fair use necessarily involves the secondary user using the
primary work without paying for the right to do so), we do consider them where the
secondary use occurs within a traditional or reasonable market for the primary work.
See Fox News, 883 F.3d at 180; On Davis v. Gap, Inc., 246 F.3d 152, 176 (2d Cir. 2001).
And here, that market is established both by Goldsmith’s uncontroverted expert
testimony that photographers generally license others to create stylized derivatives of
their work in the vein of the Prince Series, and by the genesis of the Prince Series: a
licensing agreement between LGL and Vanity Fair to use the Goldsmith Photograph
as an artist reference.11
Footnote 11: Of course, if a secondary work is sufficiently transformative, the fact that its “raw
material” was acquired by means of a limited license will not necessarily defeat a defense of fair use.
As discussed supra, however, that is not the case here.

Further, we also must consider the impact on this market if the sort of copying in
which Warhol engaged were to become a widespread practice. That harm is also selfevident. There currently exists a market to license photographs of musicians, such as
the Goldsmith Photograph, to serve as the basis of a stylized derivative image;
permitting this use would effectively destroy that broader market, as, if artists “could
use such images for free, there would be little or no reason to pay for [them].”
Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339, 355 (S.D.N.Y.
2017); see also Seuss, 983 F.3d at 461 (“The unrestricted and widespread conduct of
the sort ComicMix is engaged in could result in anyone being able to produce” their
own similar derivative works based on Oh, the Places You’ll Go!). This, in turn, risks
disincentivizing artists from producing new work by decreasing its value – the
precise evil against which copyright law is designed to guard.
Thus, although the primary market for the Goldsmith Photograph and the Prince
Series may differ, the Prince Series works pose cognizable harm to Goldsmith’s
market to license the Goldsmith Photograph to publications for editorial purposes
and to other artists to create derivative works based on the Goldsmith Photograph
and similar works. Accordingly, the fourth factor favors Goldsmith.
E. Weighing the Factors
“This court has on numerous occasions resolved fair use determinations at the
summary judgment stage where there are no genuine issues of material fact.” Cariou,
714 F.3d at 704 (internal quotation marks omitted) (alteration adopted) (collecting
cases). As no party contends that there exist any issues of material fact in this case,
we believe it appropriate to exercise that discretion here.

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Having considered each of the four factors, we find that each favors Goldsmith.
Further, although the factors are not exclusive, AWF has not identified any
additional relevant considerations unique to this case that we should take into
account. Accordingly, we hold that AWF’s defense of fair use fails as a matter of law.
III. Substantial Similarity
AWF asks this Court to affirm the district court’s decision on the alternate grounds
that the Prince Series works are not substantially similar to the Goldsmith
Photograph. We decline that invitation, because we conclude that the works are
substantially similar as a matter of law.
The district court did not analyze the issue of substantial similarity because, in its
view, “it [was] plain that the Prince Series works are protected by fair use.” Warhol,
382 F. Supp. 3d at 324. While “it is our distinctly preferred practice to remand such
issues for consideration by the district court in the first instance,” Schonfeld v. Hilliard,
218 F.3d 164, 184 (2d Cir. 2000), we are not required to do so. In this case, because
the question of substantial similarity is logically antecedent to that of fair use – since
there would be no need to invoke the fair use defense in the absence of actionable
infringement – and because the factors we have already discussed with respect to fair
use go a considerable way toward resolving the substantial similarity issue, we do not
believe a remand to address that issue is necessary in this case.
In general, and as applicable here, two works are substantially similar when “an
average lay observer would recognize the alleged copy as having been appropriated
from the copyrighted work.” Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996, 1003 (2d Cir.
1995). “On occasion, ... we have noted that when faced with works that have both
protectable and unprotectable elements, our analysis must be more discerning and
that we instead must attempt to extract the unprotectable elements from our
consideration and ask whether the protectable elements, standing alone, are
substantially similar.” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57,
66 (2d Cir. 2010) (internal citations and quotation marks omitted). AWF and its amici
contend that this “more discerning observer” test should apply here because
photographs contain both protectable and unprotectable elements. The same could
be said, however, of any copyrighted work: even the most quintessentially
“expressive” works, such as books or paintings, contain non-copyrightable ideas or
concepts.
Moreover, the cases in which we have applied the “more discerning observer” test
involved types of works with much “thinner” copyright protection – i.e., works that
are more likely to contain a larger share of non-copyrightable elements. See, e.g.,
Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95, 102 (2d Cir. 2014) (architectural
designs); Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127,
136 n.13 (2d Cir. 2003) (Tibetan-style carpets); Boisson v. Banian, Ltd., 273 F.3d 262,
272 (2d Cir. 2001) (quilts). By contrast, “photographs are ‘generally viewed as
creative aesthetic expressions of a scene or image’ and have long received thick
copyright protection, ... even though photographs capture images of reality.” Brammer
v. Violent Hues Prods., LLC, 922 F.3d 255, 267 (4th Cir. 2019), quoting Monge v. Maya
Magazines, Inc., 688 F.3d 1164, 1177 (9th Cir. 2012). We therefore reject AWF’s
contention that we should be “more discerning” in considering whether the Prince

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Series is substantially similar to the Goldsmith Photograph and apply the standard
“ordinary observer” test.
Though substantial similarity often presents a jury question, it may be resolved as a
matter of law where “access to the copyrighted work is conceded, and the accused
work is so substantially similar to the copyrighted work that reasonable jurors could
not differ on this issue.” Rogers, 960 F.2d at 307; see also Gaito, 602 F.3d at 63 (“The
question of substantial similarity is by no means exclusively reserved for resolution
by a jury.”).
Here, AWF has conceded that the Goldsmith Photograph served as the “raw
material” for the Prince Series works. AWF nevertheless attempts to compare this
case to several decisions from our sister circuits concluding that the secondary works
in question were not substantially similar to the original photographs on which they
were based. See, e.g., Rentmeester v. Nike, Inc., 883 F.3d 1111, 1121-23 (9th Cir. 2018)
(Nike’s iconic “Jumpman” logo and the photograph used to create it were not
substantially similar to a photograph of Michael Jordan dunking a basketball); Harney
v. Sony Pictures Television, Inc., 704 F.3d 173, 188 (1st Cir. 2013) (recreated image in
made-for-TV movie was not substantially similar to the photograph that inspired it).
But the secondary users in those cases did not merely copy the original photographs
at issue; they instead replicated those photographs using their own subjects in similar
poses. By contrast, Warhol did not create the Prince Series by taking his own
photograph of Prince in a similar pose as in the Goldsmith Photograph. Nor did he
attempt to copy merely the “idea” conveyed in the Goldsmith Photograph. Rather,
he produced the Prince Series works by copying the Goldsmith Photograph itself –
i.e., Goldsmith’s particular expression of that idea. This case therefore stands in
sharp contrast to the situation presented by Rentmeester, for example, in which the
court explained that “[w]hat [the original] photo and the [allegedly infringing] photo
share are similarities in general ideas or concepts: Michael Jordan attempting to dunk
in a pose inspired by ballet’s grand jeté; an outdoor setting stripped of most of the
traditional trappings of basketball; a camera angle that captures the subject
silhouetted against the sky.” 883 F.3d at 1122-23.
This is not to say that every use of an exact reproduction constitutes a work that is
substantially similar to the original. But here, given the degree to which Goldsmith’s
work remains recognizable within Warhol’s, there can be no reasonable debate that
the works are substantially similar. See Rogers, 960 F.2d at 307-08. As we have noted
above, Prince, like other celebrity performing and creative artists, was much
photographed. But any reasonable viewer with access to a range of such photographs
including the Goldsmith Photograph would have no difficulty identifying the latter
as the source material for Warhol’s Prince Series.
CONCLUSION
For the foregoing reasons, we REVERSE the grant of AWF’s motion for summary
judgment, VACATE the judgment entered below dismissing Lynn Goldsmith and
LGL’s amended counterclaim, and REMAND this case for further proceedings
consistent with this opinion.

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Notes and questions
1. Judge Lynch’s majority decision in Andy Warhol Foundation for the Visual Arts, Inc. v.
Goldsmith (AWF) is a study in polite understatement. Although the decision essentially
jettisons Cariou’s elastic concept of transformative use, that rejection is left implicit:
While we remain bound by Cariou, and have no occasion or desire to question its
correctness on its own facts, our review of the decision below persuades us that some
clarification is in order. (emphasis added).

The sharpest dig that Judge Lynch made at the Cariou court was his explanation that there is
no “celebrity-plagiarist privilege.”
Would it be more helpful if the court said explicitly that it was overruling Cariou? Why do
judges go to such lengths to avoid the impression that the law has changed or that their
previous decisions were wrong?
2. The court in Cariou correctly understood that a transformative work, in the fair use sense,
is one that imbues the original “with a further purpose or different character, altering the
first with new expression, meaning, or message,” as the Supreme Court said in Campbell.
What the court seemingly failed to understand, was that there must be a certain qualitative
significance to the degree of difference between the works. In most applications of
transformative use, the defendant can demonstrate that their use of the plaintiff’s work is for
an entirely different purpose, usually because the defendant’s use reflects back on the
original in the form of commentary, criticism or parody; or because the defendant’s purpose
is fundamentally different, such as an evidentiary or illustrative use. In the ordinary case,
merely redeploying an expressive work in a slightly different context where the copyright
owner’s original expression can be enjoyed by a new audience is not transformative. In
general, a degree of copying that satisfies the test of substantial similarity and lacks a clear
and fundamental difference in purpose, merely creates a derivative work.
The difficult question raised by appropriation art is whether a secondary work can ever be so
radically different that even in the absence of a different purpose, it could be considered to
be transformative. The court in AWF does not say it can’t, but it does say that “the bare
assertion of a higher or different artistic use” or a “distinct aesthetic sensibility” is not
enough to render a work transformative. What then is required? Judge Lynch proposes a test
of radical content transformation in cases where there is no discernible difference in purpose.
This test is most clearly expressed in the following passages:
… the secondary work itself must reasonably be perceived as embodying an entirely
distinct artistic purpose, one that conveys a “new meaning or message” entirely
separate from its source material. (emphasis added)
… the judge must examine whether the secondary work’s use of its source material
is in service of a “fundamentally different and new” artistic purpose and character,
such that the secondary work stands apart from the “raw material” used to create it.
Although we do not hold that the primary work must be “barely recognizable”
within the secondary work, as was the case with the works held transformative in
Cariou, the secondary work’s transformative purpose and character must, at a bare
minimum, comprise something more than the imposition of another artist’s style on
the primary work such that the secondary work remains both recognizably deriving
from, and retaining the essential elements of, its source material. (emphasis added)

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3. For those who expressed concern that transformative had gone too far after Cariou, Judge
Lynch’s decision should be reassuring. It is unfortunate then, that while Judge Lynch was
helpfully clarifying the meaning and application of transformative use his co-panelists
continued to cast doubt of its viability. Judge Richard J. Sullivan joined with the majority in
AWF, but wrote separately to highlight what he saw “as an overreliance on ‘transformative
use’ in our fair use jurisprudence, generally, and to suggest that a renewed focus on the
fourth fair use factor, “the effect of the use upon the potential market for or value of the
copyrighted work,” 17 U.S.C. § 107(4), would bring greater coherence and predictability to
this area of the law.” Judge Dennis Jacobs joined Judge Sullivan’s concurrence on this point.
Fortunately, just days after the AWF decision, the U.S. Supreme Court reaffirmed the
centrality of transformative use in Google v. Oracle (discussed below).
4. Although Judge Lynch’s decision in AWF is a welcome “clarification” of the application
of transformative use in the context of appropriation art, it goes off the rails slightly on the
relationship between fair use and derivative works. This is understandable, the relationship
between fair use and derivative works can be confusing. Judge Lynch stated that “… there
exists an entire class of secondary works that add ‘new expression, meaning, or message’ to
their source material but are nonetheless specifically excluded from the scope of fair use: derivative
works” (emphasis added)
This is simply wrong.
A secondary use that reproduces a substantial part of the original work will be infringing in
the absence of an appropriate authorization or a relevant defense; it will be noninfringing if
it is determined to be fair use. Either way, it makes sense to refer to that secondary use as a
reproduction. Some reproductions are infringing, some reproductions are fair use. Derivative
works are no different.
A secondary use that recasts, adds to, translates, or transforms an original copyrighted work
creates a derivative work. So, contrary to Judge Lynch’s observation, technically, some fair
uses will create derivative works. If a use is fair, it does not infringe the exclusive right to
“produce a derivative work based upon the copyrighted work,” in Section 106(2) because
that right is expressly subject to the fair use doctrine. By convention, we tend to use the
labels “derivative work” and “fair use” in the alternative, but that only makes sense if we are
using the term derivative work as shorthand for “derivative works that do not qualify as fair
use.”
Some find it confusing that the Copyright Act defines a derivative work, in part, as one that
transforms a preexisting work, and yet the Supreme Court has said that whether a work is
transformative is a key to determining its status as fair use.79 No doubt, the confusion of terms
is unfortunate, but the follow explanation may help:
The difference between a noninfringing transformative use and an infringing
derivative work can be illustrated as follows: if Pride and Prejudice were still subject to
copyright protection, the novel Pride and Prejudice and Zombies, which combines Jane
Austen’s original work with scenes involving zombies, cannibalism, and ninjas, is
arguably a transformative parody of the original, and thus fair use rather than

79 Campbell v. Acuff-Rose at 579 (transformative works ... lie at the heart of the fair use doctrine’s guarantee of

breathing space...).

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infringement. In contrast, a more traditional sequel would merely be an infringing
derivative work. (emphasis added).80

Note this explanation juxtaposes a transformative parody that would be fair use with an
infringing derivative. It does not suggest that transformative use and derivative works are
mutually exclusive categories, although once a work has been determined to be fair use there
not much clarity to be gained by continuing to refer to it as a derivative work as well.
5. Circuit Judge Dennis Jacobs wrote a separate concurrence in AWF to point out that “the
holding does not consider, let alone decide, whether the infringement encumbers the original
Prince Series works that are in the hands of collectors or museums.” She noted that the
“sixteen original works have been acquired by various galleries, art dealers, and the Andy
Warhol Museum. This case does not decide their rights to use and dispose of those works
because Goldsmith does not seek relief as to them. She seeks only damages and royalties for
licensed reproductions of the Prince Series.” Judge Jacobs further noted that:
A key consideration in this case is the effect of the Prince Series on the market for
Goldsmith’s photograph. Our decision depends heavily on the commercial
competition between the photograph and the reproduced versions of the Prince
Series.
As the opinion observes, the market for the photograph and the market for the
original Prince Series works are distinct. An original work of art is marked by the
hand or signature of the artist, which is a preponderating factor in its value. When
the work is reproduced, it loses that mystique, as anyone who has browsed a gift
shop can appreciate. In a word, the original works and Goldsmith’s photograph are
not “substitutes.”
But when represented on a magazine cover, the Prince Series functions as a portrait
of the musician Prince--as does Goldsmith’s photograph. The Prince Series retains
the photograph’s expressive capacity for Prince portraiture and is sought for that
purpose. It may well compete for magazine covers, posters, coffee mugs, and other
media featuring the late musician. If the Foundation had refuted the evidence of
such market displacement, the weight of the analytical considerations would have
changed.

Is Judge Jacobs suggesting that Warhol’s original artworks are non-infringing but that any
reproductions thereof are?

Transformative use in Google v Oracle
In Google LLC. v. Oracle America, Inc., 593 U.S. __ (April 5, 2021) the Supreme Court held that
Google’s extensive copying of application programming interfaces (APIs) from the Java SE
program constituted fair use. As Justice Breyer described:
Google, through Android, provided a new collection of tasks operating in a distinct
and different computing environment. Those tasks were carried out through the use
of new implementing code (that Google wrote) designed to operate within that new
environment.

80 Adapted from Matthew Sag, Predicting Fair Use, 73 Ohio State Law Journal 47, 55 (2012).

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A longer version of the decision is extracted in the chapter on copyright and computer
software. The extract below concentrates on what the Supreme Court had to say about
transformative use.
Google LLC. v. Oracle America, Inc., 593 U.S. __ (April 5, 2021)
…
B. “The Purpose and Character of the Use”
In the context of fair use, we have considered whether the copier’s use “adds
something new, with a further purpose or different character, altering” the
copyrighted work “with new expression, meaning or message.” Id., at 579.
Commentators have put the matter more broadly, asking whether the copier’s use
“fulfill[s] the objective of copyright law to stimulate creativity for public illumination.”
Leval 1111. In answering this question, we have used the word “transformative” to
describe a copying use that adds something new and important. Campbell, 510 U. S.,
at 579. An artistic painting might, for example, fall within the scope of fair use even
though it precisely replicates a copyrighted advertising logo to make a comment
about consumerism. Or, as we held in Campbell, a parody can be transformative
because it comments on the original or criticizes it, for “parody needs to mimic an
original to make its point.” 510 U.S., at 580-581.
Google copied portions of the Sun Java API precisely, and it did so in part for the
same reason that Sun created those portions, namely, to enable programmers to call
up implementing programs that would accomplish particular tasks. But since virtually
any unauthorized use of a copyrighted computer program (say, for teaching or
research) would do the same, to stop here would severely limit the scope of fair use
in the functional context of computer programs. Rather, in determining whether a
use is “transformative,” we must go further and examine the copying’s more
specifically described “purpose[s]” and “character.” 17 U.S.C. § 107(1).
Here Google’s use of the Sun Java API seeks to create new products. It seeks to
expand the use and usefulness of Android-based smartphones. Its new product
offers programmers a highly creative and innovative tool for a smartphone
environment. To the extent that Google used parts of the Sun Java API to create a
new platform that could be readily used by programmers, its use was consistent with
that creative “progress” that is the basic constitutional objective of copyright itself.
Cf. Feist, 499 U.S., at 349-350 (“The primary objective of copyright is not to reward
the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts’”
(quoting U. S. Const., Art. I, § 8, cl. 8)).
The jury heard that Google limited its use of the Sun Java API to tasks and specific
programming demands related to Android. It copied the API (which Sun created for
use in desktop and laptop computers) only insofar as needed to include tasks that
would be useful in smartphone programs. And it did so only insofar as needed to
allow programmers to call upon those tasks without discarding a portion of a familiar
programming language and learning a new one. To repeat, Google, through Android,
provided a new collection of tasks operating in a distinct and different computing
environment. Those tasks were carried out through the use of new implementing
code (that Google wrote) designed to operate within that new environment. Some of
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the amici refer to what Google did as “reimplementation,” defined as the “building
of a system . . . that repurposes the same words and syntaxes” of an existing
system—in this case so that programmers who had learned an existing system could
put their basic skills to use in a new one. Brief for R Street Institute et al. as Amici
Curiae 2.
The record here demonstrates the numerous ways in which reimplementing an
interface can further the development of computer programs. The jury heard that
shared interfaces are necessary for different programs to speak to each other. App.
125 (“We have to agree on the APIs so that the application I write to show a movie
runs on your device”). It heard that the reimplementation of interfaces is necessary if
programmers are to be able to use their acquired skills. Id., at 191 (“If the API labels
change, then either the software wouldn’t continue to work anymore or the
developer . . . would have to learn a whole new language to be able to use these API
labels”). It heard that the reuse of APIs is common in the industry. It heard that Sun
itself had used pre-existing interfaces in creating Java. And it heard that Sun
executives thought that widespread use of the Java programming language, including
use on a smartphone platform, would benefit the company.
Amici supporting Google have summarized these same points—points that
witnesses explained to the jury. See, e.g., Brief for Copyright Scholars as Amici Curiae
25 (“The portions of Java SE that Google reimplemented may have helped preserve
consistency of use within the larger Java developer community”); Brief for Microsoft
Corporation as Amicus Curiae 22 (“Allowing reasonable fair use of functional code
enables innovation that creates new opportunities for the whole market to grow”);
Brief for 83 Computer Scientists as Amici Curiae 20 (“Reimplementing interfaces
fueled widespread adoption of popular programming languages”); Brief for R Street
Institute et al. as Amici Curiae 15-20 (describing Oracle’s reimplementation of other
APIs); see also Brief for American Antitrust Institute as Amicus Curiae 7 (“Copyright
on largely functional elements of software that [have] become an industry standard
gives a copyright holder anti-competitive power”).

Is Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith still good law after
Google v Oracle?
Why was Google’s use of the Java API’s transformative?
Google copied the Java APIs so that they could perform the exactly the same function in
Android as they did in the Java platform. On this basis, the Federal Circuit held in Oracle v
Google that Google’s use of the API packages was “not transformative” as a matter of law.
This reasoning was clearly rejected by the Supreme Court majority in Google v. Oracle:
Google copied portions of the Sun Java API precisely, and it did so in part for the
same reason that Sun created those portions, namely, to enable programmers to call
up implementing programs that would accomplish particular tasks. But since
virtually any unauthorized use of a copyrighted computer program (say, for teaching
or research) would do the same, to stop here would severely limit the scope of fair
use in the functional context of computer programs.

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Superficially, the Second Circuit’s reasoning in Andy Warhol Foundation for the Visual Arts, Inc.
v. Goldsmith is similar to that of the Federal Circuit. In AWF, the court held that, as between
the plaintiff’s photo of Prince and the defendant’s paintings of Prince:
there can be no meaningful dispute that the overarching purpose and function of the two
works at issue here is identical, not merely in the broad sense that they are created as
works of visual art, but also in the narrow but essential sense that they are portraits
of the same person. (emphasis added)

The court in AWF concluded that, despite the additional layers of expression added in the
Andy Warhol paintings, those paintings were not transformative of the Goldsmith photo
because the overarching purpose and function of the two works was identical. Warhol took
Goldsmith’s expressive work of visual art to make another work of visual art with a different
aesthetic, but where the photographer’s original expression was still a significant (perhaps
even predominant) part of the secondary work.
However, the similarities between the Federal Circuit’s decision and that of the Second
Circuit are only superficial. It is true that the majority in Google rejected Oracle’s argument
that Google’s use of the Java declarations could not be transformative because they served
the same intrinsic purpose in the Android system. But the decision in Google is quite specific
to the computer software context.
The majority decision in Google v. Oracle seems to have found that copying the Java APIs was
transformative for several reasons. The first was that copying the APIs would enable new
creativity by allowing Google to write a new operating system for smart phones. However,
the Court’s finding that Google’s use was transformative also seems to rest on three reasons
beyond the simple fact that doing so would enable further creativity: (1) in essence, the court
accepted Google’s argument that copying the APIs was necessary to allow programmers
who had invested time and energy is learning to write in Java to transfer their skills to the
new Android operating system that Google was developing for smartphones; (2) the Court
also noted the evidence that shared interfaces were necessary for different programs to speak
to each other; and (3) that the reuse of APIs was common in the software industry. The fact
that Google only copied a very small proportion of Sun’s code also reinforced the
transformative nature of Google’s use.
These considerations distinguish Google v Oracle from the AWF case. Google’s copying was
reasonably necessary to unlock value that stood apart from the copyright. To that extent the
decision is very similar to the reverse engineering cases. In both Sega Enter. Ltd. v. Accolade,
Inc., 977 F.2d 1510 (9th Cir. 1992) and Sony Computer Entertainment v. Connectix, 203 F.3d 596
(9th Cir. 2000), the Ninth Circuit held that reverse engineering of software code to gain
access to the ideas and functional elements embodied therein for a legitimate reason was fair
use as a matter of law. Those cases stress the importance of protecting the copyright work’s
expression from exploitative duplication, while at the same time enabling innovation and
competition by preserving the unprotected status of ideas and functional components within
the software. In Sony Computer Entertainment v. Connectix the court expressly recognized (at
603) that “the fair use doctrine preserves public access to the ideas and functional elements
embedded in copyrighted computer software programs.” In Google, the Supreme Court
likewise recognized that the fair use doctrine could and should be used to preserve the
community of software programmers’ freedom to transfer their skills to the new Android
operating system that Google was developing for smartphones and enable interoperability.
In contrast, the secondary use in AWF merely used expressive elements in one artist’s
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depiction of a musician as the basis for another artist’s depiction of the same musician.
There was no commentary, no criticism, no unlocking of uncopyrightable keys to
interoperability, or generation of uncopyrighted metadata about the work. In other words,
although the second artist added substantial new creativity, there was no meaningful change
in purpose and character. As the court in AWF recognized, some appropriation art is fair
use because even without a transformative purpose, the new work effects a change so
profound that it is, to quote the Second Circuit in AWF, “entirely separate from its source
material.” The defendant in AWF did not meet that standard.

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9. EXPRESSIVE FAIR USE—UNTRANSFORMATIVE USES
Untransformative copying and new markets
The Sony Betamax was the first mass-market Video Cassette Recorder or VCR. The
Betamax went on sale in 1975 and a year later Universal City Studios, Inc., and Walt Disney
Productions, filed a law suit alleging that consumers used the device to infringe their
copyrights; they also alleged that Sony Corporation, the manufacturer of the device, was
responsible for any copyright infringement made possible by the new machine. The Supreme
Court’s decision in Sony has two distinct components: the first examined whether consumer
time-shifting of broadcast television for later viewing was fair use or copyright infringement;
the second concerned the manufacturer’s liability for a technology which had both infringing
and non-infringing uses. This following extract focuses on the fair use status of unauthorized
time-shifting.
Sony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984)
Justice Stevens delivered the opinion of the Court
The question is thus whether the Betamax is capable of commercially significant
noninfringing uses. In order to resolve that question, we need not explore all the
different potential uses of the machine and determine whether or not they would
constitute infringement. Rather, we need only consider whether on the basis of the
facts as found by the District Court a significant number of them would be
noninfringing. Moreover, in order to resolve this case we need not give precise
content to the question of how much use is commercially significant. For one
potential use of the Betamax plainly satisfies this standard, however it is understood:
private, noncommercial time-shifting in the home. It does so both (A) because
respondents have no right to prevent other copyright holders from authorizing it for
their programs, and (B) because the District Court’s factual findings reveal that even
the unauthorized home time-shifting of respondents’ programs is legitimate fair use.
[Justice Steven’s discussion of authorized use is omitted.]
Unauthorized Time-Shifting
Even unauthorized uses of a copyrighted work are not necessarily infringing. An
unlicensed use of the copyright is not an infringement unless it conflicts with one of
the specific exclusive rights conferred by the copyright statute. Twentieth Century Music
Corp. v. Aiken, 422 U.S., at 154-155. Moreover, the definition of exclusive rights in §
106 of the present Act is prefaced by the words “subject to sections 107 through
118.” Those sections describe a variety of uses of copyrighted material that “are not
infringements of copyright” “notwithstanding the provisions of section 106.” The
most pertinent in this case is § 107, the legislative endorsement of the doctrine of
“fair use.”29
Footnote 29: The Copyright Act of 1909, 35 Stat. 1075, did not have a “fair use” provision. Although
that Act’s compendium of exclusive rights “to print, reprint, publish, copy, and vend the copyrighted
work” was broad enough to encompass virtually all potential interactions with a copyrighted work, the
statute was never so construed. The courts simply refused to read the statute literally in every

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situation. When Congress amended the statute in 1976, it indicated that it “intended to restate the
present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way.” House Report p.
66 (1976).

That section identifies various factors that enable a court to apply an “equitable rule
of reason” analysis to particular claims of infringement. Although not conclusive, the
first factor requires that “the commercial or nonprofit character of an activity” be
weighed in any fair use decision. If the Betamax were used to make copies for a
commercial or profitmaking purpose, such use would presumptively be unfair. The
contrary presumption is appropriate here, however, because the District Court’s
findings plainly establish that time-shifting for private home use must be
characterized as a noncommercial, nonprofit activity. Moreover, when one considers
the nature of a televised copyrighted audiovisual work, § 107(2), and that timeshifting merely enables a viewer to see such a work which he had been invited to
witness in its entirety free of charge, the fact that the entire work is reproduced, see §
107(3), does not have its ordinary effect of militating against a finding of fair use.
This is not, however, the end of the inquiry because Congress has also directed us to
consider “the effect of the use upon the potential market for or value of the
copyrighted work.” § 107(4). The purpose of copyright is to create incentives for
creative effort. Even copying for noncommercial purposes may impair the copyright
holder’s ability to obtain the rewards that Congress intended him to have. But a use
that has no demonstrable effect upon the potential market for, or the value of, the
copyrighted work need not be prohibited in order to protect the author’s incentive to
create. The prohibition of such noncommercial uses would merely inhibit access to
ideas without any countervailing benefit.
Thus, although every commercial use of copyrighted material is presumptively an
unfair exploitation of the monopoly privilege that belongs to the owner of the
copyright, noncommercial uses are a different matter. A challenge to a
noncommercial use of a copyrighted work requires proof either that the particular
use is harmful, or that if it should become widespread, it would adversely affect the
potential market for the copyrighted work. Actual present harm need not be shown;
such a requirement would leave the copyright holder with no defense against
predictable damage. Nor is it necessary to show with certainty that future harm will
result. What is necessary is a showing by a preponderance of the evidence that some
meaningful likelihood of future harm exists. If the intended use is for commercial
gain, that likelihood may be presumed. But if it is for a noncommercial purpose, the
likelihood must be demonstrated.
In this case, respondents failed to carry their burden with regard to home timeshifting. The District Court described respondents’ evidence as follows:
“Plaintiffs’ experts admitted at several points in the trial that the time-shifting
without librarying would result in ‘not a great deal of harm.’ Plaintiffs’ greatest
concern about time-shifting is with ‘a point of important philosophy that transcends
even commercial judgment.’ They fear that with any Betamax usage, ‘invisible
boundaries’ are passed: ‘the copyright owner has lost control over his program.’”
480 F. Supp., at 467.

Later in its opinion, the District Court observed:

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“Most of plaintiffs’ predictions of harm hinge on speculation about audience
viewing patterns and ratings, a measurement system which Sidney Sheinberg, MCA’s
president, calls a ‘black art’ because of the significant level of imprecision involved
in the calculations.” Id., at 469.

There was no need for the District Court to say much about past harm. “Plaintiffs
have admitted that no actual harm to their copyrights has occurred to date.”
On the question of potential future harm from time-shifting, the District Court
offered a more detailed analysis of the evidence. It rejected respondents’ “fear that
persons ‘watching’ the original telecast of a program will not be measured in the live
audience and the ratings and revenues will decrease,” by observing that current
measurement technology allows the Betamax audience to be reflected. Id., at 466. It
rejected respondents’ prediction “that live television or movie audiences will decrease
as more people watch Betamax tapes as an alternative,” with the observation that
“[t]here is no factual basis for [the underlying] assumption.” It rejected respondents’
“fear that time-shifting will reduce audiences for telecast reruns,” and concluded
instead that “given current market practices, this should aid plaintiffs rather than
harm them.” Ibid. And it declared that respondents’ suggestion that “theater or film
rental exhibition of a program will suffer because of time-shift recording of that
program” “lacks merit.”
After completing that review, the District Court restated its overall conclusion
several times, in several different ways. “Harm from time-shifting is speculative and,
at best, minimal.” “The audience benefits from the time-shifting capability have
already been discussed. It is not implausible that benefits could also accrue to
plaintiffs, broadcasters, and advertisers, as the Betamax makes it possible for more
persons to view their broadcasts.” “No likelihood of harm was shown at trial, and
plaintiffs admitted that there had been no actual harm to date.” “Testimony at trial
suggested that Betamax may require adjustments in marketing strategy, but it did not
establish even a likelihood of harm.” “Television production by plaintiffs today is
more profitable than it has ever been, and, in five weeks of trial, there was no
concrete evidence to suggest that the Betamax will change the studios’ financial
picture.”
The District Court’s conclusions are buttressed by the fact that to the extent timeshifting expands public access to freely broadcast television programs, it yields
societal benefits. In Community Television of Southern California v. Gottfried, 459 U.S. 498
(1983), we acknowledged the public interest in making television broadcasting more
available. Concededly, that interest is not unlimited. But it supports an interpretation
of the concept of “fair use” that requires the copyright holder to demonstrate some
likelihood of harm before he may condemn a private act of time-shifting as a
violation of federal law.
When these factors are all weighed in the “equitable rule of reason” balance, we must
conclude that this record amply supports the District Court’s conclusion that home
time-shifting is fair use. In light of the findings of the District Court regarding the
state of the empirical data, it is clear that the Court of Appeals erred in holding that
the statute as presently written bars such conduct.

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In summary, the record and findings of the District Court lead us to two conclusions.
First, Sony demonstrated a significant likelihood that substantial numbers of
copyright holders who license their works for broadcast on free television would not
object to having their broadcasts time-shifted by private viewers. And second,
respondents failed to demonstrate that time-shifting would cause any likelihood of
nonminimal harm to the potential market for, or the value of, their copyrighted
works. The Betamax is, therefore, capable of substantial noninfringing uses. Sony’s
sale of such equipment to the general public does not constitute contributory
infringement of respondents’ copyrights.
***
“The direction of Art. I is that Congress shall have the power to promote the
progress of science and the useful arts. When, as here, the Constitution is permissive,
the sign of how far Congress has chosen to go can come only from Congress.”
Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 530 (1972).
One may search the Copyright Act in vain for any sign that the elected
representatives of the millions of people who watch television every day have made
it unlawful to copy a program for later viewing at home, or have enacted a flat
prohibition against the sale of machines that make such copying possible.
It may well be that Congress will take a fresh look at this new technology, just as it
so often has examined other innovations in the past. But it is not our job to apply
laws that have not yet been written. Applying the copyright statute, as it now reads,
to the facts as they have been developed in this case, the judgment of the Court of
Appeals must be reversed.
It is so ordered.
Notes and questions
(1) In Sony Corp. of America v. Universal City Studios, Inc., 464 US 417 (1984), the Supreme
Court held by majority that consumer time-shifting of free-to-air broadcast television was
fair use. It did so for two principle reasons. First, because time-shifting merely enabled
viewers to see works which they had been invited to witness in their entirety free of charge,
the fact that the entire work is reproduced, did not have its ordinary effect of militating
against a finding of fair use. Second, because the plaintiffs had offered no convincing
evidence of market harm, the non-commercial use of the VCR by consumers should be
considered fair use.
(2) Does Sony stand for a broad principle about consumer autonomy and the limits of
copyright? Is it a narrow ruling based on specific technology that is now obsolete? Or, is
there some other way to characterize the decision?
(3) In Recording Indus. Association of Am. v. Diamond Multimedia Sys., Inc., 180 F.3d 1072, 1079
(9th Cir.1999), the Ninth Circuit said that the Diamond Rio mp3 player (a large capacity
portable MP3 player that predated the now more famous Apple iPod) “merely makes copies
in order to render portable, or ‘space-shift,’ those [music] files that already reside on a user’s
hard drive. . . . Such copying is a paradigmatic noncommercial personal use.”

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(4) In Fox Broadcasting Co., Inc. v. Dish Network LLC, 747 F. 3d 1060 (9th Cir. 2014), the
Ninth Circuit held en banc that Dish Network was likely to succeed in its fair use defense
with respect to a digital video recorder that automatically skipped the advertisements in
programs its users recorded. The court found that Fox had not demonstrated any harm from
on-demand availability and that any harm resulting from the ease of skipping commercials,
did “not implicate any copyright interest.”
The court of appeals explained (at 1068-1069):
Yet, as the district court held, commercial-skipping does not implicate Fox’s
copyright interest because Fox owns the copyrights to the television programs, not
to the ads aired in the commercial breaks. If recording an entire copyrighted
program is a fair use, the fact that viewers do not watch the ads not copyrighted by
Fox cannot transform the recording into a copyright violation.

Do you agree with this reasoning?

American Geophysical Union v. Texaco Inc., 60 F. 3d 913 (2d Cir. 1994)81
In both Williams & Wilkins Co. v. United States, 203 Ct. Cl. 74 (1973) and American Geophysical
Union v. Texaco Inc., 60 F.3d 913 (2d Cir. 1994) academic journal publishers alleged that their
copyrights were infringed by defendants making unauthorized photocopies of journal articles
for medical and scientific research. Williams & Wilkins was appealed to the U.S. Supreme
Court, but the Court divided evenly on the question presented and thus offered no opinion.
The two cases, decided almost 20 years apart, are barely distinguishable on their core facts,
and yet reach entirely opposite conclusions.
The difference between the cases lies in the latter court's willingness to find that the
publisher suffered an adverse market effect. The Court of Claims in Williams & Wilkins held
that the evidence on the record failed to show that the defendant’s photocopying practices
caused a significant detriment to the plaintiff. In American Geophysical, the Second Circuit
also concluded that, based on potential sales of additional journal subscriptions, back issues,
and back volumes alone, the evidence of an adverse market effect was weak. However, the
majority of the Second Circuit concluded that the plaintiff prevailed on the fourth factor
because of the availability of licensing facilitated through the Copyright Clearance Center
(“CCC”). The majority found that through this collection organization, the publishers had
created “a workable market for institutional users to obtain licenses for the right to produce
their own copies of individual articles via photocopying.”82 In the opinion of the majority,
the potential licensing revenues that would be forgone by publishers if a finding of fair use
was made itself constituted an adverse market effect under the fourth factor.
Any copyright owner who loses an infringement action because of a finding of fair use has
also lost at least one potential licensee, although in some cases the prospects of a license are
more theoretical than real. The majority in American Geophysical argued its reliance on
potential licensing revenues was not circular because “only an impact on potential licensing
revenues for traditional, reasonable, or likely to be developed markets should be legally cognizable
81 Adapted from Matthew Sag, God in the Machine: A New Structural Analysis of Copyright’s Fair Use Doctrine, 11

Mich. Telecomm. & Tech. L. Rev. 381 (2005).
82 At 930.

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when evaluating a secondary use's effect upon the potential market for or value of the
copyrighted work.” (emphasis added).83
Does the “traditional, reasonable, or likely” requirement address the problem of circular
reasoning? If a centralized clearinghouse was established to license parody, review or
reference to a class of works, would it establish the existence of a “traditional,” “reasonable,”
or “likely” market for such activities? If the members of the MPAA established a rights
clearing center for reviews and parodies of, and references to their movies, would
unauthorized review, reference and parody suddenly cease to be fair use? There may be good
reasons to not give copyright owners to expand control over certain uses of their works,
even if they are offering to license those uses.
The fourth factor is important but conceptually incomplete. In order to determine market
effect, a court must first form some idea as to what the market is. Holding that the market is
not simply anything the plaintiff declares it to be is a good start, but there is an obvious
subjectivity in the notion of markets that are “traditional, reasonable, or likely to be developed.”
A & M Records, Inc. v. Napster, Inc., 239 F. 3d 1004 (9th Cir. 2001)
Circuit Judge Beezer
Plaintiffs are engaged in the commercial recording, distribution and sale of
copyrighted musical compositions and sound recordings. The complaint alleges that
Napster, Inc. (“Napster”) is a contributory and vicarious copyright infringer. The
district court preliminarily enjoined Napster “from engaging in, or facilitating others
in copying, downloading, uploading, transmitting, or distributing plaintiffs’
copyrighted musical compositions and sound recordings, protected by either federal
or state law, without express permission of the rights owner.” We entered a
temporary stay of the preliminary injunction pending resolution of this appeal.
Napster facilitates the transmission of MP3 files between and among its users.
Through a process commonly called “peer-to-peer” file sharing, Napster allows its
users to: (1) make MP3 music files stored on individual computer hard drives
available for copying by other Napster users; (2) search for MP3 music files stored
on other users’ computers; and (3) transfer exact copies of the contents of other
users’ MP3 files from one computer to another via the Internet. These functions are
made possible by Napster’s MusicShare software, available free of charge from
Napster’s Internet site, and Napster’s network servers and server-side software.
Napster provides technical support for the indexing and searching of MP3 files, as
well as for its other functions, including a “chat room,” where users can meet to
discuss music, and a directory where participating artists can provide information
about their music.
Plaintiffs claim Napster users are engaged in the wholesale reproduction and
distribution of copyrighted works, all constituting direct infringement. The district
court agreed. The district court determined that plaintiffs’ exclusive rights under §
106 were violated: “here the evidence establishes that a majority of Napster users use
the service to download and upload copyrighted music. And by doing that, it
83 Id.

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constitutes—the uses constitute direct infringement of plaintiffs’ musical
compositions, recordings.” The district court also noted that “it is pretty much
acknowledged by Napster that this is infringement.” We agree that plaintiffs have
shown that Napster users infringe at least two of the copyright holders’ exclusive
rights: the rights of reproduction, § 106(1); and distribution, § 106(3). Napster users
who upload file names to the search index for others to copy violate plaintiffs’
distribution rights. Napster users who download files containing copyrighted music
violate plaintiffs’ reproduction rights.
Napster asserts an affirmative defense to the charge that its users directly infringe
plaintiffs’ copyrighted musical compositions and sound recordings.
Fair Use
Napster contends that its users do not directly infringe plaintiffs’ copyrights because
the users are engaged in fair use of the material. Napster identifies three specific
alleged fair uses: sampling, where users make temporary copies of a work before
purchasing; space-shifting, where users access a sound recording through the
Napster system that they already own in audio CD format; and permissive
distribution of recordings by both new and established artists.
The district court considered factors listed in 17 U.S.C. § 107, which guide a court’s
fair use determination. … The district court concluded that Napster users are not fair
users. We agree. We first address the court’s overall fair use analysis.
1. Purpose and Character of the Use
This factor focuses on whether the new work merely replaces the object of the
original creation or instead adds a further purpose or different character. In other
words, this factor asks “whether and to what extent the new work is ‘transformative.’”
See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).
The district court first concluded that downloading MP3 files does not transform the
copyrighted work. This conclusion is supportable. Courts have been reluctant to find
fair use when an original work is merely retransmitted in a different medium. See,
e.g., Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir.1998) (concluding
that retransmission of radio broadcast over telephone lines is not transformative);
UMG Recordings, Inc. v. MP3.com, Inc., 92 F.Supp.2d 349, 351 (S.D.N.Y.) (finding that
reproduction of audio CD into MP3 format does not “transform” the work).
This “purpose and character” element also requires the district court to determine
whether the allegedly infringing use is commercial or noncommercial. See Campbell,
510 U.S. at 584-85. A commercial use weighs against a finding of fair use but is not
conclusive on the issue. Id. The district court determined that Napster users engage
in commercial use of the copyrighted materials largely because (1) “a host user
sending a file cannot be said to engage in a personal use when distributing that file to
an anonymous requester” and (2) “Napster users get for free something they would
ordinarily have to buy.” The district court’s findings are not clearly erroneous.
Direct economic benefit is not required to demonstrate a commercial use. Rather,
repeated and exploitative copying of copyrighted works, even if the copies are not
offered for sale, may constitute a commercial use. See Worldwide Church of God v.
Philadelphia Church of God, 227 F.3d 1110, 1118 (9th Cir.2000) (stating that church that
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copied religious text for its members “unquestionably profited” from the
unauthorized “distribution and use of [the text] without having to account to the
copyright holder”); American Geophysical Union v. Texaco, Inc., 60 F.3d 913, 922 (2d
Cir.1994) (finding that researchers at for-profit laboratory gained indirect economic
advantage by photocopying copyrighted scholarly articles). In the record before us,
commercial use is demonstrated by a showing that repeated and exploitative
unauthorized copies of copyrighted works were made to save the expense of
purchasing authorized copies. See Worldwide Church, 227 F.3d at 1117-18; Sega Enters.
Ltd. v. MAPHIA, 857 F.Supp. 679, 687 (N.D.Cal.1994) (finding commercial use
when individuals downloaded copies of video games “to avoid having to buy video
game cartridges”); see also American Geophysical, 60 F.3d at 922. Plaintiffs made such a
showing before the district court.
We also note that the definition of a financially motivated transaction for the
purposes of criminal copyright actions includes trading infringing copies of a work
for other items, “including the receipt of other copyrighted works.” See No
Electronic Theft Act (“NET Act”), Pub.L. No. 105-147, 18 U.S.C. § 101 (defining
“Financial Gain”).
2. The Nature of the Use
Works that are creative in nature are “closer to the core of intended copyright
protection” than are more fact-based works. See Campbell, 510 U.S. at 586. The
district court determined that plaintiffs’ “copyrighted musical compositions and
sound recordings are creative in nature which cuts against a finding of fair use under
the second factor.” We find no error in the district court’s conclusion.
3. The Portion Used
“While ‘wholesale copying does not preclude fair use per se,’ copying an entire work
‘militates against a finding of fair use.’” Worldwide Church, 227 F.3d at 1118 (quoting
Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1155 (9th Cir.1986)). The
district court determined that Napster users engage in “wholesale copying” of
copyrighted work because file transfer necessarily “involves copying the entirety of
the copyrighted work.” We agree. We note, however, that under certain
circumstances, a court will conclude that a use is fair even when the protected work
is copied in its entirety. See, e.g., Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417,
449-50 (1984) (acknowledging that fair use of time-shifting necessarily involved
making a full copy of a protected work).
4. Effect of Use on Market
“Fair use, when properly applied, is limited to copying by others which does not
materially impair the marketability of the work which is copied.” Harper & Row
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 566-67 (1985). “[T]he importance of this
[fourth] factor will vary, not only with the amount of harm, but also with the relative
strength of the showing on the other factors.” Campbell, 510 U.S. at 591 n. 21. The
proof required to demonstrate present or future market harm varies with the
purpose and character of the use:
A challenge to a noncommercial use of a copyrighted work requires proof either
that the particular use is harmful, or that if it should become widespread, it would

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adversely affect the potential market for the copyrighted work. . . . If the intended
use is for commercial gain, that likelihood [of market harm] may be presumed. But
if it is for a noncommercial purpose, the likelihood must be demonstrated.

Sony, 464 U.S. at 451 (emphases added).
Addressing this factor, the district court concluded that Napster harms the market in
“at least” two ways: it reduces audio CD sales among college students and it “raises
barriers to plaintiffs’ entry into the market for the digital downloading of music.”
[The court summarized the district court’s treatment of the expert evidence.] The
district court cited both the Jay and Fine Reports in support of its finding that
Napster use harms the market for plaintiffs’ copyrighted musical compositions and
sound recordings by reducing CD sales among college students. The district court
cited the Teece Report to show the harm Napster use caused in raising barriers to
plaintiffs’ entry into the market for digital downloading of music. The district court’s
careful consideration of defendant’s objections to these reports and decision to rely
on the reports for specific issues demonstrates a proper exercise of discretion in
addition to a correct application of the fair use doctrine. Defendant has failed to
show any basis for disturbing the district court’s findings.
We, therefore, conclude that the district court made sound findings related to
Napster’s deleterious effect on the present and future digital download market.
Moreover, lack of harm to an established market cannot deprive the copyright holder
of the right to develop alternative markets for the works. See L.A. Times v. Free
Republic, 54 U.S.P.Q.2d 1453, 1469-71 (C.D.Cal.2000) (stating that online market for
plaintiff newspapers’ articles was harmed because plaintiffs demonstrated that
“[defendants] are attempting to exploit the market for viewing their articles online”);
see also UMG Recordings, 92 F.Supp.2d at 352 (“Any allegedly positive impact of
defendant’s activities on plaintiffs’ prior market in no way frees defendant to usurp a
further market that directly derives from reproduction of the plaintiffs’ copyrighted
works.”). Here, similar to L.A. Times and UMG Recordings, the record supports the
district court’s finding that the “record company plaintiffs have already expended
considerable funds and effort to commence Internet sales and licensing for digital
downloads.” 114 F.Supp.2d at 915. Having digital downloads available for free on
the Napster system necessarily harms the copyright holders’ attempts to charge for
the same downloads.
Judge Patel did not abuse her discretion in reaching the above fair use conclusions,
nor were the findings of fact with respect to fair use considerations clearly erroneous.
We next address Napster’s identified uses of sampling and space-shifting.
5. Identified Uses
Napster maintains that its identified uses of sampling and space-shifting were
wrongly excluded as fair uses by the district court.
a. Sampling
Napster contends that its users download MP3 files to “sample” the music in order
to decide whether to purchase the recording. Napster argues that the district court:
(1) erred in concluding that sampling is a commercial use because it conflated a
noncommercial use with a personal use; (2) erred in determining that sampling

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adversely affects the market for plaintiffs’ copyrighted music, a requirement if the
use is noncommercial; and (3) erroneously concluded that sampling is not a fair use
because it determined that samplers may also engage in other infringing activity.
The district court determined that sampling remains a commercial use even if some
users eventually purchase the music. We find no error in the district court’s
determination. Plaintiffs have established that they are likely to succeed in proving
that even authorized temporary downloading of individual songs for sampling
purposes is commercial in nature. The record supports a finding that free
promotional downloads are highly regulated by the record company plaintiffs and
that the companies collect royalties for song samples available on retail Internet sites.
Id. Evidence relied on by the district court demonstrates that the free downloads
provided by the record companies consist of thirty-to-sixty second samples or are
full songs programmed to “time out,” that is, exist only for a short time on the
downloader’s computer. In comparison, Napster users download a full, free and
permanent copy of the recording. The determination by the district court as to the
commercial purpose and character of sampling is not clearly erroneous.
The district court further found that both the market for audio CDs and market for
online distribution are adversely affected by Napster’s service. As stated in our
discussion of the district court’s general fair use analysis: the court did not abuse its
discretion when it found that, overall, Napster has an adverse impact on the audio
CD and digital download markets. Contrary to Napster’s assertion that the district
court failed to specifically address the market impact of sampling, the district court
determined that “[e]ven if the type of sampling supposedly done on Napster were a
non-commercial use, plaintiffs have demonstrated a substantial likelihood that it
would adversely affect the potential market for their copyrighted works if it became
widespread.” The record supports the district court’s preliminary determinations
that: (1) the more music that sampling users download, the less likely they are to
eventually purchase the recordings on audio CD; and (2) even if the audio CD
market is not harmed, Napster has adverse effects on the developing digital
download market.
Napster further argues that the district court erred in rejecting its evidence that the
users’ downloading of “samples” increases or tends to increase audio CD sales. The
district court, however, correctly noted that “any potential enhancement of plaintiffs’
sales . . . would not tip the fair use analysis conclusively in favor of defendant.” We
agree that increased sales of copyrighted material attributable to unauthorized use
should not deprive the copyright holder of the right to license the material. See
Campbell, 510 U.S. at 591 n. 21 (“Even favorable evidence, without more, is no
guarantee of fairness. Judge Leval gives the example of the film producer’s
appropriation of a composer’s previously unknown song that turns the song into a
commercial success; the boon to the song does not make the film’s simple copying
fair.”); see also L.A. Times, 54 U.S.P.Q.2d at 1471-72. Nor does positive impact in
one market, here the audio CD market, deprive the copyright holder of the right to
develop identified alternative markets, here the digital download market. See id. at
1469-71.

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We find no error in the district court’s factual findings or abuse of discretion in the
court’s conclusion that plaintiffs will likely prevail in establishing that sampling does
not constitute a fair use.
b. Space-Shifting
Napster also maintains that space-shifting is a fair use. Space-shifting occurs when a
Napster user downloads MP3 music files in order to listen to music he already owns
on audio CD. Napster asserts that we have already held that space-shifting of musical
compositions and sound recordings is a fair use. See Recording Indus. Ass’n of Am. v.
Diamond Multimedia Sys., Inc., 180 F.3d 1072, 1079 (9th Cir.1999) (“Rio [a portable
MP3 player] merely makes copies in order to render portable, or ‘space-shift,’ those
files that already reside on a user’s hard drive. . . . Such copying is a paradigmatic
noncommercial personal use.”). See also generally Sony, 464 U.S. at 423 (holding that
“time-shifting,” where a video tape recorder owner records a television show for
later viewing, is a fair use).
We conclude that the district court did not err when it refused to apply the “shifting”
analyses of Sony and Diamond. Both Diamond and Sony are inapposite because the
methods of shifting in these cases did not also simultaneously involve distribution of
the copyrighted material to the general public; the time or space-shifting of
copyrighted material exposed the material only to the original user. In Diamond, for
example, the copyrighted music was transferred from the user’s computer hard drive
to the user’s portable MP3 player. So too Sony, where “the majority of VCR
purchasers . . . did not distribute taped television broadcasts, but merely enjoyed
them at home.” Conversely, it is obvious that once a user lists a copy of music he
already owns on the Napster system in order to access the music from another
location, the song becomes “available to millions of other individuals,” not just the
original CD owner.
c. Other Uses
Permissive reproduction by either independent or established artists is the final fair
use claim made by Napster. The district court noted that plaintiffs did not seek to
enjoin this and any other noninfringing use of the Napster system, including: chat
rooms, message boards and Napster’s New Artist Program. Plaintiffs do not
challenge these uses on appeal.
We find no error in the district court’s determination that plaintiffs will likely succeed
in establishing that Napster users do not have a fair use defense.
Notes and questions
(1) In A & M Records, Inc. v. Napster, Inc., 239 F. 3d 1004 (9th Cir. 2001), the Ninth Circuit
held that the unauthorized peer-to-peer filesharing of copyrighted music facilitated by
Napster was not fair use. The court rejected Napster’s arguments that user “sampling” and
“space-shifting” were fair use.
(2) Why is the result in Sony different to that in Napster?
(3) Notice that in Sony, the plaintiffs apparently failed to offer convincing evidence of market
harm but that Napster the held that file-sharing harmed both the present market for CDs

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(something that seems obvious, but was tricky to prove) and the potential market for digital
downloads that the plaintiffs had not really taken advantage of. The courts in these cases are
not just making an empirical assessment of real-world markets, they are deciding what uses
of copyrighted works should be the subject of market transactions. In some cases, these
markets might not even exist yet or in their infancy, in others they may be well developed.
Does the fact that the rights holder is deliberately leaving the market unfulfilled mean that
what would otherwise be infringement should be fair use?
(4) Part of the reason Napster was so popular in 1999 and 2000 before it was shut down was
that there was no significant legal platform for MP3 downloads at the time. That market was
essentially left void until the launch of the Apple iTunes Store on April 28, 2003. The
recording industry’s reluctance to enter the digital distribution market seems like a classic
case of the “Innovator’s Dilemma.” As Professor Clayton Christensen, explains in his
famous book by that name, companies that are heavily invested in the status quo are often
disinclined to pursue superior new technologies that will disrupt an existing market. This is
not because they fail to recognize the potential of the new technology, but rather because
they appreciate that the new technology will cannibalize the market share of existing
offerings.

Providing access to the print-disabled
Providing access to the print-disabled is a non-transformative use, but it is nonetheless a
preferred use under current fair use law.
In 2004, the Internet search engine company Google began scanning and digitizing the
collections of a number of academic libraries with the aim of making their contents
searchable in the same way Internet websites are searchable. One of the incentives for
libraries to participate in this program was that they received their own digital versions of
any item in their collection that Google had scanned.
The Google Books project lead to a complicated class action lawsuit filed by the Authors
Guild in 2005. In 2011, the Authors Guild filed a second lawsuit taking aim against the
academic libraries that had partnered with Google. Those libraries had centralized their
digital collections under the umbrella of a new organization called the HathiTrust.84 One of
the features of the HathiTrust that the Authors Guild objected to was that the HathiTrust
digital library allowed member libraries to students with print disabilities access to the full
text of copyrighted works. The HathiTrust case is addressed in more detail in the chapter on
non-expressive use. The following extract focus on the print disability issue.
Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014)
Circuit Judge Barrington D. Parker
The HDL allows member libraries to provide patrons with certified print disabilities
access to the full text of copyrighted works. A “print disability” is any disability that
prevents a person from effectively reading printed material. Blindness is one
84 Disclosure: I have been a member of the HathiTrust Research Center Advisory Board since 2016, however

the views expressed herein are entirely my own.

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example, but print disabilities also include those that prevent a person from
physically holding a book or turning pages. To use this service, a patron must obtain
certification 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
adaptive technologies such as software that converts the text into spoken words, or
that magnifies the text. Currently, the University of Michigan’s library is the only
HDL member that permits such access, although other member libraries intend to
provide it in the future.
Access to the Print-Disabled
The HDL also provides print-disabled patrons with versions of all of the works
contained in its digital archive in formats accessible to them. In order to obtain
access to the works, a patron must submit documentation from a qualified expert
verifying that the disability prevents him or her from reading printed materials, and
the patron must be affiliated with an HDL member that has opted-into the program.
Currently, the University of Michigan is the only HDL member institution that has
opted-in. We conclude that this use is also protected by the doctrine of fair use.
[The court’s general discussion of fair use is omitted] In applying the Factor One
analysis, the district court concluded that “the use of digital copies to facilitate access
for print-disabled persons is a transformative” use. HathiTrust, 902 F.Supp.2d at 461.
This is a misapprehension; providing expanded access to the print disabled is not
“transformative.”
As discussed above, a transformative use adds something new to the copyrighted
work and does not merely supersede the purposes of the original creation. See
Campbell, 510 U.S. at 579. The Authors state that they “write books to be read (or
listened to).” By making copyrighted works available in formats accessible to the
disabled, the HDL enables a larger audience to read those works, but the underlying
purpose of the HDL’s use is the same as the author’s original purpose.
Indeed, when the HDL recasts copyrighted works into new formats to be read by
the disabled, it appears, at first glance, to be creating derivative works over which the
author ordinarily maintains control. See 17 U.S.C. § 106(2). As previously noted,
paradigmatic examples of derivative works include translations of the original into a
different language, or adaptations of the original into different forms or media. See
id. § 101 (defining “derivative work”). The Authors contend that by converting their
works into a different, accessible format, the HDL is simply creating a derivative
work.
It is true that, oftentimes, the print-disabled audience has no means of obtaining
access to the copyrighted works included in the HDL. But, similarly, the nonEnglish-speaking audience cannot gain access to untranslated books written in
English and an unauthorized translation is not transformative simply because it
enables a new audience to read a work.
This observation does not end the analysis. “While a transformative use generally is
more likely to qualify as fair use, ‘transformative use is not absolutely necessary for a
finding of fair use.’” Swatch Group v. Bloomberg L.P., 756 F.3d 73, 84, (2d Cir.2014)
(quoting Campbell, 510 U.S. at 579). We conclude that providing access to the print-

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disabled is still a valid purpose under Factor One even though it is not
transformative. We reach that conclusion for several reasons.
First, the Supreme Court has already said so. As Justice Stevens wrote for the Court:
“Making a copy of a copyrighted work for the convenience of a blind person is
expressly identified by the House Committee Report as an example of fair use, with
no suggestion that anything more than a purpose to entertain or to inform need
motivate the copying.” Sony Corp. of Am., 464 U.S. at 455 n. 40.
Our conclusion is reinforced by the legislative history on which he relied. The House
Committee Report that accompanied codification of the fair use doctrine in the
Copyright Act of 1976 expressly stated that making copies accessible “for the use of
blind persons” posed a “special instance illustrating the application of the fair use
doctrine....” House Report at 73 (1976). The Committee noted that “special [blindaccessible formats] ... are not usually made by the publishers for commercial
distribution.” Id. In light of its understanding of the market (or lack thereof) for
books accessible to the blind, the Committee explained that “the making of a single
copy or phonorecord by an individual as a free service for a blind persons [sic] would
properly be considered a fair use under section 107.” Id. We believe this guidance
supports a finding of fair use in the unique circumstances presented by print-disabled
readers.
Since the passage of the 1976 Copyright Act, Congress has reaffirmed its
commitment to ameliorating the hardships faced by the blind and the print disabled.
In the Americans with Disabilities Act, Congress declared that our “Nation’s proper
goals regarding individuals with disabilities are to assure equality of opportunity, full
participation, independent living, and economic self-sufficiency for such individuals.”
42 U.S.C. § 12101(7). Similarly, the Chafee Amendment illustrates Congress’s intent
that copyright law make appropriate accommodations for the blind and print
disabled. See 17 U.S.C. § 121.
Through the HDL, the disabled can obtain access to copyrighted works of all kinds,
and there is no dispute that those works are of the sort that merit protection under
the Copyright Act. As a result, Factor Two weighs against fair use. This does not
preclude a finding of fair use, however, given our analysis of the other factors. Cf.
Davis v. Gap, Inc., 246 F.3d 152, 175 (2d Cir.2001) (“The second statutory factor, the
nature of the copyrighted work, is rarely found to be determinative.”).
Regarding Factor Three, as previously noted, the HDL retains copies as digital image
files and as text-only files, which are then stored in four separate locations. The
Authors contend that this amount of copying is excessive because the Libraries have
not demonstrated their need to retain the digital image files in addition to the text
files.
We 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
additional and often more useful method by which many disabled patrons, especially
students and scholars, can obtain access to these works. These image files contain
information, such as pictures, charts, diagrams, and the layout of the text on the
printed page that cannot be converted to text or speech. None of this is captured by
the HDL’s text-only copies. Many legally blind patrons are capable of viewing these
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images if they are sufficiently magnified or if the color contrasts are increased. And
other disabled patrons, whose physical impairments prevent them from turning
pages or from holding books, may also be able to use assistive devices to view all of
the content contained in the image files for a book. For those individuals, gaining
access to the HDL’s image files — in addition to the text-only files — is necessary to
perceive the books fully. Consequently, it is reasonable for the Libraries to retain
both the text and image copies.
The fourth factor also weighs in favor of a finding of fair use. It is undisputed that
the present-day market for books accessible to the handicapped is so insignificant
that “it is common practice in the publishing industry for authors to forgo royalties
that are generated through the sale of books manufactured in specialized formats for
the blind.” “The number of accessible books currently available to the blind for
borrowing is a mere few hundred thousand titles, a minute percentage of the world’s
books. In contrast, the HDL contains more than ten million accessible volumes.”
When considering the 1976 Act, Congress was well aware of this problem. The
House Committee Report observed that publishers did not usually make their books
available in specialized formats for the blind. House Report at 73, 1976. That
observation remains true today.
Weighing the factors together, we conclude that the doctrine of fair use allows the
Libraries to provide full digital access to copyrighted works to their print-disabled
patrons.
Notes and questions
(1) In Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014), the Second Circuit held that
providing print-disabled patrons with full digital access to books was not transformative.
The court specifically overruled the district court on this point (at 101):
By making copyrighted works available in formats accessible to the disabled, the
HDL enables a larger audience to read those works, but the underlying purpose of
the HDL’s use is the same as the author’s original purpose.

Nonetheless, the court agreed that providing access to the print-disabled is still a valid
purpose under the first fair use factor, even though it was not transformative. This was not
an especially difficult decision, making copies accessible “for the use of blind persons” was
clearly identified in the legislative history of the 1976 Copyright Act as a “special instance
illustrating the application of the fair use doctrine”. What was true in the 1970s, remains,
sadly, true today, as the House Committee Report observed then, publishers did not “usually
make” their books available in specialized formats for the blind. That observation remains
true today. In fact, the evidence showed that (at 103):
The number of accessible books currently available to the blind for borrowing is a
mere few hundred thousand titles, a minute percentage of the world’s books. In
contrast, the HDL contains more than ten million accessible volumes.

(2) The Second Circuit in Authors Guild v. HathiTrust noted that in light of its holding on fair
use it did not need to consider whether the disability-access use is protected under the
Chafee Amendment, 17 U.S.C. § 121. Under the Chafee Amendment, “authorized entities”
are permitted to reproduce or distribute copies of a previously published, nondramatic
literary work in specialized formats exclusively for use by the blind or other persons with
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disabilities. Under § 121(d)(1), an “‘authorized entity’ means a nonprofit organization or a
governmental agency that has a primary mission to provide specialized services relating to
training, education, or adaptive reading or information access needs of blind or other
persons with disabilities.”
In the district court, Judge Baer had held that the ADA reproduction and distribution of
their collections to print-disabled individuals was part of the “primary mission” of the
libraries of educational institutions. Thus, each library was a potential “authorized entity”
under the Chafee Amendment. HathiTrust, 902 F.Supp.2d at 465. As a result, the district
court concluded (at 465) that:
The provision of access to previously published non-dramatic literary works within
the HDL fits squarely within the Chafee Amendment, although Defendants may
certainly rely on fair use ... to justify copies made outside of these categories or in
the event that they are not authorized entities.

(3) Note that although preservation was put forward as a potential fair use in HathiTrust, the
district court appeared to doubt that it qualified as such. The court of appeals vacated and
remanded the district court’s judgment with respect to preservation because the plaintiffs
lacked standing to challenge any such preservation uses. Interestingly, the European Union
Digital Single Market (“DSM”) Directive of 2019 provides just such an exception.
Copyright in the Digital Single Market Directive of 2019
Article 6 Preservation of cultural heritage
Member States shall provide for an exception [to the rights set forth in various
applicable directives] in order to allow cultural heritage institutions to make copies
of any works or other subject matter that are permanently in their collections, in any
format or medium, for purposes of preservation of such works or other subject
matter and to the extent necessary for such preservation.
* “cultural heritage institution” is defined in Article 2 as “a publicly accessible library
or museum, an archive or a film or audio heritage institution”

Moreover, Under Article 7 of the DSM, any contractual provision contrary to such cultural
preservation exception is unenforceable.

Educational fair uses
Since the Statute of Anne, one of the essential purposes of copyright has been the
“encouragement of learning” and the dissemination knowledge. There is a strong tradition in
American fair use jurisprudence of favoring educational uses. The text of section 107 itself
highlights the importance Congress placed on educational use: among the six statutory
examples are “teaching (including multiple copies for classroom use), scholarship, or
research” and this preference is reinforced by the consideration in the first factor of whether
a use is for “nonprofit educational purposes.”
17 U.S. Code § 107 - Limitations on exclusive rights: Fair use
Notwithstanding the provisions of sections 106 and 106A, the fair use of a
copyrighted work, including such use by reproduction in copies or phonorecords or
by any other means specified by that section, for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for classroom

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use), scholarship, or research, is not an infringement of copyright. In determining
whether the use made of a work in any particular case is a fair use the factors to be
considered shall include—
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes; … (emphasis added)

The extent to which fair use justifies copying extracts of published works as part of student
course materials has been contested for some time. Such practices were widespread at the
time the 1976 Act was passed and are clearly supported by the legislative history but changes
in technology (especially electronic course reserves) and market structure (the availability of
new licensing options) have destabilized any consensus that existed in the background of the
1976 Act.

Basic Books, Inc. v. Kinko’s Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991)
In Basic Books v. Kinko’s, the district court rejected a commercial copyshop’s argument that
the copying of various extracts from copyrighted works for college student course materials
was justified under the fair use doctrine. The court found the fact that certain excerpts
represented 5 to 14 percent of the whole work to weigh against the defendant, and the fact
that other excerpts represented 16 to 28 percent of the whole work weighed heavily against
the defendant.

Princeton University Press v. Michigan Document Services, Inc., 99 F.3d 1381, 1383
(6th Cir. 1996) (en banc)
Similarly, in Princeton University Press v. Michigan Document Services, the Sixth Circuit held that a
commercial copyshop was not entitled to a fair use defense when it reproduced substantial
portions of copyrighted academic works and sold the copies in bound, paper coursepacks to
students for use in courses at the University of Michigan. In Princeton University Press, the
court found that extracts ranging from 5 to 30 percent of the works in question weighed
against fair use. The Sixth Circuit also found that although the students’ use of the copies
was noncommercial, the copy shop used the copies for sale in the course of their for-profit
business.

The GSU Copyright Case
In Cambridge University Press v. Patton, three publishing houses sued the Georgia State
University (GSU) and various university officials for adopting a policy that allowed GSU
professors to place book excerpts on electronic course reserve for the use by students as part
of their course materials. The three publishers initially sued with respect to a larger set of
books, but after encountering difficulty establishing that they in fact owned the rights in
question, the case was narrowed to 74 individual works. Of those 74, the district court found
only five had been excerpted beyond the bounds of fair use.
In Cambridge Univ. Press v. Patton, 769 F.3d 1232 (11th Cir. 2014), the Eleventh Circuit
provided significant guidance as to how the fair use factors should be applied in
photocopying cases and in the new context of electronic reserves, but it eschewed the notion
that there can be generally applicable quantitative guidelines that determine whether a use is
fair.

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Cambridge University Press v. Albert, 906 F.3d 1290 (11th Cir. 2018)
Circuit Judge William Pryor
This appeal requires us to decide whether the district court misinterpreted our
mandate in an earlier appeal and misapplied the defense of fair use, 17 U.S.C. § 107,
in a dispute between three academic publishers and Georgia State University about
the University’s practice of distributing to students digital excerpts of copyrighted
works without paying the publishers. After a bench trial, the district court ruled that
the publishers established a prima facie case that 48 digital excerpts infringed their
copyrights but that the University prevailed on an affirmative defense of fair use for
43 of those excerpts. The publishers appealed. We upheld the district court’s analysis
of the first and fourth fair-use factors, including its finding that widespread
unlicensed use of 31 excerpts for which licenses existed could cause substantial harm
to the potential markets. But we reversed and remanded for the district court to
correct specific errors in its analysis of fair use. One such error was the use of a
mathematical formula to balance the four statutory fair-use factors. Another was the
insufficient weight the district court gave to the severe threat of market substitution.
On remand, the district court ruled that the University prevailed on its fair-use
defense for 44 of the 48 excerpts. Contrary to our instructions, the district court
again applied a mathematical formula to balance the factors. It also revisited its
market-harm analysis for the 31 licensed excerpts and found that the threat of
market harm supported fair use in all but six of the 48 instances. The district court
misinterpreted our earlier decision and misapplied the statutory test of fair use. We
affirm in part, vacate in part, and remand with instructions.
I. BACKGROUND
A. The Facts and the Original Proceedings in the District Court
Cambridge University Press, Oxford University Press, Inc., and Sage Publications,
Inc. publish academic works. The publishers market their books to professors who
teach at universities and colleges so that the professors will assign them as required
reading for their courses and students will purchase them. The publishers also sell
licenses to use excerpts of their copyrighted works. In the past, professors
commonly assigned—and students purchased—paper “coursepacks” of licensed
excerpts. But it has become more common for universities to distribute digital
excerpts electronically. The publishers license users to photocopy and to digitally
reproduce portions of their works. They offer such licenses, called “permissions,”
both directly and through the Copyright Clearance Center.
Georgia State University, a public university in Atlanta, Georgia, provides several
ways to distribute excerpts of copyrighted works to students. The University pays to
use licensed excerpts in paper coursepacks that the University bookstore assembles
and sells to students. The University also maintains two systems for electronic
distribution of course materials, “ERes” and “uLearn.” Both programs enable
University personnel to upload digital copies of excerpts to University servers and
allow students enrolled in a course to download the excerpts. Neither the University,
nor the students, pay for the use of the digital excerpts. This approach is popular.
For example, during the Spring 2009 term, paper coursepacks were offered for only

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about fifteen courses, while instructors in hundreds of courses made readings
available on ERes.
In 2008, the publishers filed a complaint against officials of the University for direct,
contributory, and vicarious copyright infringement, and sought declaratory and
injunctive relief. The publishers alleged a pattern and practice of distributing
substantial unlicensed excerpts of their copyrighted works, and they sought to prove
their claims based on a representative sample of infringements. The University
asserted an affirmative defense of fair use.
After a bench trial, the district court ruled that the University infringed the
copyrights of the publishers in five instances. See Cambridge Univ. Press v. Becker
(Cambridge I), 863 F.Supp.2d 1190, 1363-64 (N.D. Ga. 2012). The district court
found that the publishers established a prima facie case for 48 instances of
infringement. But it ruled that the University established its fair-use defense for 43 of
the excerpts. We summarize its conclusions as relevant to this appeal.
The Copyright Act enumerates four “factors to be considered” in finding that “the
use made of a work in any particular case is a fair use” instead of an infringement. 17
U.S.C. § 107. The first factor is “the purpose and character of the use, including
whether [it] is of a commercial nature or is for nonprofit educational purposes.” The
second factor is “the nature of the copyrighted work.” The third factor is “the
amount and substantiality of the portion used in relation to the copyrighted work as
a whole.” And the fourth factor is “the effect of the use upon the potential market
for or value of the copyrighted work.”
The district court found that factor one strongly favored a finding of fair use for
every excerpt because the University’s copying was for nonprofit educational uses. It
found that factor two favored fair use for every excerpt because the academic works
were “informational in nature.” It found that factor three favored fair use for 35
excerpts each of which was less than 10 percent or one chapter of the original work
but favored infringement for 13 excerpts that exceeded those bounds. And it found
that factor four strongly favored a finding of copyright infringement for 31 excerpts
for which digital permissions were available and favored fair use for 17 excerpts for
which the publishers failed to prove the availability of digital permissions.
In its overall analysis of fair use for each excerpt, the district court gave each of the
four factors equal weight and treated the four factors “as a simple mathematical
formula.” That is, the district court simply “add[ed] up” its findings whether each
factor favored fair use or infringement for each excerpt. It found that “fair use
applied whenever at least three of the four factors favored [the University].” But
when it initially weighed the factors together in its overall analysis for some excerpts,
the district court found a tie, with factor one strongly favoring fair use, factor two
favoring fair use, factor three favoring infringement, and factor four strongly
favoring infringement. For seven such excerpts, the district court broke the ties by
reconsidering the weight of the third factor, the fourth factor, or both. It found that
evidence of the amount of past permissions revenues strengthened the showing in
favor of infringement on the fourth factor in four instances, but that it undercut the
weight of the showing in two instances. It did not change any of its findings that
factor four favored infringement.

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The district court granted partial declaratory and injunctive relief to the publishers,
but it awarded attorney’s fees and costs to the University, 17 U.S.C. § 505.
B. The Earlier Appeal
In the earlier appeal, we reversed, vacated, and remanded. Cambridge Univ. Press v.
Patton (Cambridge II), 769 F.3d 1232, 1284 (11th Cir. 2014). As relevant here, we
upheld the district court’s analysis of factors one and four. But we instructed the
district court to correct its erroneous application of factors two and three and its
errors in weighing and balancing the four fair use factors in its overall analysis.
We held that the district court got two things right in Cambridge I: its analysis of the
first factor and its analysis of the fourth factor. On the first factor, we agreed that
“the nonprofit educational nature” of the University’s use favored the fair-use
defense. But we cautioned that the University’s “nontransformative” use, verbatim
copying that served “the same intrinsic purpose” for which the works were originally
published, made the threat of market substitution significant.
We also held that the District Court’s analysis under the fourth factor was correct.
But we held that “the District Court erred by not affording the fourth factor
additional weight in its overall fair use calculus.” Indeed, we found important errors
in “the District Court’s overarching fair use methodology.”
We held that the district court erred when it gave each of the four factors equal
weight, essentially taking a mechanical “add up the factors” approach, and that it
should not have treated the four factors as a simple mathematical formula. We
explained that a given factor may be more or less important under the specific
circumstances of a particular case. In this case, we emphasized that the district court
“should have afforded [factor four] more significant weight in its overall fair use
analysis” because “the threat of market substitution is severe.” We also reminded the
district court that “the four statutory factors may not be treated in isolation, one
from another. All are to be explored, and the results weighted together, in light of
the purposes of copyright.” (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
578 (1994)).
We also held that the district court erred in its analyses of the second and third
factors. Although the district court initially found that factor two favored fair use and
weighed equally with the other three factors, we explained that the District Court
should have held that the second factor was neutral, or even weighted against fair use,
for excerpts in which evaluative, analytical, or subjectively descriptive material
predominated, and that the second fair use factor is of relatively little importance in
this case. As for the third factor, we held that the district court erred in creating a 10
percent-or-one-chapter safe harbor for fair use. We explained that the district court
was required to assess each excerpt individually, considering the quantity and the
quality of the material taken. And we explained that it was required to determine
whether that taking was excessive in light of not only the educational purpose of the
use but also the threat of market substitution. We also mentioned the ample
precedents that explain that excessive verbatim copying weighs against fair use under
factor three.

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We vacated the orders that granted partial declaratory and injunctive relief to the
publishers and awarded attorney’s fees and costs to the University. Because the relief
that the district court ordered was based on its erroneous fair-use analysis, we
remanded for the district court to correct its analysis to be consistent with our
opinion.
C. The Proceedings on Remand
The district court changed its fair-use analysis in response to our decision in
Cambridge II. In the new analysis, factor one “favor[ed] fair use in all cases,” but “not
strongly.” Cambridge Univ. Press v. Becker (Cambridge III) (N.D. Ga. Mar. 31, 2016).
The district court did not revisit its earlier first-factor analysis for any of the excerpts.
Instead, in its new fair-use analysis for each excerpt, the district court simply
repeated the finding that factor one favors fair use.
The district court changed its second-factor analysis for each excerpt. It found that
factor two favored a finding of fair use in two instances, that it was neutral in 34
instances, and that it favored infringement in 12 instances.
The district court also changed its earlier third-factor analysis for each excerpt. It
found that factor three favored fair use for 37 excerpts, 34 of which had benefited
from its earlier 10-percent-or-one-chapter safe harbor.
The district court also found that the third factor favored fair use for three excerpts
that exceeded its earlier safe harbor. For two excerpts, the district court found that
the price of the unpaid permissions “would have been excessive” and that the high
price “allowed” the district court “to look more favorably” on the unpaid use of a
greater “quantity” of material. Cambridge III, slip op. at 116, 176 (emphases omitted).
The district court changed its fourth-factor analysis for the 31 excerpts for which it
had originally found that factor four strongly disfavored fair use. Under its new
analysis, the district court stated that factor four would only initially favor the
publishers in those instances. Then, based on its reading of Cambridge II, the district
court offered the University three ways to prove that the fourth factor actually
favored fair use in a particular instance:
[1] [T]he Court of Appeals held that Defendants may seek to prove that in fact, the
demand for excerpts of a particular copyrighted work was so limited that repetitive
unpaid copying of excerpts from that work would have been unlikely even if unpaid
copying of excerpts was a widespread practice in colleges and universities. In such a
case the actions of Defendants in using unpaid excerpts would not have caused
substantial damage to the potential market for the copyrighted work to such a
degree that Plaintiffs would lose the incentive to publish the work. [2] Defendants
may also seek to prove that their actions (even assuming widespread availability of
unpaid excerpts) did not substantially affect the value of the copyrighted work in
2009. . . . [3] Defendants may also seek to prove that the portion of the market
captured by unpaid use is so slight that it would have had no effect on the author’s
or the Plaintiffs’ decision to propagate the work in the first place.

Id. at 12-13. The district court suggested that the relevant evidence for these
showings would generally come from the records of permissions sales for excerpts
from the book.

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The district court also adjusted its method of balancing the four factors. It explained
that the “initial, approximate respective weights of the four factors” were “25% for
factor one, 5% for factor two, 30% for factor three, and 40% for factor four.” If a
particular factor had noteworthy strength or weakness, the weight of that factor
would be adjusted in the district court’s new analysis.
Despite these changes to its analysis, the district court reached similar bottom-line
results. It again found fair use for each of the 43 excerpts for which it had originally
done so. And it found fair use in one instance where it had previously found
infringement. Compare Cambridge I, 863 F.Supp.2d at 1359 (finding that the
University’s use of two chapters from The Power Elite, by C. Wright Mills, was
unfair), with Cambridge III, slip op. at 200-01 (finding that the use of The Power Elite
was fair).
The district court again found fair use for the vast majority of excerpts in large part
because it reversed most of its original fourth-factor findings. On remand, the
district court found that the fourth factor supported fair use in 42 of 48 instances.
The district court left unchanged only six of its 31 original findings that the threat of
market harm weighed against fair use for excerpts for which licenses were available.
The district court granted partial declaratory and injunctive relief against the
University. But it ruled that the University was the prevailing side and was entitled to
an award of costs and attorneys’ fees.
II. STANDARDS OF REVIEW
Fair use involves both questions of law and questions of fact. After a bench trial, we
review a district court’s conclusions of law de novo and a district court’s factual
findings for clear error. We review de novo the district court’s interpretation and
application of this court’s mandate in an earlier appeal.
III. DISCUSSION
We divide our discussion in two parts. First, we explain that the district court
misinterpreted our mandate and misapplied the test of fair use. Second, we explain
that the district court did not abuse its discretion when it declined to reopen the
record. We affirm in part, vacated in part, and remand with instructions.
A. The District Court Erred when It Made Its New Findings of Fair Use.
The district court misinterpreted our mandate and misapplied the test of fair use on
remand. In Cambridge II, we instructed the district court to correct its “erroneous
application of factors two and three” and its errors in weighing the four factors in its
overall analysis of fair use for each excerpt. But the district court exceeded this
limited mandate, revisiting its 31 earlier findings that factor four favored
infringement and reversing all but six of them. The district court again applied a
mathematical formula in its overall analysis of fair use. And it erroneously considered
the high price of permissions when it found that factor three favored fair use for two
excerpts.
1. The District Court Erred when It Revisited Factor Four.
The publishers argue that the district court failed to follow this Court’s remand
instructions when it revisited its earlier findings that factor four favored infringement.
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The University responds that the district court correctly changed its approach to
reflect our decision in Cambridge II. We agree with the publishers.
In deciding this appeal, we are bound by the decision in Cambridge II, just as the
district court was bound to apply its mandate. In particular, findings of fact and
conclusions of law by an appellate court are generally binding in all subsequent
proceedings in the same case in the trial court or on a later appeal. And under the
mandate rule, which is nothing more than a specific application of the ‘law of the
case’ doctrine, a district court, when acting under an appellate court’s mandate,
cannot vary it, or examine it for any other purpose than execution; or give any other
or further relief; or intermeddle with it, further than to settle so much as has been
remanded. The trial court must implement both the letter and the spirit of the
mandate, taking into account the appellate court’s opinion and the circumstances it
embraces.
The district court interpreted our earlier decision to instruct it to change its fourthfactor analysis for the 31 excerpts for which digital permissions were available,
Cambridge III, slip op. at 11-13, but the district court misinterpreted our mandate. In
its original decision, the district court found that the fourth factor weighed heavily
against fair use in all 31 instances where the publishers made digital licenses available.
Our decision in Cambridge II upheld those 31 findings. We held that the District
Court did not err in its application of the fourth factor. The only error we identified
in the district court’s treatment of the fourth factor was that, in weighing and
balancing the relative importance of the factors, it undervalued the “severe” threat of
market harm posed by the University’s “nontransformative” copying.
We did not instruct the district court to revisit its earlier findings that factor four
favored infringement when we instructed it to reweigh the factors on remand.
Indeed, we explained that, “[a]lthough . . . the District Court’s method for weighing
the four factors against one another was erroneous, this does not mean that the
District Court’s reasoning under each of the four factors [was] also necessarily
flawed.” Id. at 1260. And we repeatedly held that, although it should have weighed
both factor one and factor four differently, the district court “did not err” in its
application of those two factors. On remand, the district court correctly declined to
revisit its first-factor analysis for any of the excerpts. It followed our instruction to
change only how “strongly” factor one weighed in favor of fair use in its overall
analysis for each excerpt. See Cambridge III, slip op. at 11, 18. In contrast, the district
court changed all but six of its original findings that factor four favored infringement
instead of giving those findings “more significant weight in its overall fair use
analysis,” Cambridge II, 769 F.3d at 1283.
The University contends that the district court correctly revisited its earlier findings
that factor four favored infringement because Cambridge II announced a new standard
of market harm, but the University misreads our earlier decision. It stresses that we
described the “central question under the fourth factor” as whether a use “would
cause substantial economic harm such that allowing it would frustrate the purposes
of copyright by materially impairing [the publishers’] incentive to publish the work.”
Id. at 1276 (emphasis omitted). But we used this description of market harm—which
merely echoed longstanding precedent, see Campbell, 510 U.S. at 590; Peter Letterese &
Assoc., Inc. v. World Inst. of Scientology Enter., Int’l, 533 F.3d 1287, 1315 (11th Cir.
321

2008)—to explain that the earlier “analysis under the fourth factor was correct.”
Cambridge II, 769 F.3d at 1279.
In short, we held in Cambridge II that the district court’s original fourth-factor analysis
was correct. That holding precluded the district court from revisiting the fourth
factor in Cambridge III. On remand, the district court must reinstate its original
findings that the fourth factor strongly disfavors fair use for the 31 excerpts for
which the publishers proved the availability of digital licenses.
2. The District Court Erred when It Weighed and Balanced the Factors in Its Overall
Calculus of Fair Use for Each Excerpt.
The publishers argue that the district court erred by again applying a mathematical
formula in its overall analysis of fair use for each excerpt. The University contends
that, although the district court provided approximate initial weights of the four
factors at the outset of its remand decision, it adjusted that formula in its overall
analysis for each excerpt. We again agree with the publishers.
In Cambridge II, we identified two distinct ways in which, in its original analysis, the
district court failed to recognize that “a given factor may be more or less
important. . . under the specific circumstances of [a particular] case.” Cambridge II,
769 F.3d at 1260. First, we explained that the District Court erred in giving each of
the four factors equal weight. Second, we explained that the district court erred in
treating the four factors as a simple mathematical formula, which we also described
as an “arithmetic approach.”
On remand, the district court corrected the first of these errors but again committed
the second. The district court assigned “initial, approximate respective weights of the
four factors as follows: 25% for factor one, 5% for factor two, 30% for factor three,
and 40% for factor four.” Cambridge III, slip op. at 14. Although the district court
heeded our instructions in Cambridge II when it recognized that some factors are
more important than others, it failed to break free of its erroneous “arithmetic
approach” and to give each excerpt the holistic review the Act demands.
As the Supreme Court has explained and as we reiterated in Cambridge II, “the four
statutory factors may not be treated in isolation, one from another. All are to be
explored, and the results weighed together, in light of the purposes of copyright.”
Cambridge II, 769 F.3d at 1260 (alteration adopted) (quoting Campbell, 510 U.S. at 578).
We emphasized that “fair use is not a mechanical determination,” id. (alteration
adopted) (quoting Wright v. Warner Books, Inc., 953 F.2d 731, 740 (2d Cir. 1991)), and
that a court must “weigh[ ] . . . the four factors in light of the facts of a given case,”
id. at 1259.
To be sure, the district court described its arithmetic weights as “initial” and
“approximate,” and it stated that it would “adjust” them when it found a
“noteworthy strength or weakness” among the factors. Id. at 13. But the district
court made such adjustments only four times, each time to bolster the importance of
the third factor’s weighing against fair use. See id. at 38, 68, 140, & 201. And, on
those four occasions, the district court did nothing to adjust the other factors in the
overall fair-use calculus. We conclude that the district court’s quantitative rubric was

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an improper substitute for a qualitative consideration of each instance of copying in
the light of its particular facts.
The district court failed to give each excerpt the holistic review that the Act demands.
On this remand, the district court must not apply a mathematical formula at any step
of its analysis. We reiterate our holding in Cambridge II that “the fourth factor looms
large in the overall fair use analysis” for each excerpt in this appeal, 769 F.3d at 1275,
but we instruct the district court to evaluate the four factors qualitatively, not
quantitatively, and to take care to consider them holistically “in light of the purposes
of copyright.” Campbell, 510 U.S. at 578.
3. The District Court Erred when It Considered the Cost of Purchasing Licenses in
Finding that the Third Factor Favored Fair Use.
The district court twice erred in applying the third factor of the statutory test of fair
use when it considered whether the cost of licensing was “excessive” in the light of
the publishers’ “marginal cost for authorizing digital copies . . . , [which] would not
vary no matter how many digital copies were authorized.” Cambridge III, slip op. at
116, 176. The district court reasoned that high prices allowed it to look more
favorably on the quantity of the University’s use than it otherwise would. In these
two instances, the district court deviated from the language of the Act.
The third factor of the statutory fair-use test is “the amount and substantiality of the
portion used in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3).
This provision of the Act does not direct courts to consider the price of the unpaid
use. If it did, then the district court’s reasoning could tilt the third factor in favor of
fair use even in cases of extensive verbatim copying. After all, it is always the case
that a publisher’s “marginal cost for authorizing digital copies would be virtually nil,
and would not vary no matter how many digital copies were authorized.” Cambridge
III, slip op. at 116, 176. When we instructed the district court to correct its analysis
under the third factor on remand, we did not include this consideration. See
Cambridge II, 769 F.3d at 1275. The district court erred when it twice considered the
price of the unpaid use as relevant to the third factor.
IV. CONCLUSION
We AFFIRM in part, VACATE in part, and REMAND for proceedings consistent
with this opinion. We affirm the order denying the publishers’ request to reopen the
record, but we vacate the judgment entered on remand. The district court must
reinstate its earlier findings that factor four strongly disfavors fair use for 31 of the
48 excerpts. The district court must eschew a quantitative approach to the weighing
and balancing of the fair-use factors and give each excerpt the holistic, qualitative,
and individual analysis that the Act demands. And the district court must omit any
consideration of price from its analysis of the third factor. Because the district
court’s award of attorney’s fees and costs was based on its erroneous fair-use analysis,
we also VACATE that award and the underlying determination that the University is
the prevailing party.

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Notes and questions
(1) Cambridge University Press v. Albert, 906 F.3d 1290 (11th Cir. 2018) (Cambridge IV)
continues the long running saga generally referred to as the GSU Copyright Case, a pitch battle
between a group of academic publishers and the Georgia State University. In the judgment
extracted above, the Eleventh Circuit again faulted the district court for taking an overly
mathematical approach to fair use and also for giving insufficient weight “to the severe
threat of market substitution” in a case of non-transformative copying.
(2) On remand the district court concluded that 37 of the 48 infringement claims still at issue
were fair use. See Cambridge University Press v. Becker, 446 F. Supp. 3d 1145 (N.D. Ga. 2020).

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10. NON-EXPRESSIVE USE AS FAIR USE
Non-expressive use
Although the phrase “non-expressive use” does not appear in the relevant caselaw, a range
of technological fair use cases on issues such as software reverse engineering, plagiarism
detection software, and text data mining are best understood as non-expressive uses. If the
raison d’etre 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
the copyright owner and will thus ordinarily qualify as fair use.
A complete view of modern copyright law is impossible without understanding its
application to non-expressive uses. Although the concept of text data mining might strike
some as a rather esoteric topic of interest only to computer scientists and numbers geeks,
text data mining is the essential building block of the technologies that increasingly influence
our lives: Internet search engines, machine learning and artificial intelligence.85

Reverse Engineering
Computer software is written in human readable source code, but it is typically distributed in
object code; a string of ones and zeros that is only readable by computers. Software is
protected by copyright, but all software performs functions and contains ideas and
information that are not entitled to copyright protection. Access to these uncopyrightable
components is essential to building interoperable programs that will work with the original
software. The lawfulness of reverse engineering or decompiling software to extract these
non-copyrightable keys to interoperability became a critical issue in conflicts between
independent videogame publishers and the makers of video game consoles in the early 1990s.
Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)
In 1991 the videogame company Accolade bought a Sega Genesis game console and a number of Sega licensed game
cartridges and set about cracking open their secrets. The courts had already decided that reverse engineering object code did
85 This chapter borrows considerably from a series of articles and amicus briefs in which I have argued that

copying 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
BERKLEY TECH. L. J. 1503 (2012); Matthew Jockers, Matthew Sag & Jason Schultz, Digital Archives: Don’t Let
Copyright Block Data Mining, 490 NATURE 29-30 (October 4, 2012). Brief of Digital Humanities and Law
Scholars in Support of Defendants’ 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’ Motion For
Summary Judgment in Authors Guild v. Google (1:05-cv-08136-DC) (August 3, 2012); Brief of Digital Humanities
and Law Scholars in Support of Defendants-Appellees and Affirmance in Authors Guild v. HathiTrust (12-4547)
(June 4, 2013); and Brief of Digital Humanities and Law Scholars in Support of Defendants-Appellees and
Affirmance in Authors Guild v. Google (13-4829) (July 10, 2014). Other scholars have also advanced very similar
theories. See e.g., Ed Lee, Technological Fair Use, 83 S. CAL. L. REV. 797 (2010); Maurizio Borghi & Stavroula
Karapapa, Non-Display Uses of Copyright Works, 1 QUEEN MARY J. INTELL. PROP. 21 (2011); ABRAHAM
DRASSINOWER, WHAT’S WRONG WITH COPYING (2015). See also, Amanda Levendowski, How Copyright Law
Can Fix Artificial Intelligence’s 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-à-vis Patent
and Trade-Mark, 2008 MICH. ST. L. REV. 199, 204 (characterizing copyright as “an exclusive right of public
presentation”).

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not violate trade secret law, however because this process involved making several technical copies of the software—albeit
only as an intermediate step toward the production of an interoperable game that did not by itself infringe copyright—the
question was whether these intermediate copies constituted copyright infringement.

Circuit Judge Reinhardt
This case presents several difficult questions of first impression involving our
copyright and trademark laws. We are asked to determine, first, whether the
Copyright Act permits persons who are neither copyright holders nor licensees to
disassemble a copyrighted computer program in order to gain an understanding of
the unprotected functional elements of the program. In light of the public policies
underlying the Act, we conclude that, when the person seeking the understanding
has a legitimate reason for doing so and when no other means of access to the
unprotected elements exists, such disassembly is as a matter of law a fair use of the
copyrighted work. [The court’s general discussion of the fair use doctrine is omitted.]
(a)
With respect to the first statutory factor, we observe initially that the fact that
copying is for a commercial purpose weighs against a finding of fair use. Harper &
Row, 471 U.S. at 562. However, the presumption of unfairness that arises in such
cases can be rebutted by the characteristics of a particular commercial use. Hustler
Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1152 (9th Cir.1986).
Sega argues that because Accolade copied its object code in order to produce a
competing product, the Harper & Row presumption applies and precludes a finding
of fair use. That analysis is far too simple and ignores a number of important
considerations. We must consider other aspects of “the purpose and character of the
use” as well. As we have noted, the use at issue was an intermediate one only and
thus any commercial “exploitation” was indirect or derivative.
The declarations of Accolade’s employees indicate, and the district court found, that
Accolade copied Sega’s software solely in order to discover the functional
requirements for compatibility with the Genesis console — aspects of Sega’s
programs that are not protected by copyright. 17 U.S.C. § 102(b). With respect to the
video game programs contained in Accolade’s game cartridges, there is no evidence
in the record that Accolade sought to avoid performing its own creative work.
Indeed, most of the games that Accolade released for use with the Genesis console
were originally developed for other hardware systems. Moreover, with respect to the
interface procedures for the Genesis console, Accolade did not seek to avoid paying
a customarily charged fee for use of those procedures, nor did it simply copy Sega’s
code; rather, it wrote its own procedures based on what it had learned through
disassembly. Taken together, these facts indicate that although Accolade’s ultimate
purpose was the release of Genesis-compatible games for sale, its direct purpose in
copying Sega’s code, and thus its direct use of the copyrighted material, was simply
to study the functional requirements for Genesis compatibility so that it could
modify existing games and make them usable with the Genesis console. Moreover, as
we discuss below, no other method of studying those requirements was available to
Accolade. On these facts, we conclude that Accolade copied Sega’s code for a
legitimate, essentially non-exploitative purpose, and that the commercial aspect of its
use can best be described as of minimal significance.

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We further note that we are free to consider the public benefit resulting from a
particular use notwithstanding the fact that the alleged infringer may gain
commercially. See Hustler, 796 F.2d at 1153 (quoting MCA, Inc. v. Wilson, 677 F.2d
180, 182 (2d Cir.1981)). Public benefit need not be direct or tangible, but may arise
because the challenged use serves a public interest. Id. In the case before us,
Accolade’s identification of the functional requirements for Genesis compatibility
has led to an increase in the number of independently designed video game programs
offered for use with the Genesis console. It is precisely this growth in creative
expression, based on the dissemination of other creative works and the unprotected
ideas contained in those works, that the Copyright Act was intended to promote. See
Feist Publications, Inc. v. Rural Tel. Serv. Co., (1991) (citing Harper & Row, 471 US at
556-57). The fact that Genesis-compatible video games are not scholarly works, but
works offered for sale on the market, does not alter our judgment in this regard. We
conclude that given the purpose and character of Accolade’s use of Sega’s video
game programs, the presumption of unfairness has been overcome and the first
statutory factor weighs in favor of Accolade.
(b)
As applied, the fourth statutory factor, effect on the potential market for the
copyrighted work, bears a close relationship to the “purpose and character” inquiry
in that it, too, accommodates the distinction between the copying of works in order
to make independent creative expression possible and the simple exploitation of
another’s creative efforts. We must, of course, inquire whether, “if [the challenged
use] should become widespread, it would adversely affect the potential market for
the copyrighted work,” Sony Corp. v. Universal City Studios, 464 US 417, 451 (1984), by
diminishing potential sales, interfering with marketability, or usurping the market,
Hustler, 796 F.2d at 1155-56. If the copying resulted in the latter effect, all other
considerations might be irrelevant. The Harper & Row Court found a use that
effectively usurped the market for the copyrighted work by supplanting that work to
be dispositive. 471 US at 567-69. However, the same consequences do not and could
not attach to a use which simply enables the copier to enter the market for works of
the same type as the copied work.
Unlike the defendant in Harper & Row, which printed excerpts from President Ford’s
memoirs verbatim with the stated purpose of “scooping” a Time magazine review of
the book, Accolade did not attempt to “scoop” Sega’s release of any particular game
or 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
program as experienced by the user that determine the program’s commercial
success. As we have noted, there is nothing in the record that suggests that Accolade
copied any of those elements.
By facilitating the entry of a new competitor, the first lawful one that is not a Sega
licensee, Accolade’s disassembly of Sega’s software undoubtedly “affected” the
market for Genesis-compatible games in an indirect fashion. We note, however, that
while no consumer except the most avid devotee of President Ford’s regime might
be expected to buy more than one version of the President’s memoirs, video game
users typically purchase more than one game. There is no basis for assuming that
Accolade’s “Ishido” has significantly affected the market for Sega’s “Altered Beast”,
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since a consumer might easily purchase both; nor does it seem unlikely that a
consumer particularly interested in sports might purchase both Accolade’s “Mike
Ditka Power Football” and Sega’s “Joe Montana Football”, particularly if the games
are, as Accolade contends, not substantially similar. In any event, an attempt to
monopolize the market by making it impossible for others to compete runs counter
to the statutory purpose of promoting creative expression and cannot constitute a
strong equitable basis for resisting the invocation of the fair use doctrine. Thus, we
conclude that the fourth statutory factor weighs in Accolade’s, not Sega’s, favor,
notwithstanding the minor economic loss Sega may suffer.
(c)
The second statutory factor, the nature of the copyrighted work, reflects the fact that
not all copyrighted works are entitled to the same level of protection. The protection
established by the Copyright Act for original works of authorship does not extend to
the ideas underlying a work or to the functional or factual aspects of the work. 17
U.S.C. § 102(b). To the extent that a work is functional or factual, it may be copied,
Baker v. Selden, 101 US 99, 102-04 (1879), as may those expressive elements of the
work that “must necessarily be used as incident to” expression of the underlying
ideas, functional concepts, or facts, id. at 104. Works of fiction receive greater
protection than works that have strong factual elements, such as historical or
biographical works, or works that have strong functional elements, such as
accounting textbooks. Works that are merely compilations of fact are copyrightable,
but the copyright in such a work is “thin.” Feist Publications, 111 S.Ct. at 1289.
Computer programs pose unique problems for the application of the
“idea/expression distinction” that determines the extent of copyright protection. To
the extent that there are many possible ways of accomplishing a given task or
fulfilling a particular market demand, the programmer’s choice of program structure
and design may be highly creative and idiosyncratic. However, computer programs
are, in essence, utilitarian articles — articles that accomplish tasks. As such, they
contain many logical, structural, and visual display elements that are dictated by the
function to be performed, by considerations of efficiency, or by external factors such
as compatibility requirements and industry demands. Computer Assoc. Int’l, Inc. v. Altai,
Inc., 1992 WL 372273 (2d Cir.1992) (“CAI”). In some circumstances, even the exact
set of commands used by the programmer is deemed functional rather than creative
for purposes of copyright. “[W]hen specific instructions, even though previously
copyrighted, are the only and essential means of accomplishing a given task, their
later use by another will not amount to infringement.” National Commission on New
Technological Uses of Copyrighted Works, Final Report 1, 20 (1979).
Sega argues that even if many elements of its video game programs are properly
characterized as functional and therefore not protected by copyright, Accolade
copied protected expression. Sega is correct. The record makes clear that disassembly
is wholesale copying. Because computer programs are also unique among
copyrighted works in the form in which they are distributed for public use, however,
Sega’s observation does not bring us much closer to a resolution of the dispute.
The unprotected aspects of most functional works are readily accessible to the
human eye. The systems described in accounting textbooks or the basic structural

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concepts embodied in architectural plans, to give two examples, can be easily copied
without also copying any of the protected, expressive aspects of the original works.
Computer programs, however, are typically distributed for public use in object code
form, embedded in a silicon chip or on a floppy disk. For that reason, humans often
cannot gain access to the unprotected ideas and functional concepts contained in
object code without disassembling that code — i.e., making copies.
Sega argues that the record does not establish that disassembly of its object code is
the only available method for gaining access to the interface specifications for the
Genesis console, and the district court agreed. An independent examination of the
record reveals that Sega misstates its contents, and demonstrates that the district
court committed clear error in this respect.
The record clearly establishes that humans cannot read object code. Sega makes
much of Mike Lorenzen’s statement that a reverse engineer can work directly from
the zeros and ones of object code but “[i]t’s not as fun.” In full, Lorenzen’s
statements establish only that the use of an electronic decompiler is not absolutely
necessary. Trained programmers can disassemble object code by hand. Because even
a trained programmer cannot possibly remember the millions of zeros and ones that
make up a program, however, he must make a written or computerized copy of the
disassembled code in order to keep track of his work. The relevant fact for purposes
of Sega’s copyright infringement claim and Accolade’s fair use defense is that
translation of a program from object code into source code cannot be accomplished
without making copies of the code.
The district court also suggested that Accolade could have avoided a copyright
infringement suit by programming in a “clean room”. That finding too is clearly
erroneous. A “clean room” is a procedure used in the computer industry in order to
prevent direct copying of a competitor’s code during the development of a
competing product. Programmers in clean rooms are provided only with the
functional specifications for the desired program. As Dr. Tredennick explained, the
use of a clean room would not have avoided the need for disassembly because
disassembly was necessary in order to discover the functional specifications for a
Genesis-compatible game.
In summary, the record clearly establishes that disassembly of the object code in
Sega’s video game cartridges was necessary in order to understand the functional
requirements for Genesis compatibility. The interface procedures for the Genesis
console are distributed for public use only in object code form, and are not visible to
the user during operation of the video game program. Because object code cannot be
read by humans, it must be disassembled, either by hand or by machine. Disassembly
of object code necessarily entails copying. Those facts dictate our analysis of the
second statutory fair use factor. If disassembly of copyrighted object code is per se
an unfair use, the owner of the copyright gains a de facto monopoly over the
functional aspects of his work — aspects that were expressly denied copyright
protection by Congress. 17 U.S.C. § 102(b). In order to enjoy a lawful monopoly
over the idea or functional principle underlying a work, the creator of the work must
satisfy the more stringent standards imposed by the patent laws. Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 US 141, 159-64 (1989). Sega does not hold a patent on
the Genesis console.
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Because Sega’s video game programs contain unprotected aspects that cannot be
examined without copying, we afford them a lower degree of protection than more
traditional literary works. See CAI, 23 U.S.P.Q.2d at 1257. In light of all the
considerations discussed above, we conclude that the second statutory factor also
weighs in favor of Accolade.
(d)
As to the third statutory factor, Accolade disassembled entire programs written by
Sega. Accordingly, the third factor weighs against Accolade. The fact that an entire
work was copied does not, however, preclude a finding a fair use. Sony Corp., 464 US
at 449-50, 104 S.Ct. at 792; Hustler, 796 F.2d at 1155. In fact, where the ultimate (as
opposed to direct) use is as limited as it was here, the factor is of very little weight.
Cf. Wright v. Warner Books, Inc., 953 F.2d 731, 738 (2d Cir.1991).
(e)
In summary, careful analysis of the purpose and characteristics of Accolade’s use of
Sega’s video game programs, the nature of the computer programs involved, and the
nature of the market for video game cartridges yields the conclusion that the first,
second, and fourth statutory fair use factors weigh in favor of Accolade, while only
the third weighs in favor of Sega, and even then only slightly. Accordingly, Accolade
clearly has by far the better case on the fair use issue.
We are not unaware of the fact that to those used to considering copyright issues in
more traditional contexts, our result may seem incongruous at first blush. To
oversimplify, the record establishes that Accolade, a commercial competitor of Sega,
engaged in wholesale copying of Sega’s copyrighted code as a preliminary step in the
development of a competing product. However, the key to this case is that we are
dealing with computer software, a relatively unexplored area in the world of
copyright law. We must avoid the temptation of trying to force “the proverbial
square peg into a round hole.” CAI, 23 U.S.P.Q.2d at 1257.
In determining whether a challenged use of copyrighted material is fair, a court must
keep in mind the public policy underlying the Copyright Act. “‘The immediate effect
of our copyright law is to secure a fair return for an “author’s” creative labor. But the
ultimate aim is, by this incentive, to stimulate artistic creativity for the general public
good.’” Sony Corp., 464 US at 432. When technological change has rendered an aspect
or application of the Copyright Act ambiguous, “‘the Copyright Act must be
construed in light of this basic purpose.’” Id. As discussed above, the fact that
computer programs are distributed for public use in object code form often
precludes public access to the ideas and functional concepts contained in those
programs, and thus confers on the copyright owner a de facto monopoly over those
ideas and functional concepts. That result defeats the fundamental purpose of the
Copyright Act — to encourage the production of original works by protecting the
expressive elements of those works while leaving the ideas, facts, and functional
concepts in the public domain for others to build on. Feist Publications, 111 S.Ct. at
1290.
(f)

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We conclude that where disassembly is the only way to gain access to the ideas and
functional elements embodied in a copyrighted computer program and where there
is a legitimate reason for seeking such access, disassembly is a fair use of the
copyrighted work, as a matter of law. Our conclusion does not, of course, insulate
Accolade from a claim of copyright infringement with respect to its finished
products. Sega has reserved the right to raise such a claim, and it may do so on
remand.
Notes and questions
(1) In Sega Enter. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) the Ninth Circuit held
disassembly or reverse engineering of software code to gain access to the ideas and
functional elements embodied therein for a legitimate reason was fair use as a matter of law.
(2) Notice how interconnected the Ninth Circuit’s fair use analysis is with the ideaexpression distinction. The court stressed the importance of protecting the work’s
expression from exploitative duplication, while at the same time enabling innovation and
competition by preserving the unprotected status of ideas and functional components within
the software and it applied the fair use factors through this lens.
(3) Almost a decade later, the Ninth Circuit addressed the same issue in Sony Computer
Entertainment v. Connectix, 203 F.3d 596 (9th Cir. 2000). From the beginning of its decision,
the court emphasized the importance of the idea expression distinction (at 598):
[W]e are called upon once again to apply the principles of copyright law to
computers and their software, to determine what must be protected as expression
and what must be made accessible to the public as function.

Consistent with its decision in Sega, the court held that intermediate copying of software
could be protected as fair use if the copying was necessary to gain access to the functional
elements of the software. The court expressly recognized (at 603) that “the fair use doctrine
preserves public access to the ideas and functional elements embedded in copyrighted
computer software programs.”
(3) Since Sega v. Accolade courts have consistently held that making unauthorized copies of a
computer program, as a necessary step in reverse engineering, is fair use. This outcome was
implicitly confirmed by the fact that Congress chose to include circumventing encryption for
the purpose of reverse engineering as an allowable exception to the anti-circumvention
provisions of the DMCA. See Section 1201(f) of the Copyright Act.

Anti-plagiarism software
A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009)
Circuit Judge Traxler
Plaintiffs brought this copyright infringement action against defendant iParadigms,
LLC, based on its use of essays and other papers written by plaintiffs for submission
to their high school teachers through an online plagiarism detection service operated
by iParadigms. The district court granted summary judgment in favor of iParadigms
on plaintiffs’ copyright infringement claim based on the doctrine of fair use.

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Defendant iParadigms owns and operates “Turnitin Plagiarism Detection Service,”
an online technology system designed to evaluate the originality of written works in
order to prevent plagiarism. According to iParadigms, Turnitin offers high school
and college educators an automated means of verifying that written works submitted
by students are originals and not the products of plagiarism. When a school
subscribes to iParadigms’ service, it typically requires its students to submit their
written assignments via a web-based system available at www.turnitin.com or via an
integration between Turnitin and a school’s course management system. In order to
submit papers online, students must be enrolled in an active class and must enter the
class ID number and class enrollment password supplied by the assigning professor.
After a student submits a writing assignment, Turnitin performs a digital comparison
of the student’s work with content available on the Internet, including student papers
previously submitted to Turnitin, and commercial databases of journal articles and
periodicals. For each work submitted, Turnitin creates an “Originality Report”
suggesting a percentage of the work, if any, that appears not to be original. The
assigning professor may, based on the results of the Originality Report, further
explore any potential issues.
The Turnitin system gives participating schools the option of “archiving” the student
works. When this option is selected, Turnitin digitally stores the written works
submitted by students so that the work becomes part of the database used by
Turnitin to evaluate the originality of other student’s works in the future. The
archived student works are stored as digital code, and employees of iParadigms do
not read or review the archived works.
When they initiated the lawsuit, the four plaintiffs were minor high school students
and thus appeared in this litigation via their next friends. Plaintiffs A.V. and K.W.
attended McLean High School in Fairfax County, Virginia, which began using
Turnitin in 2006 and opted to have its student papers archived in the Turnitin data
base. Plaintiffs E.N. and M.N. attended Desert Vista High School in Tucson,
Arizona, which also subscribed to the Turnitin service and elected the archiving
option. According to the complaint, both schools required students to submit their
written assignments via Turnitin.com to receive credit; failure to do so would result
in a grade of “zero” for the assignment under the policy of both schools.
According to iParadigms, no one at iParadigms read or reviewed the papers
submitted by plaintiffs, and iParadigms did not send any paper at issue in this action
to anybody other than the instructor to whom plaintiffs submitted their own papers.
Plaintiffs filed a complaint alleging that iParadigms infringed their copyright interests
in their works by archiving them in the Turnitin database without their permission.
The court determined that iParadigms’ use of each of the plaintiffs’ written
submissions qualified as a “fair use” under 17 U.S.C. § 107 and, therefore, did not
constitute infringement. In particular, the court found that the use was
transformative because its purpose was to prevent plagiarism by comparative use,
and that iParadigms’ use of the student works did not impair the market value for
high school term papers and other such student works.
…

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The ownership rights created by the Copyright Act, however, are not absolute; these
rights, while exclusive, are “limited in that a copyright does not secure an exclusive
right to the use of facts, ideas, or other knowledge.” Bond v. Blum, 317 F.3d 385, 394
(4th Cir.2003). Rather, copyright protection extends only to the author’s manner of
expression. Moreover, the copyright owner’s rights are subject to several exceptions
enumerated by the Copyright Act. Those sections describe a variety of uses of
copyrighted material that “are not infringements of copyright” “notwithstanding the
provisions of § 106.”
One of these statutory exceptions codifies the common-law “fair use” doctrine,
which “allows the public to use not only facts and ideas contained in a copyrighted
work, but also expression itself in certain circumstances.” Eldred v. Ashcroft, 537 US
186, 219 (2003); see Campbell v. Acuff-Rose Music, Inc., 510 US 569, 577, (1994)
(“Congress meant § 107 to restate the present judicial doctrine of fair use ... and
intended that courts continue the common-law tradition of fair use adjudication.”
(internal quotation marks omitted)). “From the infancy of copyright protection,
some opportunity for fair use of copyrighted materials has been thought necessary to
fulfill copyright’s very purpose, ‘[t]o promote the Progress of Science and useful
Arts....’” Campbell, 510 US at 575. Courts have traditionally regarded “fair use” of a
copyrighted work as “a privilege in others than the owner of the copyright to use the
copyrighted material in a reasonable manner without his consent.” Harper & Row,
471 US at 549.
Section 107 contemplates that the question of whether a given use of copyrighted
material is “fair” requires a case-by-case analysis in which the statutory factors are
not “treated in isolation” but are “weighed together, in light of the purposes of
copyright.” Campbell, 510 US at 578.
With these general principles in mind, we consider each of the statutory factors.
First Factor
The first fair use factor requires us to consider “the purpose and character of the use,
including whether such use is of a commercial nature or is for nonprofit educational
purposes.” 17 U.S.C. § 107(1). A use of the copyrighted material that has a
commercial purpose “tends to weigh against a finding of fair use.” Harper & Row,
471 US at 562. “The crux of the profit/nonprofit distinction is not whether the sole
motive of the use is monetary gain but whether the user stands to profit from
exploitation of the copyrighted material without paying the customary price.” Id.
In assessing the “character” of the use, we should consider the specific examples set
forth in section 107’s preamble, “looking to whether the use is for criticism, or
comment, or news reporting, and the like,” with the goal of determining whether the
use at issue “merely supersedes the objects of the original creation, or instead adds
something new, with a further purpose or different character.” Campbell, 510 US at
578-79. Courts, therefore, must examine “whether and to what extent the new work
is transformative.... [T]he more transformative the new work, the less will be the
significance of other factors, like commercialism, that may weigh against a finding of
fair use.” Id. at 579. A “transformative” use is one that “employ[s] the quoted matter
in a different manner or for a different purpose from the original,” thus transforming
it. Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1111 (1990).
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In considering the character and purpose of iParadigms’ use of the student works,
the district court focused on the question of whether the use was transformative in
nature. The court concluded that “iParadigms, through Turnitin, uses the papers for
an entirely different purpose, namely, to prevent plagiarism and protect the students’
written works from plagiarism ... by archiving the students’ works as digital code.”
Although the district court recognized that iParadigms intends to profit from its use
of the student works, the court found that iParadigms’ use of plaintiffs’ works was
“highly transformative,” and “provides a substantial public benefit through the
network of educational institutions using Turnitin.” Accordingly, the court
concluded that the first factor weighed in favor of a finding of fair use.
Plaintiffs argue the district court’s analysis contained several flaws. First, they suggest
that the district court ignored the commercial nature of iParadigms’ use of their
materials, highlighting the fact that iParadigms is a for-profit company that enjoys
millions of revenue dollars based on its ever-increasing database of student works.
Seizing upon the Supreme Court’s suggestion in Sony that “every commercial use of
copyrighted material is presumptively an unfair exploitation of the monopoly
privilege that belong to the owner of the copyright,” plaintiffs contend that the
archiving of their papers cannot constitute a fair use under section 107.
The district court, however, did not ignore the fact that iParadigms’ use of the
plaintiffs’ works occurred in the commercial context; indeed, the court expressly
noted that “iParadigms makes a profit in providing this service to educational
institutions.” But the fact that the disputed use of copyrighted material is commercial
is not determinative in and of itself. See Sony, 464 US at 448. As the Second Circuit
observed, “since many, if not most, secondary users seek at least some measure of
commercial gain from their use, unduly emphasizing the commercial motivation of a
copier will lead to an overly restrictive view of fair use.” American Geophysical Union v.
Texaco, Inc., 60 F.3d 913, 921 (2d Cir.1994); see Campbell, 510 US at 584 (observing
that “[i]f... commerciality carried presumptive force against a finding of fairness, the
presumption would swallow nearly all of the illustrative uses listed in the preamble
paragraph of § 107,” which “are generally conducted for profit in this country”). The
Court has made clear that Sony did not establish a per se rule that a commercial use
barred a fair use finding. See Campbell, 510 US at 585 (“The Court of Appeals’
elevation of one sentence from Sony to a per se rule ... runs as much counter to Sony
itself as to the long common-law tradition of fair use adjudication.”). Thus, although
a commercial use finding generally weighs against a finding of fair use, it must “be
weighed along with [the] other factors in fair use decisions.” Sony, 464 US at 449 n.
32.
In this case, the district court determined that the commercial aspect was not
significant in light of the transformative nature of iParadigms’ use. See Campbell, 510
US at 578-79. The district court simply weighed the commercial nature of iParadigms’
use along with other fair use factors, as is appropriate under Supreme Court
precedent. See id. at 579 (explaining that “the more transformative the new work, the
less will be the significance of other factors, like commercialism, that may weigh
against a finding of fair use”).
Plaintiffs also argue that iParadigms’ use of their works cannot be transformative
because the archiving process does not add anything to the work — Turnitin merely
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stores the work unaltered and in its entirety. This argument is clearly misguided. The
use of a copyrighted work need not alter or augment the work to be transformative
in nature. Rather, it can be transformative in function or purpose without altering or
actually adding to the original work. See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508
F.3d 1146, 1165 (9th Cir.2007) (concluding that Google’s use of copyrighted images
in thumbnail search index was “highly transformative” even though the images
themselves were not altered, in that the use served a different function than the
images served). iParadigms’ use of plaintiffs’ works had an entirely different function
and purpose than the original works; the fact that there was no substantive alteration
to the works does not preclude the use from being transformative in nature.
Plaintiffs further contend that, even if iParadigms’ use of their works has a
transformative purpose, the use itself is not transformative if it fails to effect such
purpose. Plaintiffs assert that there is at least a question of fact as to whether
Turnitin effectively prevents plagiarism such that summary judgment is inappropriate.
In support of this contention, plaintiffs offered evidence showing that it is possible
to defeat the Turnitin system by paraphrasing the original copyrighted work and that
the system sometimes does not catch even verbatim copying. In other words,
because the Turnitin system is not fool-proof, the archiving of plaintiffs’ works to
compare and detect plagiarism cannot be transformative.
We reject this assertion as well. The question of whether a use is transformative does
not rise or fall on whether the use perfectly achieves its intended purpose. Cf.
Campbell, 510 US at 582 (declining to evaluate the quality of the parody and declaring
that “when fair use is raised in defense of parody, [the threshold question] is whether
a parodic character may reasonably be perceived”). Plaintiffs do not dispute that the
Turnitin system does detect some level of plagiarism, even if, as they assert in the
complaint, “the Turnitin system is capable of detecting only the most ignorant or
lazy attempts at plagiarism by students without significant monetary resources.”
Whether a better plagiarism detection system could be designed is not important to
our analysis of whether the disputed use serves a different purpose or function.
The district court, in our view, correctly determined that the archiving of plaintiffs’
papers was transformative and favored a finding of “fair use.” iParadigms’ use of
these works was completely unrelated to expressive content and was instead aimed at
detecting and discouraging plagiarism.
Second Factor
In considering the nature of the copyrighted work, the Supreme Court has instructed
that “fair use is more likely to be found in factual works than in fictional works,”
whereas “a use is less likely to be deemed fair when the copyrighted work is a
creative product.” Stewart v. Abend, 495 US 207, 237 (1990) (internal quotation marks
and alteration omitted). This postulate recognizes the notion that a work is entitled
to greater copyright protection as it comes closer to “the core of creative expression.”
Bond, 317 F.3d at 395. However, if the disputed use of the copyrighted work “is not
related to its mode of expression but rather to its historical facts,” then the creative
nature of the work is mitigated. Id. at 396. And, in fact, the district court concluded
that iParadigms’ use of the plaintiffs’ works related solely to the comparative value of
the works and did not diminish the incentive for creativity on the part of students.

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The district court noted that, if anything, iParadigms’ use of the students’ works
fostered the development of original and creative works “by detecting any efforts at
plagiarism by other students.”
Plaintiffs contend that the district court’s application of this factor was flawed in two
respects. First, they argue that the court failed to account for the fact that their works
were unpublished. Because an author enjoys the “right to control the first public
appearance of his undisseminated expression,” the fair use of an unpublished work is
narrower in scope. Harper & Row, 471 US at 555 (“[T]he author’s right to control the
first public appearance of his expression weighs against such use of the work before
its release.”). In its order, the district court omits mention of this fact; therefore,
plaintiffs suggest that the district court’s entire analysis of the second statutory factor
is invalid.
We disagree that the lack of an express reference to the unpublished status of
plaintiffs’ works undermines the court’s analysis under § 107(2). Not only has the
Supreme Court admonished courts to resist weighing the fair use factors in isolation,
see Campbell, 510 US at 578 but Congress specifically provided that “[t]he fact that a
work is unpublished shall not itself bar a finding of fair use if such finding is made
upon consideration of all the above factors.” 17 U.S.C. § 107. Therefore, in Bond, we
were able to conclude that the introduction into a court proceeding of an original
work of fiction constituted fair use under § 107 despite the fact that the copyrighted
work was unpublished:
That Bond’s manuscript is unpublished and contains a stylized mode of expressing
his feelings about historical facts weigh against a finding of fair use. But, as
Campbell instructs, we do not consider the § 107 factors in isolation from one
another, but we weigh them together in light of the purposes of copyright. Where,
as here, the use of the work is not related to its mode of expression but rather to its
historical facts and there is no evidence that the use of Bond’s manuscript in the
state legal proceedings would adversely affect the potential market for the
manuscript, one cannot say the incentive for creativity has been diminished in any
sense.

Id. at 395-96 (emphasis added) (internal quotation marks and citations omitted).
Here, the district court, quoting Bond, concluded that iParadigms’ use was
unconnected to any creative element in plaintiffs’ works. Given that the district court
drew its language verbatim from a passage in Bond discussing the fair use of
unpublished works of fiction, the district court clearly did not ignore the unpublished
nature of these works.
Moreover, it is clear that iParadigms’ use of plaintiffs’ works did not have the
“intended purpose” or “incidental effect” of supplanting plaintiffs’ rights to first
publication. Harper & Row, 471 US at 562. This is significant in that the primary basis
for the close scrutiny courts give the use of an unpublished work is, as previously
noted, an “author’s right to control the first public appearance of his expression.” Id.
at 564. iParadigms did not publicly disseminate or display plain-tiffs’ works and did
not send them to any third party “other than the instructor to whom plaintiffs
submitted their own papers.” In fact, the Turnitin digital archiving process does not
involve any review of the submitted works at all, even by those at iParadigms. Thus,
no employee of iParadigms read or reviewed the works submitted by plaintiffs. We
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find no basis whatsoever for concluding that iParadigms’ use of the plaintiffs’ papers
undermined their right to first publication.
Plaintiffs contend that the district court’s consideration of the “nature of the
copyrighted works” factor was flawed for a second reason: the district court ignored
the fact that the works in question were works of fiction and poetry, which are
considered “highly creative” in nature and deserving of the strongest protection. This
argument is unpersuasive as well in that the district court expressly acknowledged its
obligation to consider whether the works in question came within the “core of
creative expression.” Rather than ignore it, however, the district court simply
concluded that even if the plaintiffs’ works were highly creative in nature, iParadigms’
use of the plaintiffs’ works was not related to the creative core of the works. In
concluding that the second factor favored neither plaintiffs nor iParadigms, the
district court was merely applying Bond in which we concluded that the use of an
unpublished work of fiction in a court proceeding constituted fair use because such
use was “not related to its mode of expression but rather to its historical facts.” 317
F.3d at 396. iParadigms’ use of the works in the case — as part of a digitized
database from which to compare the similarity of typewritten characters used in
other student works — is likewise unrelated to any creative component. Thus, we
find no fault in the district court’s application of the second fair use factor.
Third Factor
The third fair use factor requires us to consider “the amount and substantiality of the
portion used in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3).
Generally speaking, “as the amount of the copyrighted material that is used increases,
the likelihood that the use will constitute a ‘fair use’ decreases.” Bond, 317 F.3d at 396.
But this statutory factor also requires courts to consider, in addition to quantity, the
“quality and importance” of the copyrighted materials used, Campbell, 510 US at 587
that is, whether the portion of the copyrighted material was “the heart of the
copyrighted work.” Sundeman v. The Seajay Society, Inc., 142 F.3d 194, 205 (4th
Cir.1998). Although “copying an entire work weighs against finding a fair use, ... it
does not preclude a finding of fair use”; therefore, “the extent of permissible copying
varies with the purpose and character of the use.” Id. at 205-06 (emphasis added).
The district court found that this factor, like the second factor, did not favor either
party. The court concluded that although iParadigms uses substantially the whole of
plaintiffs’ works, iParadigms’ “use of the original works is limited in purpose and
scope” as a digitized record for electronic “comparison purposes only.” Having
already concluded that such use of plaintiffs’ works was transformative, the district
court concluded that iParadigms’ use of the entirety of plaintiffs’ works did not
preclude a finding of fair use.
The plaintiffs contend that the district court erred by referring to the transformative
nature of iParadigms’ use in its analysis of the amount and substantiality of the
portion of the copyrighted work used under § 107(3). In our view, the district court
did not analytically merge the first and third fair use factors by referring to
iParadigms’ transformative use of the students’ works. Plaintiffs’ argument, in fact,
fails to recognize the overlap that exists between the fair use factors. The first and
third factors, for example, take into account to some degree the purpose of the

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disputed use. Compare 17 U.S.C. § 107(1); and Sundeman, 142 F.3d at 202 (explaining
that “the ‘further purpose’ and ‘different character’ of the defendant’s use make it
transformative” under § 107(1)), with Bond, 317 F.3d at 396 (concluding that § 107(3)
did not favor plaintiffs because the defendant’s “sole purpose and intent” was not to
use the expressive content in the plaintiffs’ works but “to obtain admissions of fact”
in a court proceeding). We find no error in the district court’s analysis.
Fourth Factor
Finally, § 107 directs us to examine the market of the copyrighted work to determine
“the effect of the use upon the potential market for or value of the copyrighted
work.” 17 U.S.C. § 107(4). The Supreme Court described this factor as the “single
most important element of fair use,” Harper & Row, 471 US at 566 considering that a
primary goal of copyright is to ensure that “authors [have] the opportunity to realize
rewards in order to encourage them to create.” Leval, Toward a Fair Use Standard, at
1124. By contrast, “a use that has no demonstrable effect upon the potential market
for, or the value of, the copyrighted work need not be prohibited in order to protect
the author’s incentive to create.” Sony, 464 US at 450.
Our task is to determine whether the defendants’ use of plaintiffs’ works “would
materially impair the marketability of the works and whether it would act as a market
substitute” for them. Bond, 317 F.3d at 396. We focus here not upon “whether the
secondary use suppresses or even destroys the market for the original work or its
potential derivatives, but [upon] whether the secondary use usurps the market of the
original work.” NXIVM Corp. v. The Ross Institute, 364 F.3d 471, 482 (2nd Cir.2004)
(emphasis added). An adverse market effect, in and of itself, does not preclude
application of the fair use defense. “The fair use doctrine protects against a
republication which offers the copyrighted work in a secondary packaging, where
potential customers, having read the secondary work, will no longer be inclined to
purchase again something they have already read.” Sundeman, 142 F.3d at 207.
The analysis of whether the disputed use offers a market substitute for the original
work overlaps to some extent with the question of whether the use was
transformative. See Campbell, 510 US at 591 (distinguishing a secondary use that
simply duplicates an original work in its entirety, thereby superseding it, from a
secondary use that is transformative). To the extent this issue arises in fair use cases,
it often does so when the secondary use at issue involves a scholarly critique or
parody of the original work. See Campbell, 510 US at 592 (“[T]he role of the courts is
to distinguish between biting criticism that merely suppresses demand and copyright
infringement, which usurps it.” (internal quotation marks and alterations omitted));
see also Sundeman, 142 F.3d at 207 (holding that defendant’s critique of a novel “did
not have the purpose or effect of supplanting the copyrighted work” and that its use
of the novel was transformative and thus did not create a market substitute for the
original work); Davis v. The Gap, Inc., 246 F.3d 152, 175 (2d Cir.2001) (explaining that
“if the harm resulted from a transformative secondary use that lowered the public’s
estimation of the original (such as a devastating review of a book that quotes liberally
from the original to show how silly and poorly written it is), this transformative use
will be found to be a fair use, not withstanding the harm”).

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But regardless of whether the defendant used the original work to critique or parody
it, the transformative nature of the use is relevant to the market effect factor. See
Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1274 n. 28 (11th Cir.2001)
(“Whereas a work that merely supplants or supersedes another is likely to cause a
substantially adverse impact on the potential market of the original, a transformative
work is less likely to do so.”); Davis, 246 F.3d at 176 (noting that “the market effect
must be evaluated in light of whether the secondary use is transformative”).
The district court concluded that iParadigms’ Turnitin system did not serve as a
market substitute or even harm the market value of the works, highlighting the
deposition testimony of the plaintiffs — each of whom denied that iParadigms’
“impinged on the marketability of their works or interfered with their use of the
works.” The district court also noted that, although the pleadings alleged iParadigms’
use would adversely impact plaintiffs’ ability to market their works to other high
school students seeking to purchase completed term papers or essays, each plaintiff
indicated that such transactions were dishonest and that he or she would not sell
their original works for submission by other students.
Furthermore, the court rejected plaintiffs’ contention that iParadigms’ use would
adversely impact the value of the works if a recipient such as a college admissions
department or a literary journal used the Turnitin system to verify originality.
Because their works are now archived, plaintiffs argued, the Turnitin system would
report that their own original works were plagiarized. In light of how the Turnitin
system works, the district court rejected the argument as speculative at best:
Anyone who is reasonably familiar with Turnitin’s operation will be able to
recognize that the identical match is not the result of plagiarism, but simply the
result of Plaintiff’s earlier submission. Individuals familiar with Turnitin, such as
those in the field of education, would be expecting the works submitted to have
been previously submitted.

On appeal, plaintiffs’ primary contention is that the district court focused on
whether there was evidence of actual damages, failing to consider the effect of
iParadigms’ use on the “potential market” for plaintiffs’ works. Clearly, this assertion
is incorrect. The district court considered the potential market effects suggested by
plaintiffs but concluded that plaintiffs’ arguments were theoretical and speculative.
Plaintiffs’ most plausible theory was that iParadigms’ archiving of their papers
impaired the sale of the papers to high school students in the market for unpublished
term papers, essays and the like. Undoubtedly, there is a market for students who
wish to purchase such works and submit them as their own for academic credit.7
Footnote 7: Web sites such as www.ibuytermpapers.com, for example, offer completed papers and essays
purchased from high school students.

And, iParadigms’ archiving of such papers on the Turnitin website might well impair
the marketability of such works to student buyers intending to submit works they did
not author without being identified as plagiarists.
As noted by the district court, however, the plaintiffs testified that they would not
sell the works at issue here to any dealer in such a market because such a transaction
would make them party to cheating and would encourage plagiarism. Furthermore,
to the extent that iParadigms’ use would adversely affect plaintiffs’ works in this
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particular market, we must consider the transformative nature of the use. Clearly no
market substitute was created by iParadigms, whose archived student works do not
supplant the plaintiffs’ works in the “paper mill” market so much as merely suppress
demand for them, by keeping record of the fact that such works had been previously
submitted. Cf. Davis, 246 F.3d at 175 (noting that fair use occurs where “the harm
resulted from a transformative secondary use that lowered the public’s estimation of
the original” rather than from a market substitute). In our view, then, any harm here
is not of the kind protected against by copyright law.
The plaintiffs offer a few additional theories under which iParadigms’ use of their
papers could conceivably affect marketability. For example, plaintiffs point to the
possibility that if they submitted all or a portion of their own works to a periodical
for publishing or to a college admissions board, and the magazine or college used
Turnitin, then their submitted works might potentially be discredited as a product of
plagiarism. Like the district court, we conclude that these theories are implausible in
light of how the Turnitin system generally operates. We find nothing in the record to
suggest that any of these scenarios envisioned by plaintiffs are anything more than
unfounded speculation.
In sum, we conclude, viewing the evidence in the light most favorable to the
plaintiffs, that iParadigms’ use of the student works was “fair use” under the
Copyright Act and that iParadigms was therefore entitled to summary judgment on
the copyright infringement claim.
Notes and questions
(1) In A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009) the Fourth
Circuit held that high school students required to pass their work through a computerized
plagiarism detection system had no claim for copyright infringement when the system added
their papers to its plagiarism detection archive. The decision rests largely on the court of
appeals understanding that iParadigms’ use of the student papers was transformative because
the defendant used of plaintiffs’ works had an entirely different function and purpose than
the original works.

Text Data Mining & Search Engine Cases
The image search cases: Kelly and Perfect 10
In 2003 and 2007, two key court of appeals cases in the Ninth Circuit addressed whether the
display of images in the context of a menu of Internet search results violated copyright.
Those cases, Kelly v. Arriba Soft Corp, 336 F.3d 811 (9th Cir. 2003); Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), are referred to quite often in the decisions
extracted below and so a brief summary is warranted.
In both Kelly v. Arriba Soft and Perfect 10 v. Amazon, the copyright owners of various
photographs sued visual search engines for the way their works were used by those services.
At the time at least, Internet search engines that focused on images relied on matching
search terms with text associated with images on the Internet. The search engines in Kelly
and Perfect 10 worked as follows: if the text associated with an image file was responsive to a
user’s search query, the search engine would display a small low-resolution “thumbnail” of
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the image in a menu of search results, giving the user something like a police lineup of
images to choose from. Those thumbnail images were displayed from copies made by the
search engine and stored on the search engine’s servers. However, once the user selected a
particular thumbnail, the user’s Internet browser would be directed to the original location to
retrieve the full-scale image.86
In both of the image search cases, Kelly and Perfect 10, the Ninth Circuit found that displaying
low-resolution thumbnail images as part of a menu of search results was transformative.87 In
Perfect 10, the court held that the search engine defendant’s use of thumbnails was “highly
transformative.” It continued (at 1165):
Although an image may have been created originally to serve an entertainment,
aesthetic, or informative function, a search engine transforms the image into a
pointer directing a user to a source of information. Just as a parody has an obvious
claim to transformative value because it can provide social benefit, by shedding light
on an earlier work, and, in the process, creating a new one, a search engine provides
social benefit by incorporating an original work into a new work, namely, an
electronic reference tool. Indeed, a search engine may be more transformative than a
parody because a search engine provides an entirely new use for the original work,
while a parody typically has the same entertainment purpose as the original work.

These thumbnails were complete copies after a fashion, but their size and quality suggested
that they would not substitute for the original images. These same features also made it clear
that the thumbnail images were being used as a pointing device toward the original images;
an entirely different purpose to the original photos. The copying and display of thumbnail
images in Kelly and Perfect 10 was not a non-expressive use as such, after all, allowing users to
see the image was essential to making the search engine results useful. However, the
conclusion that the use of the thumbnails as pointing devices was transformative because it
“served a different function” unrelated to “artistic expression” parallels the expressive/nonexpressive use distinction.
Perfect 10 and Kelly are both consistent with the rationale favoring non-expressive use, even
though the thumbnail displays should be seen as an expressive use similar to cases such as
Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) and Nunez v.
Caribbean Int’l News Corp., 235 F.3d 18 (1st Cir. 2000).
Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.2014)88
Circuit Judge Barrington D. Parker

86 This

distinction matters because the search engine could only be held directly liable for copyright
infringement for images sourced from its own servers; directing a user to someone else’s computer system
could still qualify as copyright infringement, but only with specific knowledge of the underlying infringement.
In United States copyright law, this distinction is referred to as the “server test”. See Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007).
87 Perfect 10 v. Amazon.com 508 F. 3d 1146, 1165-1167 (9th Cir. 2007); See also Kelly v. Arriba Soft Corp., 336

F.3d 811, 818-22 (9th Cir.2003).

88 Disclosure: Along with Jason Schultz, I was Amici Curiae for Digital Humanities and Law Scholars in this

case.

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Beginning in 2004, several research universities including the University of Michigan,
the University of California at Berkeley, Cornell University, and the University of
Indiana agreed to allow Google to electronically scan the books in their collections.
In October 2008, thirteen universities announced plans to create a repository for the
digital copies and founded an organization called HathiTrust to set up and operate
the HathiTrust Digital Library (or “HDL”). Colleges, universities, and other
nonprofit institutions became members of HathiTrust and made the books in their
collections available for inclusion in the HDL. HathiTrust currently has 80 member
institutions and the HDL contains digital copies of more than ten million works,
published over many centuries, written in a multitude of languages, covering almost
every subject imaginable. This appeal requires us to decide whether the HDL’s use of
copyrighted material is protected against a claim of copyright infringement under the
doctrine of fair use. See 17 U.S.C. § 107.
BACKGROUND
A. The HathiTrust Digital Library
HathiTrust permits three uses of the copyrighted works in the HDL repository. First,
HathiTrust allows the general public to search for particular terms across all digital
copies in the repository. Unless the copyright holder authorizes broader use, the
search results show only the page numbers on which the search term is found within
the work and the number of times the term appears on each page. The HDL does
not display to the user any text from the underlying copyrighted work (either in
“snippet” form or otherwise). Consequently, the user is not able to view either the
page on which the term appears or any other portion of the book.
Second, the HDL allows member libraries to provide patrons with certified print
disabilities access to the full text of copyrighted works. A “print disability” is any
disability that prevents a person from effectively reading printed material. Blindness
is one example, but print disabilities also include those that prevent a person from
physically holding a book or turning pages. To use this service, a patron must obtain
certification 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
adaptive technologies such as software that converts the text into spoken words, or
that magnifies the text. Currently, the University of Michigan’s library is the only
HDL member that permits such access, although other member libraries intend to
provide it in the future.
Third, by preserving the copyrighted books in digital form, the HDL permits
members to create a replacement copy of the work, if the member already owned an
original copy, the member’s original copy is lost, destroyed, or stolen, and a
replacement copy is unobtainable at a “fair” price elsewhere.
The HDL stores digital copies of the works in four different locations. One copy is
stored on its primary server in Michigan, one on its secondary server in Indiana, and
two on separate backup tapes at the University of Michigan. Each copy contains the
full text of the work, in a machine readable format, as well as the images of each
page in the work as they appear in the print version.
B. The Orphan Works Project

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Separate and apart from the HDL, in May 2011, the University of Michigan
developed a project known as the Orphan Works Project (or “OWP”). An “orphan
work” is an out-of-print work that is still in copyright, but whose copyright holder
cannot be readily identified or located. See US Copyright Office, Notice of Inquiry,
Orphan Works and Mass Digitization (2012).
The University of Michigan conceived of the OWP in two stages: First, the project
would attempt to identify out-of-print works, try to find their copyright holders, and,
if no copyright holder could be found, publish a list of orphan works candidates to
enable the copyright holders to come forward or be otherwise located. If no
copyright holder came forward, the work was to be designated as an orphan work.
Second, those works identified as orphan works would be made accessible in digital
format to the OWP’s library patrons (with simultaneous viewers limited to the
number of hard copies owned by the library).
The University evidently became concerned that its screening process was not
adequately distinguishing between orphan works (which were to be included in the
OWP) and in-print works (which were not). As a result, before the OWP was
brought online, but after the complaint was filed in this case, the University
indefinitely suspended the project. No copyrighted work has been distributed or
displayed through the project and it remains suspended as of this writing.
C. Proceedings in the District Court
This case began when twenty authors and authors’ associations (collectively, the
“Authors”) sued HathiTrust, one of its member universities, and the presidents of
four other member universities (collectively, the “Libraries”) for copyright
infringement seeking declaratory and injunctive relief. The National Federation of
the Blind and three print-disabled students (the “Intervenors”) were permitted to
intervene to defend their ability to continue using the HDL.
The Libraries initially moved for partial judgment on the pleadings on the ground
that the authors’ associations lacked standing to assert claims on behalf of their
members and that the claims related to the OWP were not ripe. See Fed.R.Civ.P.
12(c). The Libraries then moved for summary judgment on the remaining claims on
the ground that their uses of copyrighted material were protected by the doctrine of
fair use, see 17 U.S.C. § 107, and also by the Chafee Amendment, see id. § 121. The
Intervenors moved for summary judgment on substantially the same grounds as the
Libraries and, finally, the Authors cross-moved for summary judgment.
…
I. Fair Use4
Footnote 4: Plaintiffs argue that the fair use defense is inapplicable to the activities at issue here,
because the Copyright Act includes another section, 108, which governs “Reproduction [of
copyrighted works] by Libraries ...” 17 U.S.C. § 108. However, section 108 also includes a “savings
clause,” which states, “Nothing in this section in any way affects the right of fair use as provided by
section 107....” § 108(f)(4). Thus, we do not construe § 108 as foreclosing our analysis of the Libraries’
activities under fair use, and we proceed with that analysis.

A.

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As the Supreme Court has explained, the overriding purpose of copyright is “‘[t]o
promote the Progress of Science and useful Arts....’” Campbell v. Acuff-Rose Music, Inc.,
510 US 569, 574 (1994); see also Twentieth Century Music Corp. v. Aiken, 422 US 151,
156 (1975). This goal has animated copyright law in Anglo-American history,
beginning with the first copyright statute, the Statute of Anne of 1709, 89 which
declared itself to be “[a]n Act for the Encouragement of Learning, by Vesting the
Copies of Printed Books in the Authors ... during the Times therein mentioned.” Act
for the Encouragement of Learning, 8 Anne, ch. 19. In short, our law recognizes that
copyright is “not an inevitable, divine, or natural right that confers on authors the
absolute ownership of their creations. It is designed rather to stimulate activity and
progress in the arts for the intellectual enrichment of the public.” Pierre N. Leval,
Toward a Fair Use Standard, 103 Harvard Law Review 1105, 1107 (1990).
The Copyright Act furthers this core purpose by granting authors a limited
monopoly over (and thus the opportunity to profit from) the dissemination of their
original works of authorship. … At the same time, there are important limits to an
author’s rights to control original and derivative works. One such limit is the
doctrine of “fair use,” which allows the public to draw upon copyrighted materials
without the permission of the copyright holder in certain circumstances. See id. § 107
(“[T]he fair use of a copyrighted work ... is not an infringement of copyright.”).
“From the infancy of copyright protection, some opportunity for fair use of
copyrighted materials has been thought necessary to fulfill copyright’s very purpose,
‘[t]o promote the Progress of Science and useful Arts....’” Campbell, 510 US at 574.
Under the fair-use doctrine, a book reviewer may, for example, quote from an
original work in order to illustrate a point and substantiate criticisms, see Folsom v.
Marsh, 9 F. Cas. 342, 344 (C.C.D.Mass. 1841) (No. 4901), and a biographer may
quote from unpublished journals and letters for similar purposes, see Wright v. Warner
Books, Inc., 953 F.2d 731 (2d Cir. 1991). An artist may employ copyrighted
photographs in a new work that uses a fundamentally different artistic approach,
aesthetic, and character from the original. See Cariou v. Prince, 714 F.3d 694, 706 (2d
Cir.2013). An internet search engine can display low-resolution versions of
copyrighted images in order to direct the user to the website where the original could
be found. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir.2007);
Kelly v. Arriba Soft Corp., 336 F.3d 811, 818-22 (9th Cir.2003). A newspaper can
publish a copyrighted photograph 18 (taken for a modeling portfolio) in order to
inform and entertain the newspaper’s readership about a news story. See Nunez v.
Caribbean Int’l News Corp., 235 F.3d 18, 25 (1st Cir.2000). A viewer can create a
recording of a broadcast television show in order to view it at a later time. See Sony
Corp. of Am. v. Universal City Studios, Inc., 464 US 417, 447-450 (1984). And a
competitor may create copies of copyrighted software for the purpose of analyzing
that software and discovering how it functions (a process called “reverse
engineering”). See Sony Comp. Entertainment, Inc. v. Connectix Corp., 203 F.3d 596, 599601 (9th Cir.2000).

89 1710 is the correct date. The confusion has something to do with the fact that Great Britain shifted from the

Julian to Gregorian calendar in 1752. Until that time, the New Year began on 25 March.

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The doctrine is generally subject to an important proviso: A fair use must not
excessively damage the market for the original by providing the public with a
substitute for that original work. Thus, a book review may fairly quote a copyrighted
book “for the purposes of fair and reasonable criticism,” Folsom, 9 F. Cas. at 344, but
the review may not quote extensively from the “heart” of a forthcoming memoir in a
manner that usurps the right of first publication and serves as a substitute for
purchasing the memoir, Harper & Row, Publishers, Inc. v. Nation Enters., 471 US 539
(1985).
In 1976, as part of a wholesale revision of the Copyright Act, Congress codified the
judicially created fair-use doctrine at 17 U.S.C. § 107. Section 107 requires a court to
consider four nonexclusive factors which are to be weighed together to assess
whether a particular use is fair:
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.

17 U.S.C. § 107.
An important focus of the first factor is whether the use is “transformative.” A use is
transformative if it does something more than repackage or republish the original
copyrighted work. The inquiry is whether the work “adds something new, with a
further purpose or different character, altering the first with new expression,
meaning or message....” Campbell, 510 US at 579 (citing Leval at 1111). “[T]he more
transformative the new work, the less will be the significance of other factors... that
may weigh against a finding of fair use.” Id. Contrary to what the district court
implied, a use does not become transformative by making an “invaluable
contribution to the progress of science and cultivation of the arts.” HathiTrust, 902
F.Supp.2d at 464. Added value or utility is not the test: a transformative work is one
that serves a new and different function from the original work and is not a
substitute for it.
The second factor considers whether the copyrighted work is “of the creative or
instructive type that the copyright laws value and seek to foster.” Leval, at 1117; see
also Folsom, 9 F. Cas. at 348 (“[W]e must often ... look to the nature and objects of
the selections made....”). For example, the law of fair use “recognizes a greater need
to disseminate factual works than works of fiction or fantasy.” Harper & Row, 471
US at 563.
The third factor asks whether the secondary use employs more of the copyrighted
work than is necessary, and whether the copying was excessive in relation to any
valid purposes asserted under the first factor. Campbell, 510 US at 586-87. In
weighing this factor, we assess the quantity and value of the materials used and
whether the amount copied is reasonable in relation to the purported justifications
for the use under the first factor. Leval at 1123.

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Finally, the fourth factor requires us to assess the impact of the use on the traditional
market for the copyrighted work. This is the “single most important element of fair
use.” Harper & Row, 471 US at 566. To defeat a claim of fair use, the copyright
holder must point to market harm that results because the secondary use serves as a
substitute for the original work. See Campbell, 510 US at 591 (“cognizable market
harm” is limited to “market substitution”); see also NXIVM Corp. v. Ross Inst., 364
F.3d 471, 481-82 (2d Cir.2004).
B.
As discussed above, the Libraries permit three uses of the digital copies deposited in
the HDL. We now consider whether these uses are “fair” within the meaning of our
copyright law.
1. Full-Text Search
It is not disputed that, in order to perform a full-text search of books, the Libraries
must first create digital copies of the entire books. Importantly, as we have seen, the
HDL does not allow users to view any portion of the books they are searching.
Consequently, in providing this service, the HDL does not add into circulation any
new, human-readable copies of any books. Instead, the HDL simply permits users to
“word search” — that is, to locate where specific words or phrases appear in the
digitized books. Applying the relevant factors, we conclude that this use is a fair use.
i.
Turning to the first factor, we conclude that the creation of a full-text searchable
database is a quintessentially transformative use. As the example on page 7, supra,
demonstrates, the result of a word search is different in purpose, character,
expression, meaning, and message from the page (and the book) from which it is
drawn. Indeed, we can discern little or no resemblance between the original text and
the results of the HDL full-text search.
There is no evidence that the Authors write with the purpose of enabling text
searches of their books. Consequently, the full-text search function does not
“supersede the objects [or purposes] of the original creation,” Campbell, 510 US at
579 (internal quotation marks omitted). The HDL does not “merely repackage[] or
republish[] the original[s],” Leval, at 1111, or merely recast “an original work into a
new mode of presentation,” Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d
132, 143 (2d Cir.1998). Instead, by enabling full-text search, the HDL adds to the
original something new with a different purpose and a different character.
Full-text search adds a great deal more to the copyrighted works at issue than did the
transformative uses we approved in several other cases. For example, in Cariou v.
Prince, we found that certain photograph collages were transformative, even though
the collages were cast in the same medium as the copyrighted photographs. 714 F.3d
at 706. Similarly, in Bill Graham Archives v. Dorling Kindersley Ltd., we held that it was a
transformative use to include in a biography copyrighted concert photos, even
though the photos were unaltered (except for being reduced in size). 448 F.3d 605,
609-11 (2d Cir.2006); see also Blanch v. Koons, 467 F.3d 244, 252-53 (2d Cir.2006)
(transformative use of copyrighted photographs in collage painting); Leibovitz v.

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Paramount Pictures Corp., 137 F.3d 109, 114 (2d Cir.1998) (transformative use of
copyrighted photograph in advertisement).
Cases from other Circuits reinforce this conclusion. In Perfect 10, Inc., the Ninth
Circuit held that the use of copyrighted thumbnail images in internet search results
was transformative because the thumbnail copies served a different function from
the original copyrighted images. 508 F.3d at 1165; accord Arriba Soft Corp., 336
F.3d at 819. And in A.V. ex rel. Vanderhye v. iParadigms, LLC, a company created
electronic copies of unaltered student papers for use in connection with a computer
program that detects plagiarism. Even though the electronic copies made no
“substantive alteration to” the copyrighted student essays, the Fourth Circuit held
that plagiarism detection constituted a transformative use of the copyrighted works.
562 F.3d 630, 639-40.
ii.
The second fair-use factor — the nature of the copyrighted work — is not
dispositive. The HDL permits the full-text search of every type of work imaginable.
Consequently, there is no dispute that the works at issue are of the type that the
copyright laws value and seek to protect. However, “this factor ‘may be of limited
usefulness where,’ as here, ‘the creative work ... is being used for a transformative
purpose.’” Cariou, 714 F.3d at 710 (quoting Bill Graham Archives, 448 F.3d at 612).
Accordingly, our fair-use analysis hinges on the other three factors.
iii.
The third factor asks whether the copying used more of the copyrighted work than
necessary and whether the copying was excessive. As we have noted, “[t]here are no
absolute rules as to how much of a copyrighted work may be copied and still be
considered a fair use.” Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1263 (2d
Cir.1986). “The extent of permissible copying varies with the purpose and character
of the use.” Campbell, 510 US at 586-87. The crux of the inquiry is whether “no more
was taken than necessary.” Id. at 589. For some purposes, it may be necessary to
copy the entire copyrighted work, in which case Factor Three does not weigh against
a finding of fair use. See Bill Graham Archives, 448 F.3d at 613 (entire image copied);
Arriba Soft, 336 F.3d at 821 (“If Arriba only copied part of the image, it would be
more difficult to identify it, thereby reducing the usefulness of the visual search
engine.”).
In order to enable the full-text search function, the Libraries, as we have seen,
created digital copies of all the books in their collections.5
Footnote 5: The HDL also creates digital copies of the images of each page of the books. As the
Libraries acknowledge, the HDL does not need to retain these copies to enable the full-text search
use. We discuss the fair-use justification for these copies in the context of the disability-access use.

Because it was reasonably necessary for the HDL to make use of the entirety of the
works in order to enable the full-text search function, we do not believe the copying
was excessive.
The Authors also contend that the copying is excessive because the HDL creates and
maintains copies of the works at four different locations. But the record
demonstrates that these copies are also reasonably necessary in order to facilitate the
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HDL’s legitimate uses. In particular, the HDL’s services are offered to patrons
through two servers, one at the University of Michigan (the primary server) and an
identical one at the University of Indiana (the “mirror” server). Both servers contain
copies of the digital works at issue. According to the HDL executive director, the
“existence of an identical mirror site allows for balancing the load of user web traffic
to avoid overburdening a single site, and each site acts as a back-up of the HDL
collection in the event that one site were to cease operation (for example, due to
failure caused by a disaster, or even as a result of routine maintenance).” To further
guard against the risk of data loss, the HDL stores copies of the works on two
encrypted backup tapes, which are disconnected from the internet and are placed in
separate secure locations on the University of Michigan campus. The HDL creates
these backup tapes so that the data could be restored in “the event of a disaster
causing large-scale data loss” to the primary and mirror servers.
We have no reason to think that these copies are excessive or unreasonable in
relation to the purposes identified by the Libraries and permitted by the law of
copyright. In sum, even viewing the evidence in the light most favorable to the
Authors, the record demonstrates that these copies are reasonably necessary to
facilitate the services HDL provides to the public and to mitigate the risk of disaster
or data loss. Accordingly, we conclude that this factor favors the Libraries.
iv.
The fourth factor requires us to consider “the effect of the use upon the potential
market for or value of the copyrighted work,” 17 U.S.C. § 107(4), and, in particular,
whether the secondary use “usurps the market of the original work,” NXIVM Corp.,
364 F.3d at 482.
The Libraries contend that the full-text-search use poses no harm to any existing or
potential traditional market and point to the fact that, in discovery, the Authors
admitted that they were unable to identify “any specific, quantifiable past harm, or
any documents relating to any such past harm,” resulting from any of the Libraries’
uses of their works (including full-text search). The district court agreed with this
contention, as do we.
At the outset, it is important to recall that the Factor Four analysis is concerned with
only one type of economic injury to a copyright holder: the harm that results because
the secondary use serves as a substitute for the original work. See Campbell, 510 US at
591 (“cognizable market harm” is limited to “market substitution”). In other words,
under Factor Four, any economic “harm” caused by transformative uses does not
count because such uses, by definition, do not serve as substitutes for the original
work. See Bill Graham Archives, 448 F.3d at 614.
To illustrate why this is so, consider how copyright law treats book reviews. Book
reviews often contain quotations of copyrighted material to illustrate the reviewer’s
points and substantiate his criticisms; this is a paradigmatic fair use. And a negative
book review can cause a degree of economic injury to the author by dissuading
readers from purchasing copies of her book, even when the review does not serve as
a substitute for the original. But, obviously, in that case, the author has no cause for
complaint under Factor Four: The only market harms that count are the ones that
are caused because the secondary use serves as a substitute for the original, not when
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the secondary use is transformative (as in quotations in a book review). See Campbell,
510 US at 591-92 (“When a lethal parody, like a scathing theater review, kills demand
for the original, it does not produce a harm cognizable under the Copyright Act.”).
The Authors assert two reasons why the full-text-search function harms their
traditional markets. The first is a “lost sale” theory which posits that a market for
licensing books for digital search could possibly develop in the future, and the HDL
impairs the emergence of such a market because it allows patrons to search books
without any need for a license. Thus, according to the Authors, every copy employed
by the HDL in generating full-text searches represents a lost opportunity to license
the book for search.
This theory of market harm does not work under Factor Four, because the full-text
search function does not serve as a substitute for the books that are being searched.
See Campbell, 510 US at 591-92; Bill Graham Archives, 448 F.3d at 614. Thus, it is
irrelevant that the Libraries might be willing to purchase licenses in order to engage
in this transformative use (if the use were deemed unfair). Lost licensing revenue
counts under Factor Four only when the use serves as a substitute for the original
and the full-text-search use does not.
Next, the Authors assert that the HDL creates the risk of a security breach which
might impose irreparable damage on the Authors and their works. In particular, the
Authors speculate that, if hackers were able to obtain unauthorized access to the
books stored at the HDL, the full text of these tens of millions of books might be
distributed worldwide without restriction, “decimating” the traditional market for
those works.
The record before us documents the extensive security measures the Libraries have
undertaken to safeguard against the risk of a data breach. Some of those measures
were described by the HDL executive director as follows:
First, [HDL] maintains ... rigorous physical security controls. HDL servers, storage,
and networking equipment at Michigan and Indiana University are mounted in
locked racks, and only six individuals at Michigan and three at Indiana University
have keys. The data centers housing HDL servers, storage, and networking
equipment at each site location are monitored by video surveillance, and entry
requires use of both a keycard and a biometric sensor.
Second, network access to the HDL corpus is highly restricted, even for the staff of
the data centers housing HDL equipment at Michigan and Indiana University. For
example, two levels of network firewalls are in place at each site, and Indiana
University data center staff do not have network access to the HDL corpus, only
access to the physical equipment. For the backup tapes, network access is limited to
the administrators of the backup system, and these individuals are not provided the
encryption key that would be required to access the encrypted files on the backup
tapes.
Web access to the HDL corpus is also highly restricted. Access by users of the HDL
service is governed by primarily by [sic] the HDL rights database, which classifies
each work by presumed copyright status, and also by a user’s authentication to the
system (e.g., as an individual certified to have a print disability by Michigan’s Office
of Services for Students with Disabilities).
...

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Even where we do permit a work to be read online, such as a work in the public
domain, we make efforts to ensure that inappropriate levels of access do not take
place. For example, a mass download prevention system called “choke” is used to
measure the rate of activity (such as the rate a user is reading pages) by each
individual user. If a user’s rate of activity exceeds certain thresholds, the system
assumes that the user is mechanized (e.g., a web robot) and blocks that user’s access
for a set period of time.

(Wilkins Declaration).
This showing of the security measures taken by the Libraries is essentially unrebutted.
Consequently, we see no basis in the record on which to conclude that a security
breach is likely to occur, much less one that would result in the public release of the
specific copyrighted works belonging to any of the plaintiffs in this case. Cf. Clapper v.
Amnesty Int’l USA, 133 S.Ct. 1138, 1143 (2013) (risk of future harm must be
“certainly impending,” rather than merely “conjectural” or “hypothetical,” to
constitute a cognizable injury-in-fact); Sony Corp., 464 US at 453-54 (concluding that
time-shifting using a Betamax is fair use because the copyright owners’ “prediction
that live television or movie audiences will decrease” was merely “speculative”).
Factor Four thus favors a finding of fair use.
Without foreclosing a future claim based on circumstances not now predictable, and
based on a different record, we hold that the balance of relevant factors in this case
favors the Libraries. In sum, we conclude that the doctrine of fair use allows the
Libraries to digitize copyrighted works for the purpose of permitting full-text
searches.
CONCLUSION
The judgment of the district court is AFFIRMED, in part, insofar as the district
court concluded that that the doctrine of “fair use” allows defendants-appellees to
create a full-text searchable database of copyrighted works and to provide those
works in formats accessible to those with disabilities; and that claims predicated
upon the Orphan Works Project are not ripe for adjudication. We VACATE the
judgment, in part, insofar as it rests on the district court’s holding related to the claim
of infringement predicated upon defendants-appellees’ preservation of copyrighted
works, and we REMAND for further proceedings consistent with this opinion.
Notes and questions
(1) Other issues in the HathiTrust case: Portions of the decision dealing with associational
standing have been omitted from this extract. The court of appeals agreed with the district
court that the issues raised by the orphan works program were not ripe for adjudication
because the project had been abandoned as a result of the litigation. The court also vacated
the district court’s ruling that preservation copies were fair use on standing grounds. The
court also held (at 103) that “the doctrine of fair use allows the Libraries to provide full
digital access to copyrighted works to their print-disabled patrons.”

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Authors Guild v. Google, Inc., 804 F. 3d 202 (2d Cir. 2015)90
Circuit Judge Leval
This copyright dispute tests the boundaries of fair use. Plaintiffs, who are authors of
published books under copyright, sued Google, Inc. (“Google”) for copyright
infringement in the United States District Court for the Southern District of New
York (Chin, J.). They appeal from the grant of summary judgment in Google’s favor.
Through its Library Project and its Google Books project, acting without permission
of rights holders, Google has made digital copies of tens of millions of books,
including Plaintiffs’, that were submitted to it for that purpose by major libraries.
Google has scanned the digital copies and established a publicly available search
function. An Internet user can use this function to search without charge to
determine whether the book contains a specified word or term and also see “snippets”
of text containing the searched-for terms. In addition, Google has allowed the
participating libraries to download and retain digital copies of the books they submit,
under agreements which commit the libraries not to use their digital copies in
violation of the copyright laws. These activities of Google are alleged to constitute
infringement of Plaintiffs’ copyrights. Plaintiffs sought injunctive and declaratory
relief as well as damages.
Google defended on the ground that its actions constitute “fair use,” which, under
17 U.S.C. § 107, is “not an infringement.” The district court agreed. Authors Guild, Inc.
v. Google Inc., 954 F.Supp.2d 282, 294 (S.D.N.Y.2013). Plaintiffs brought this appeal.
Google Books and the Google Library Project
Google’s Library Project, which began in 2004, involves bi-lateral agreements
between Google and a number of the world’s major research libraries. Under these
agreements, the participating libraries select books from their collections to submit
to Google for inclusion in the project. Google makes a digital scan of each book,
extracts a machine-readable text, and creates an index of the machine-readable text
of each book. Google retains the original scanned image of each book, in part so as
to improve the accuracy of the machine-readable texts and indices as image-to-text
conversion technologies improve.
Since 2004, Google has scanned, rendered machine-readable, and indexed more than
20 million books, including both copyrighted works and works in the public domain.
The vast majority of the books are non-fiction, and most are out of print. All of the
digital information created by Google in the process is stored on servers protected
by the same security systems Google uses to shield its own confidential information.
The digital corpus created by the scanning of these millions of books enables the
Google Books search engine. Members of the public who access the Google Books
website can enter search words or terms of their own choice, receiving in response a
list of all books in the database in which those terms appear, as well as the number of
times the term appears in each book. A brief description of each book, entitled
90 Disclosure: Along with Jason Schultz I was Amici Curiae for Digital Humanities and Law Scholars in this

case.

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“About the Book,” gives some rudimentary additional information, including a list of
the words and terms that appear with most frequency in the book. It sometimes
provides links to buy the book online and identifies libraries where the book can be
found. The search tool permits a researcher to identify those books, out of millions,
that do, as well as those that do not, use the terms selected by the researcher. Google
notes that this identifying information instantaneously supplied would otherwise not
be obtainable in lifetimes of searching.
No advertising is displayed to a user of the search function. Nor does Google receive
payment by reason of the searcher’s use of Google’s link to purchase the book.
The search engine also makes possible new forms of research, known as “text
mining” and “data mining.” Google’s “ngrams” research tool draws on the Google
Library Project corpus to furnish statistical information to Internet users about the
frequency of word and phrase usage over centuries. This tool permits users to
discern fluctuations of interest in a particular subject over time and space by showing
increases and decreases in the frequency of reference and usage in different periods
and different linguistic regions. It also allows researchers to comb over the tens of
millions of books Google has scanned in order to examine “word frequencies,
syntactic patterns, and thematic markers” and to derive information on how
nomenclature, linguistic usage, and literary style have changed over time. Authors
Guild, Inc., 954 F.Supp.2d at 287. The district court gave as an example “tracking the
frequency of references to the United States as a single entity (‘the United States is’)
versus references to the United States in the plural (‘the United States are’) and how
that usage has changed over time.”
Figure 29 United States is vs are illustration
(from the Digital Humanities Brief)91

91 Judge Leval is referring to an example in the amicus brief filed on behalf of Digital Humanities Researchers.

See Brief of Digital Humanities and Law Scholars in Support of Defendants’ Motion For Summary Judgment
in Authors Guild v. Google (1:05-cv-08136-DC) (August 3, 2012).

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The Google Books search function also allows the user a limited viewing of text. In
addition to telling the number of times the word or term selected by the searcher
appears in the book, the search function will display a maximum of three “snippets”
containing it. A snippet is a horizontal segment comprising ordinarily an eighth of a
page. Each page of a conventionally formatted book in the Google Books database is
divided into eight non-overlapping horizontal segments, each such horizontal
segment being a snippet. (Thus, for such a book with 24 lines to a page, each snippet
is comprised of three lines of text.) Each search for a particular word or term within
a book will reveal the same three snippets, regardless of the number of computers
from which the search is launched. Only the first usage of the term on a given page
is displayed. Thus, if the top snippet of a page contains two (or more) words for
which the user searches, and Google’s program is fixed to reveal that particular
snippet in response to a search for either term, the second search will duplicate the
snippet already revealed by the first search, rather than moving to reveal a different
snippet containing the word because the first snippet was already revealed. Google’s
program does not allow a searcher to increase the number of snippets revealed by
repeated entry of the same search term or by entering searches from different
computers. A searcher can view more than three snippets of a book by entering
additional searches for different terms. However, Google makes permanently
unavailable for snippet view one snippet on each page and one complete page out of
every ten — a process Google calls “blacklisting.”
Google also disables snippet view entirely for types of books for which a single
snippet is likely to satisfy the searcher’s present need for the book, such as
dictionaries, cookbooks, and books of short poems. Finally, since 2005, Google will
exclude any book altogether from snippet view at the request of the rights holder by
the submission of an online form.
Under its contracts with the participating libraries, Google allows each library to
download copies — of both the digital image and machine-readable versions — of
the books that library submitted to Google for scanning (but not of books submitted
by other libraries). The agreements between Google and the libraries, although not in
all respects uniform, require the libraries to abide by copyright law in utilizing the
digital copies they download and to take precautions to prevent dissemination of
their digital copies to the public at large. Participant libraries have downloaded at
least 2.7 million digital copies of their own volumes.
The Law of Fair Use
The ultimate goal of copyright is to expand public knowledge and understanding,
which copyright seeks to achieve by giving potential creators exclusive control over
copying of their works, thus giving them a financial incentive to create informative,
intellectually enriching works for public consumption. This objective is clearly
reflected in the Constitution’s empowerment of Congress “To promote the Progress of
Science ... by securing for limited Times to Authors ... the exclusive Right to their
respective Writings.” US Const., Art. I, § 8, cl. 8 (emphasis added). Thus, while
authors are undoubtedly important intended beneficiaries of copyright, the ultimate,

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primary intended beneficiary is the public, whose access to knowledge copyright
seeks to advance by providing rewards for authorship.
For nearly three hundred years, since shortly after the birth of copyright in England
in 1710, courts have recognized that, in certain circumstances, giving authors
absolute control over all copying from their works would tend in some
circumstances to limit, rather than expand, public knowledge. In the words of Lord
Ellenborough, “While I shall think myself bound to secure every man in the
enjoyment of his copy-right, one must not put manacles upon science.” Cary v.
Kearsley, 170 Eng. Rep. 679, 681(1802). Courts thus developed the doctrine,
eventually named fair use, which permits unauthorized copying in some
circumstances, so as to further “copyright’s very purpose, to promote the Progress
of Science and useful Arts.” Campbell v. Acuff-Rose Music, Inc., 510 US 569, 575 (1994).
Although well established in the common law development of copyright, fair use was
not recognized in the terms of our statute until the adoption of § 107 in the
Copyright Act of 1976.
Section 107, in its present form, provides:
[T]he fair use of a copyrighted work ... for purposes such as criticism, comment,
news reporting, teaching (including multiple copies for classroom use), scholarship,
or research, is not an infringement of copyright. In determining whether the use
made of a work in any particular case is a fair use the factors to be considered shall
include —
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such
finding is made upon consideration of all the above factors.

17 U.S.C. § 107. As the Supreme Court has designated fair use an affirmative defense,
see Campbell, 510 US at 590, the party asserting fair use bears the burden of proof,
American Geophysical Union v. Texaco Inc., 60 F.3d 913, 918 (2d Cir.1994).
The statute’s wording, derived from a brief observation of Justice Joseph Story in
Folsom v. Marsh, does not furnish standards for recognition of fair use. Its instruction
to consider the “purpose and character” of the secondary use and the “nature” of
the copyrighted work does not explain what types of “purpose and character” or
“nature” favor a finding of fair use and which do not. In fact, as the Supreme Court
observed in Campbell, the House Report makes clear that, in passing the statute,
Congress had no intention of normatively dictating fair use policy. The purpose of
the enactment was to give recognition in the statute itself to such an important part
of copyright law developed by the courts through the common law process.
“Congress meant § 107 to restate the present judicial doctrine of fair use, not to
change, narrow, or enlarge it an any way, and intended that courts continue the

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common-law tradition of fair use adjudication.” Campbell, 510 US at 577.
Furthermore, notwithstanding fair use’s long common-law history, not until the
Campbell ruling in 1994 did courts undertake to explain the standards for finding fair
use.
The Campbell Court undertook a comprehensive analysis of fair use’s requirements,
discussing every segment of § 107. Beginning with the examples of purposes set
forth in the statute’s preamble, the Court made clear that they are “illustrative and
not limitative” and “provide only general guidance about the sorts of copying that
courts and Congress most commonly have found to be fair uses.” 510 US at 577-578.
The statute “calls for case-by-case analysis” and “is not to be simplified with brightline rules.” Id. at 577. Section 107’s four factors are not to “be treated in isolation,
one from another. All are to be explored, and the results weighed together, in light of
the purposes of copyright.” Id. at 578. Each factor thus stands as part of a
multifaceted assessment of the crucial question: how to define the boundary limit of
the original author’s exclusive rights in order to best serve the overall objectives of
the copyright law to expand public learning while protecting the incentives of
authors to create for the public good.
At the same time, the Supreme Court has made clear that some of the statute’s four
listed factors are more significant than others. The Court observed in Harper & Row
that the fourth factor, which assesses the harm the secondary use can cause to the
market for, or the value of, the copyright for the original, “is undoubtedly the single
most important element of fair use.” 471 US 539, 566 (1985). This is consistent with
the fact that the copyright is a commercial right, intended to protect the ability of
authors to profit from the exclusive right to merchandise their own work.
In Campbell, the Court stressed also the importance of the first factor, the “purpose
and character of the secondary use.” 17 U.S.C. § 107(1). The more the appropriator
is using the copied material for new, transformative purposes, the more it serves
copyright’s goal of enriching public knowledge and the less likely it is that the
appropriation will serve as a substitute for the original or its plausible derivatives,
shrinking the protected market opportunities of the copyrighted work. 510 US at 591
(noting that, when the secondary use is transformative, “market substitution is at
least less certain, and market harm may not be so readily inferred.”).
With this background, we proceed to discuss each of the statutory factors, as
illuminated by Campbell and subsequent case law, in relation to the issues here in
dispute.
The Search and Snippet View Functions
A. Factor One
(1) Transformative purpose. Campbell’s explanation of the first factor’s inquiry into
the “purpose and character” of the secondary use focuses on whether the new work,
“in Justice Story’s words, merely supersedes the objects’ of the original creation, or
instead adds something new, with a further purpose. It asks, in other words, whether
and to what extent the new work is transformative.” 510 US at 578-579 (citations

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omitted).92 While recognizing that a transformative use is “not absolutely necessary
for a finding of fair use,” the opinion further explains that the “goal of copyright, to
promote science and the arts, is generally furthered by the creation of transformative
works” and that “such works thus lie at the heart of the fair use doctrine’s guarantee
of breathing space within the confines of copyright.” Id. at 579. In other words,
transformative uses tend to favor a fair use finding because a transformative use is
one that communicates something new and different from the original or expands its
utility, thus serving copyright’s overall objective of contributing to public knowledge.
The word “transformative” cannot be taken too literally as a sufficient key to
understanding the elements of fair use. It is rather a suggestive symbol for a complex
thought, and does not mean that any and all changes made to an author’s original
text will necessarily support a finding of fair use. The Supreme Court’s discussion in
Campbell gave important guidance on assessing when a transformative use tends to
support a conclusion of fair use. The defendant in that case defended on the ground
that its work was a parody of the original and that parody is a time-honored category
of fair use. Explaining why parody makes a stronger, or in any event more obvious,
claim of fair use than satire, the Court stated,
[T]he heart of any parodist’s claim to quote from existing material ... is the use of ...
a prior author’s composition to ... comment[] on that author’s works.... If, on the contrary,
the commentary has no critical bearing on the substance or style of the original
composition, which the alleged infringer merely uses to get attention or to avoid the
drudgery in working up something fresh, the claim to fairness in borrowing from
another’s work diminishes accordingly (if it does not vanish).... Parody needs to
mimic an original to make its point, and so has some claim to use the creation of its
victim’s ... imagination, whereas satire can stand on its own two feet and so requires
justification for the very act of borrowing.

Id. at 580-81 (emphasis added). In other words, the would-be fair user of another’s
work must have justification for the taking. A secondary author is not necessarily at
liberty to make wholesale takings of the original author’s expression merely because
of how well the original author’s expression would convey the secondary author’s
different message. Among the best recognized justifications for copying from
another’s work is to provide comment on it or criticism of it. A taking from another
author’s work for the purpose of making points that have no bearing on the original
may well be fair use, but the taker would need to show a justification. This part of
the Supreme Court’s discussion is significant in assessing Google’s claim of fair use
because, as discussed extensively below, Google’s claim of transformative purpose
for copying from the works of others is to provide otherwise unavailable information
about the originals.
A further complication that can result from oversimplified reliance on whether the
copying involves transformation is that the word “transform” also plays a role in
defining “derivative works,” over which the original rights holder retains exclusive
control. Section 106 of the Act specifies the exclusive right of the copyright owner
“(2) to prepare derivative works based upon the copyrighted work.” See 17 U.S.C. §
9292 Judge Level is quite modest in not citing the Supreme Court’s extensive citation of the judge’s own law

review article advocating transformativeness as the basis of fair use. See Pierre N. Leval, Toward a Fair Use
Standard, 103 HARV. L. REV. 1105 (1990).

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106. The statute defines derivative works largely by example, rather than explanation.
The examples include “translation, musical arrangement, dramatization,
fictionalization, motion picture version, sound recording, art reproduction,
abridgement, condensation,” to which list the statute adds “any other form in which
a work may be ... transformed.” 17 U.S.C. § 101 (emphasis added). As we noted in
Authors Guild, Inc. v. HathiTrust, “paradigmatic examples of derivative works include
the translation of a novel into another language, the adaptation of a novel into a
movie or play, or the recasting of a novel as an e-book or an audiobook.” 755 F.3d
87, 95 (2d Cir.2014). While such changes can be described as transformations, they
do not involve the kind of transformative purpose that favors a fair use finding. The
statutory definition suggests that derivative works generally involve transformations
in the nature of changes of form. 17 U.S.C. § 101. By contrast, copying from an
original for the purpose of criticism or commentary on the original or provision of
information about it,17 tends most clearly to satisfy Campbell’s notion of the
“transformative” purpose involved in the analysis of Factor One.18
Footnote 17: See, e.g., HathiTrust, 755 F.3d at 97-98 (justifying as transformative fair use purpose the
digital copying of original for purpose of permitting searchers to determine whether its text employs
particular words); A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 638-640 (4th Cir.2009)
(justifying as transformative fair use purpose the complete digital copying of a manuscript to
determine whether the original included matter plagiarized from other works); Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007) (justifying as transformative fair use purpose the
use of a digital, thumbnail copy of the original to provide an Internet pathway to the original); Kelly v.
Arriba Soft Corp., 336 F.3d 811, 818-819 (9th Cir.2003) (same); Bond v. Blum, 317 F.3d 385 (4th
Cir.2003) (justifying as fair use purpose the copying of author’s original unpublished autobiographical
manuscript for the purpose of showing that he murdered his father and was an unfit custodian of his
children); Nuñez v. Caribbean Int’l News Corp., 235 F.3d 18, 21-23 (1st Cir.2000) (justifying as
transformative fair use purpose a newspaper’s copying of a photo of winner of beauty pageant in a
revealing pose for the purpose of informing the public of the reason the winner’s title was
withdrawn).
Footnote 18: The Seventh Circuit takes the position that the kind of secondary use that favors
satisfaction of the fair use test is better described as a “complementary” use, referring to how a
hammer and nail complement one another in that together they achieve results that neither can
accomplish on its own. Ty, Inc. v. Publications International, Ltd., 292 F.3d 512, 517-518 (7th Cir.2002);
see also Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 758 (7th Cir.2014). We do not find the term
“complementary” particularly helpful in explaining fair use. The term would encompass changes of
form that are generally understood to produce derivative works, rather than fair uses, and, at the same
time, would fail to encompass copying for purposes that are generally and properly viewed as creating
fair uses. When a novel is converted into film, for example, the original novel and the film ideally
complement one another in that each contributes to achieving results that neither can accomplish on
its own. The invention of the original author combines with the cinematographic interpretive skills of
the filmmaker to produce something that neither could have produced independently. Nonetheless, at
least when the intention of the film is to make a “motion picture version” of the novel, 17 U.S.C. §
101, without undertaking to parody it or to comment on it, the film is generally understood to be a
derivative work, which under § 106, falls within the exclusive rights of the copyright owner. Although
they complement one another, the film is not a fair use. At the same time, when a secondary work
quotes an original for the purpose of parodying it, or discrediting it by exposing its inaccuracies,
illogic, or dishonesty, such an undertaking is not within the exclusive prerogatives of the rights holder;
it produces a fair use. Yet, when the purpose of the second is essentially to destroy the first, the two
are not comfortably described as complementaries that combine to produce together something that
neither could have produced independently of the other. We recognize, as just noted above, that the
word “transformative,” if interpreted too broadly, can also seem to authorize copying that should fall

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within the scope of an author’s derivative rights. Attempts to find a circumspect shorthand for a
complex concept are best understood as suggestive of a general direction, rather than as definitive
descriptions.

With these considerations in mind, we first consider whether Google’s search and
snippet views functions satisfy the first fair use factor with respect to Plaintiffs’ rights
in their books. (The question whether these functions might infringe upon Plaintiffs’
derivative rights is discussed in the next Part.)
(2) Search Function. We have no difficulty concluding that Google’s making of a
digital copy of Plaintiffs’ books for the purpose of enabling a search for
identification of books containing a term of interest to the searcher involves a highly
transformative purpose, in the sense intended by Campbell. Our court’s exemplary
discussion in HathiTrust informs our ruling. That case involved a dispute that is
closely related, although not identical, to this one. Authors brought claims of
copyright infringement against HathiTrust, an entity formed by libraries participating
in the Google Library Project to pool the digital copies of their books created for
them by Google. The suit challenged various usages HathiTrust made of the digital
copies. Among the challenged uses was HathiTrust’s offer to its patrons of “full-text
searches,” which, very much like the search offered by Google Books to Internet
users, permitted patrons of the libraries to locate in which of the digitized books
specific words or phrases appeared. 755 F.3d at 98. (HathiTrust’s search facility did
not include the snippet view function, or any other display of text.) We concluded
that both the making of the digital copies and the use of those copies to offer the
search tool were fair uses. Id. at 105.
Notwithstanding that the libraries had downloaded and stored complete digital
copies of entire books, we noted that such copying was essential to permit searchers
to identify and locate the books in which words or phrases of interest to them
appeared. Id. at 97. We concluded “that the creation of a full-text searchable
database is a quintessentially transformative use ... [as] the result of a word search is
different in purpose, character, expression, meaning, and message from the page
(and the book) from which it is drawn.” Id. We cited A.V. ex rel. Vanderhye v.
iParadigms, LLC, 562 F.3d 630, 639-40 (4th Cir.2009), Perfect 10, Inc. v. Amazon.com,
Inc., 508 F.3d 1146, 1165 (9th Cir.2007), and Kelly v. Arriba Soft Corp., 336 F.3d 811,
819 (9th Cir.2003) as examples of cases in which courts had similarly found the
creation of complete digital copies of copyrighted works to be transformative fair
uses when the copies “served a different function from the original.” HathiTrust, 755
F.3d at 97.
As with HathiTrust (and iParadigms), the purpose of Google’s copying of the original
copyrighted books is to make available significant information about those books,
permitting a searcher to identify those that contain a word or term of interest, as well
as those that do not include reference to it. In addition, through the ngrams tool,
Google allows readers to learn the frequency of usage of selected words in the
aggregate corpus of published books in different historical periods. We have no
doubt that the purpose of this copying is the sort of transformative purpose
described in Campbell as strongly favoring satisfaction of the first factor.
We recognize that our case differs from HathiTrust in two potentially significant
respects. First, HathiTrust did not “display to the user any text from the underlying
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copyrighted work,” 755 F.3d at 91, whereas Google Books provides the searcher
with snippets containing the word that is the subject of the search. Second,
HathiTrust was a nonprofit educational entity, while Google is a profit-motivated
commercial corporation. We discuss those differences below.
(3) Snippet View. Plaintiffs correctly point out that this case is significantly different
from HathiTrust in that the Google Books search function allows searchers to read
snippets from the book searched, whereas HathiTrust did not allow searchers to
view any part of the book. Snippet view adds important value to the basic
transformative search function, which tells only whether and how often the searched
term appears in the book. Merely knowing that a term of interest appears in a book
does not necessarily tell the searcher whether she needs to obtain the book, because
it does not reveal whether the term is discussed in a manner or context falling within
the scope of the searcher’s interest. For example, a searcher seeking books that
explore Einstein’s theories, who finds that a particular book includes 39 usages of
“Einstein,” will nonetheless conclude she can skip that book if the snippets reveal
that the book speaks of “Einstein” because that is the name of the author’s cat. In
contrast, the snippet will tell the searcher that this is a book she needs to obtain if
the snippet shows that the author is engaging with Einstein’s theories.
Google’s division of the page into tiny snippets is designed to show the searcher just
enough context surrounding the searched term to help her evaluate whether the
book falls within the scope of her interest (without revealing so much as to threaten
the author’s copyright interests). Snippet view thus adds importantly to the highly
transformative purpose of identifying books of interest to the searcher. With respect
to the first factor test, it favors a finding of fair use (unless the value of its
transformative purpose is overcome by its providing text in a manner that offers a
competing substitute for Plaintiffs’ books, which we discuss under factors three and
four below).
(4) Google’s Commercial Motivation. Plaintiffs also contend that Google’s
commercial motivation weighs in their favor under the first factor. Google’s
commercial motivation distinguishes this case from HathiTrust, as the defendant in
that case was a non-profit entity founded by, and acting as the representative of,
libraries. Although Google has no revenues flowing directly from its operation of the
Google Books functions, Plaintiffs stress that Google is profit-motivated and seeks
to use its dominance of book search to fortify its overall dominance of the Internet
search market, and that thereby Google indirectly reaps profits from the Google
Books functions.
For these arguments Plaintiffs rely primarily on two sources. First is Congress’s
specification in spelling out the first fair use factor in the text of § 107 that
consideration of the “purpose and character of the [secondary] use” should “include
whether such use is of a commercial nature or is for nonprofit educational purposes.”
Second is the Supreme Court’s assertion in dictum in Sony Corporation of America v.
Universal City Studios that “every commercial use of copyrighted material is
presumptively ... unfair.” 464 US 417, 451 (1984). If that were the extent of
precedential authority on the relevance of commercial motivation, Plaintiffs’
arguments would muster impressive support. However, while the commercial
motivation of the secondary use can undoubtedly weigh against a finding of fair use
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in some circumstances, the Supreme Court, our court, and others have eventually
recognized that the Sony dictum was enormously overstated.19
Footnote 19: Campbell, 510 US at 583-84; Cariou v. Prince, 714 F.3d 694, 708 (2d Cir.2013); Castle Rock
Entm’t, Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132, 141-42 (2d Cir.1998); Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146, 1165 (9th Cir.2007); Kelly v. Arriba Soft Corp., 336 F.3d 811, 819 (9th Cir.2003); see also
Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1172 (9th Cir.2012) (noting that Campbell “debunked the
notion that Sony called for a ‘hard evidentiary presumption’ that commercial use is presumptively
unfair.”)

The Sixth Circuit took the Sony dictum at its word in Acuff-Rose Music, Inc. v. Campbell,
concluding that, because the defendant rap music group’s spoof of the plaintiff’s
ballad was done for profit, it could not be fair use. 972 F.2d 1429, 1436-1437 (6th
Cir.1992). The Supreme Court reversed on this very point, observing that “Congress
could not have intended” such a broad presumption against commercial fair uses, as
“nearly all of the illustrative uses listed in the preamble paragraph of § 107 ... are
generally conducted for profit in this country.” Campbell, 510 US at 584 (internal
quotation marks and citations omitted). The Court emphasized Congress’s statement
in the House Report to the effect that the commercial or nonprofit character of a
work is “not conclusive” but merely “a fact to be ‘weighed along with other[s] in fair
use decisions.’” Id. at 585. In explaining the first fair use factor, the Court clarified
that “the more transformative the [secondary] work, the less will be the significance
of other factors, like commercialism, that may weigh against a finding of fair use.” Id.
at 579.
Our court has since repeatedly rejected the contention that commercial motivation
should outweigh a convincing transformative purpose and absence of significant
substitutive competition with the original. See Cariou v. Prince, 714 F.3d 694, 708 (2d
Cir.2013); Castle Rock Entertainment, Inc. v. Carol Publication Group, Inc., 150 F.3d 132,
141-42 (2d Cir.1998).
While we recognize that in some circumstances, a commercial motivation on the part
of the secondary user will weigh against her, especially, as the Supreme Court
suggested, when a persuasive transformative purpose is lacking, Campbell, 510 US at
579, we see no reason in this case why Google’s overall profit motivation should
prevail as a reason for denying fair use over its highly convincing transformative
purpose, together with the absence of significant substitutive competition, as reasons
for granting fair use. Many of the most universally accepted forms of fair use, such as
news reporting and commentary, quotation in historical or analytic books, reviews of
books, and performances, as well as parody, are all normally done commercially for
profit.20
Footnote 20: Just as there is no reason for presuming that a commercial use is not a fair use, which
would defeat the most widely accepted and logically justified areas of fair use, there is likewise no
reason to presume categorically that a nonprofit educational purpose should qualify as a fair use.
Authors who write for educational purposes, and publishers who invest substantial funds to publish
educational materials, would lose the ability to earn revenues if users were permitted to copy the
materials freely merely because such copying was in the service of a nonprofit educational mission.
The publication of educational materials would be substantially curtailed if such publications could be
freely copied for non-profit educational purposes.

B. Factor Two

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The second fair use factor directs consideration of the “nature of the copyrighted
work.” While the “transformative purpose” inquiry discussed above is conventionally
treated as a part of first factor analysis, it inevitably involves the second factor as well.
One cannot assess whether the copying work has an objective that differs from the
original without considering both works, and their respective objectives.
The second factor has rarely played a significant role in the determination of a fair
use dispute. The Supreme Court in Harper & Row made a passing observation in
dictum that, “[t]he law generally recognizes a greater need to disseminate factual
works than works of fiction or fantasy.” 471 US 539, 563 (1985). Courts have
sometimes speculated that this might mean that a finding of fair use is more favored
when the copying is of factual works than when copying is from works of fiction.
However, while the copyright does not protect facts or ideas set forth in a work, it
does protect that author’s manner of expressing those facts and ideas. At least unless
a persuasive fair use justification is involved, authors of factual works, like authors of
fiction, should be entitled to copyright protection of their protected expression. The
mere fact that the original is a factual work therefore should not imply that others
may freely copy it. Those who report the news undoubtedly create factual works. It
cannot seriously be argued that, for that reason, others may freely copy and redisseminate news reports.21
Footnote 21: We think it unlikely that the Supreme Court meant in its concise dictum that secondary
authors are at liberty to copy extensively from the protected expression of the original author merely
because the material is factual. What the Harper & Row dictum may well have meant is that, because in
the case of factual writings, there is often occasion to test the accuracy of, to rely on, or to repeat their
factual propositions, and such testing and reliance may reasonably require quotation (lest a change of
expression unwittingly alter the facts), factual works often present well justified fair uses, even if the
mere fact that the work is factual does not necessarily justify copying of its protected expression.

In considering the second factor in HathiTrust, we concluded that it was “not
dispositive,” 755 F.3d at 98, commenting that courts have hardly ever found that the
second factor in isolation played a large role in explaining a fair use decision. The
same is true here. While each of the three Plaintiffs’ books in this case is factual, we
do not consider that as a boost to Google’s claim of fair use. If one (or all) of the
plaintiff works were fiction, we do not think that would change in any way our
appraisal. Nothing in this case influences us one way or the other with respect to the
second factor considered in isolation. To the extent that the “nature” of the original
copyrighted work necessarily combines with the “purpose and character” of the
secondary work to permit assessment of whether the secondary work uses the
original in a “transformative” manner, as the term is used in Campbell, the second
factor favors fair use not because Plaintiffs’ works are factual, but because the
secondary use transformatively provides valuable information about the original,
rather than replicating protected expression in a manner that provides a meaningful
substitute for the original.
C. Factor Three
The third statutory factor instructs us to consider “the amount and substantiality of
the portion used in relation to the copyrighted work as a whole.” The clear
implication of the third factor is that a finding of fair use is more likely when small
amounts, or less important passages, are copied than when the copying is extensive,

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or encompasses the most important parts of the original. The obvious reason for this
lies in the relationship between the third and the fourth factors. The larger the
amount, or the more important the part, of the original that is copied, the greater the
likelihood that the secondary work might serve as an effectively competing substitute
for the original, and might therefore diminish the original rights holder’s sales and
profits.
(1) Search Function. The Google Books program has made a digital copy of the
entirety of each of Plaintiffs’ books. Notwithstanding the reasonable implication of
Factor Three that fair use is more likely to be favored by the copying of smaller,
rather than larger, portions of the original, courts have rejected any categorical rule
that a copying of the entirety cannot be a fair use. Complete unchanged copying has
repeatedly been found justified as fair use when the copying was reasonably
appropriate to achieve the copier’s transformative purpose and was done in such a
manner that it did not offer a competing substitute for the original.24
Footnote 24: See cases cited supra note 17; see also Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605, 613 (2d Cir.2006) (Copying the entirety of a work is sometimes necessary to make a fair
use of the work).

The Supreme Court said in Campbell that “the extent of permissible copying varies
with the purpose and character of the use” and characterized the relevant questions
as whether “the amount and substantiality of the portion used ... are reasonable in
relation to the purpose of the copying,” Campbell, 510 US at 586-587, noting that the
answer to that question will be affected by “the degree to which the [copying work]
may serve as a market substitute for the original or potentially licensed derivatives,”
id. at 587-588 (finding that, in the case of a parodic song, “how much ... is reasonable
will depend, say, on the extent to which the song’s overriding purpose and character
is to parody the original or, in contrast, the likelihood that the parody may serve as a
market substitute for the original”).
In HathiTrust, our court concluded in its discussion of the third factor that “because
it was reasonably necessary for the [HathiTrust Digital Library] to make use of the
entirety of the works in order to enable the full-text search function, we do not
believe the copying was excessive.” 755 F.3d at 98. As with HathiTrust, not only is
the copying of the totality of the original reasonably appropriate to Google’s
transformative purpose, it is literally necessary to achieve that purpose. If Google
copied less than the totality of the originals, its search function could not advise
searchers reliably whether their searched term appears in a book (or how many
times).
While Google makes an unauthorized digital copy of the entire book, it does not
reveal that digital copy to the public. The copy is made to enable the search
functions to reveal limited, important information about the books. With respect to
the search function, Google satisfies the third factor test, as illuminated by the
Supreme Court in Campbell.
(2) Snippet View. Google’s provision of snippet view makes our third factor inquiry
different from that inquiry in HathiTrust. What matters in such cases is not so much
“the amount and substantiality of the portion used” in making a copy, but rather the
amount and substantiality of what is thereby made accessible to a public for which it

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may serve as a competing substitute. In HathiTrust, notwithstanding the defendant’s
full-text copying, the search function revealed virtually nothing of the text of the
originals to the public. Here, through the snippet view, more is revealed to searchers
than in HathiTrust.
Without doubt, enabling searchers to see portions of the copied texts could have
determinative effect on the fair use analysis. The larger the quantity of the
copyrighted text the searcher can see and the more control the searcher can exercise
over what part of the text she sees, the greater the likelihood that those revelations
could serve her as an effective, free substitute for the purchase of the plaintiff’s book.
We nonetheless conclude that, at least as presently structured by Google, the snippet
view does not reveal matter that offers the marketplace a significantly competing
substitute for the copyrighted work.
Google has constructed the snippet feature in a manner that substantially protects
against its serving as an effectively competing substitute for Plaintiffs’ books. In the
Background section of this opinion, we describe a variety of limitations Google
imposes on the snippet function. These include the small size of the snippets
(normally one eighth of a page), the blacklisting of one snippet per page and of one
page in every ten, the fact that no more than three snippets are shown — and no
more than one per page — for each term searched, and the fact that the same
snippets are shown for a searched term no matter how many times, or from how
many different computers, the term is searched. In addition, Google does not
provide snippet view for types of books, such as dictionaries and cookbooks, for
which viewing a small segment is likely to satisfy the searcher’s need. The result of
these restrictions is, so far as the record demonstrates, that a searcher cannot succeed,
even after long extended effort to multiply what can be revealed, in revealing
through a snippet search what could usefully serve as a competing substitute for the
original.
The blacklisting, which permanently blocks about 22% of a book’s text from snippet
view, is by no means the most important of the obstacles Google has designed.
While it is true that the blacklisting of 22% leaves 78% of a book theoretically
accessible to a searcher, it does not follow that any large part of that 78% is in fact
accessible. The other restrictions built into the program work together to ensure that,
even after protracted effort over a substantial period of time, only small and
randomly scattered portions of a book will be accessible. In an effort to show what
large portions of text searchers can read through persistently augmented snippet
searches, Plaintiffs’ counsel employed researchers over a period of weeks to do
multiple word searches on Plaintiffs’ books. In no case were they able to access as
much as 16% of the text, and the snippets collected were usually not sequential but
scattered randomly throughout the book. Because Google’s snippets are arbitrarily
and uniformly divided by lines of text, and not by complete sentences, paragraphs, or
any measure dictated by content, a searcher would have great difficulty constructing
a search so as to provide any extensive information about the book’s use of that term.
As snippet view never reveals more than one snippet per page in response to
repeated searches for the same term, it is at least difficult, and often impossible, for a
searcher to gain access to more than a single snippet’s worth of an extended,
continuous discussion of the term.

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The fact that Plaintiffs’ searchers managed to reveal nearly 16% of the text of
Plaintiffs’ books overstates the degree to which snippet view can provide a
meaningful substitute. At least as important as the percentage of words of a book
that are revealed is the manner and order in which they are revealed. Even if the
search function revealed 100% of the words of the copyrighted book, this would be
of little substitutive value if the words were revealed in alphabetical order, or any
order other than the order they follow in the original book. It cannot be said that a
revelation is “substantial” in the sense intended by the statute’s third factor if the
revelation is in a form that communicates little of the sense of the original. The
fragmentary and scattered nature of the snippets revealed, even after a determined,
assiduous, time-consuming search, results in a revelation that is not “substantial,”
even if it includes an aggregate 16% of the text of the book. If snippet view could be
used to reveal a coherent block amounting to 16% of a book, that would raise a very
different question beyond the scope of our inquiry.
D. Factor Four
The fourth fair use factor, “the effect of the [copying] use upon the potential market
for or value of the copyrighted work,” focuses on whether the copy brings to the
marketplace a competing substitute for the original, or its derivative, so as to deprive
the rights holder of significant revenues because of the likelihood that potential
purchasers may opt to acquire the copy in preference to the original. Because
copyright is a commercial doctrine whose objective is to stimulate creativity among
potential authors by enabling them to earn money from their creations, the fourth
factor is of great importance in making a fair use assessment. See Harper & Row, 471
US at 566 (describing the fourth factor as “undoubtedly the single most important
element of fair use”).
Campbell stressed the close linkage between the first and fourth factors, in that the
more the copying is done to achieve a purpose that differs from the purpose of the
original, the less likely it is that the copy will serve as a satisfactory substitute for the
original. 510 US at 591. Consistent with that observation, the HathiTrust court
found that the fourth factor favored the defendant and supported a finding of fair
use because the ability to search the text of the book to determine whether it
includes selected words “does not serve as a substitute for the books that are being
searched.” 755 F.3d at 100.
However, Campbell’s observation as to the likelihood of a secondary use serving as an
effective substitute goes only so far. Even if the purpose of the copying is for a
valuably transformative purpose, such copying might nonetheless harm the value of
the copyrighted original if done in a manner that results in widespread revelation of
sufficiently significant portions of the original as to make available a significantly
competing substitute. The question for us is whether snippet view, notwithstanding
its transformative purpose, does that. We conclude that, at least as snippet view is
presently constructed, it does not.
Especially in view of the fact that the normal purchase price of a book is relatively
low in relation to the cost of manpower needed to secure an arbitrary assortment of
randomly scattered snippets, we conclude that the snippet function does not give
searchers access to effectively competing substitutes. Snippet view, at best and after a

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large commitment of manpower, produces discontinuous, tiny fragments, amounting
in the aggregate to no more than 16% of a book. This does not threaten the rights
holders with any significant harm to the value of their copyrights or diminish their
harvest of copyright revenue.
We recognize that the snippet function can cause some loss of sales. There are surely
instances in which a searcher’s need for access to a text will be satisfied by the
snippet view, resulting in either the loss of a sale to that searcher, or reduction of
demand on libraries for that title, which might have resulted in libraries purchasing
additional copies. But the possibility, or even the probability or certainty, of some
loss of sales does not suffice to make the copy an effectively competing substitute
that would tilt the weighty fourth factor in favor of the rights holder in the original.
There must be a meaningful or significant effect “upon the potential market for or
value of the copyrighted work.” 17 U.S.C. § 107(4).
Furthermore, the type of loss of sale envisioned above will generally occur in relation
to interests that are not protected by the copyright. A snippet’s capacity to satisfy a
searcher’s need for access to a copyrighted book will at times be because the snippet
conveys a historical fact that the searcher needs to ascertain. For example, a student
writing a paper on Franklin D. Roosevelt might need to learn the year Roosevelt was
stricken with polio. By entering “Roosevelt polio” in a Google Books search, the
student would be taken to (among numerous sites) a snippet from page 31 of
Richard Thayer Goldberg’s The Making of Franklin D. Roosevelt (1981), telling that
the polio attack occurred in 1921. This would satisfy the searcher’s need for the book,
eliminating any need to purchase it or acquire it from a library. But what the searcher
derived from the snippet was a historical fact. Author Goldberg’s copyright does not
extend to the facts communicated by his book. It protects only the author’s manner
of expression. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 974 (2d Cir.1980)
(“A grant of copyright in a published work secures for its author a limited monopoly
over the expression it contains.”) (emphasis added). Google would be entitled, without
infringement of Goldberg’s copyright, to answer the student’s query about the year
Roosevelt was afflicted, taking the information from Goldberg’s book. The fact that,
in the case of the student’s snippet search, the information came embedded in three
lines of Goldberg’s writing, which were superfluous to the searcher’s needs, would
not change the taking of an unprotected fact into a copyright infringement.
Even if the snippet reveals some authorial expression, because of the brevity of a
single snippet and the cumbersome, disjointed, and incomplete nature of the
aggregation of snippets made available through snippet view, we think it would be a
rare case in which the searcher’s interest in the protected aspect of the author’s work
would be satisfied by what is available from snippet view, and rarer still — because
of the cumbersome, disjointed, and incomplete nature of the aggregation of snippets
made available through snippet view — that snippet view could provide a significant
substitute for the purchase of the author’s book.
Accordingly, considering the four fair use factors in light of the goals of copyright,
we conclude that Google’s making of a complete digital copy of Plaintiffs’ works for
the purpose of providing the public with its search and snippet view functions (at
least as snippet view is presently designed) is a fair use and does not infringe
Plaintiffs’ copyrights in their books.
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III. Derivative Rights in Search and Snippet View
Plaintiffs next contend that, under Section 106(2), they have a derivative right in the
application of search and snippet view functions to their works, and that Google has
usurped their exclusive market for such derivatives.
There is no merit to this argument. As explained above, Google does not infringe
Plaintiffs’ copyright in their works by making digital copies of them, where the
copies are used to enable the public to get information about the works, such as
whether, and how often they use specified words or terms (together with peripheral
snippets of text, sufficient to show the context in which the word is used but too
small to provide a meaningful substitute for the work’s copyrighted expression). The
copyright resulting from the Plaintiffs’ authorship of their works does not include an
exclusive right to furnish the kind of information about the works that Google’s
programs provide to the public. For substantially the same reasons, the copyright
that protects Plaintiffs’ works does not include an exclusive derivative right to supply
such information through query of a digitized copy.
The extension of copyright protection beyond the copying of the work in its original
form to cover also the copying of a derivative reflects a clear and logical policy
choice. An author’s right to control and profit from the dissemination of her work
ought not to be evaded by conversion of the work into a different form. The author
of a book written in English should be entitled to control also the dissemination of
the same book translated into other languages, or a conversion of the book into a
film. The copyright of a composer of a symphony or song should cover also
conversions of the piece into scores for different instrumentation, as well as into
recordings of performances.
This policy is reflected in the statutory definition, which explains the scope of the
“derivative” largely by examples — including “a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound recording, art
reproduction, abridgement, [or] condensation” — before adding, “or any other form
in which a work may be recast, transformed, or adapted.” 17 U.S.C. § 101. As noted
above, this definition, while imprecise, strongly implies that derivative works over
which 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,
converted into an altered form, such as the conversion of a novel into a film, the
translation of a writing into a different language, the reproduction of a painting in the
form of a poster or post card, recreation of a cartoon character in the form of a
three-dimensional plush toy, adaptation of a musical composition for different
instruments, or other similar conversions. If Plaintiffs’ claim were based on Google’s
converting their books into a digitized form and making that digitized version
accessible to the public, their claim would be strong. But as noted above, Google
safeguards from public view the digitized copies it makes and allows access only to
the extent of permitting the public to search for the very limited information
accessible through the search function and snippet view. The program does not
allow access in any substantial way to a book’s expressive content. Nothing in the
statutory definition of a derivative work, or of the logic that underlies it, suggests that
the author of an original work enjoys an exclusive derivative right to supply
information about that work of the sort communicated by Google’s search functions.
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Plaintiffs seek to support their derivative claim by a showing that there exist, or
would have existed, paid licensing markets in digitized works, such as those provided
by the Copyright Clearance Center or the previous, revenue-generating version of
the Google Partners Program. Plaintiffs also point to the proposed settlement
agreement rejected by the district court in this case, according to which Google
would have paid authors for its use of digitized copies of their works. The existence
or potential existence of such paid licensing schemes does not support Plaintiffs’
derivative argument. The access to the expressive content of the original that is or
would have been provided by the paid licensing arrangements Plaintiffs cite is far
more extensive than that which Google’s search and snippet view functions provide.
Those arrangements allow or would have allowed public users to read substantial
portions of the book. Such access would most likely constitute copyright
infringement if not licensed by the rights holders. Accordingly, such arrangements
have no bearing on Google’s present programs, which, in a non-infringing manner,
allow the public to obtain limited data about the contents of the book, without
allowing any substantial reading of its text.
Plaintiffs also seek to support their derivative claim by a showing that there is a
current unpaid market in licenses for partial viewing of digitized books, such as the
licenses that publishers currently grant to the Google Partners program and
Amazon’s Search Inside the Book program to display substantial portions of their
books. Plaintiffs rely on Infinity Broadcast Corporation v. Kirkwood, 150 F.3d 104 (2nd
Cir.1998) and United States v. American Society of Composers, Authors and Publishers
(ASCAP), 599 F.Supp.2d 415 (S.D.N.Y.2009) for the proposition that “a secondary
use that replaces a comparable service licensed by the copyright holder, even without
charge, may cause market harm.” In the cases cited, however, the purpose of the
challenged secondary uses was not the dissemination of information about the
original works, which falls outside the protection of the copyright, but was rather the
re-transmission, or re-dissemination, of their expressive content. Those precedents
do not support the proposition Plaintiffs assert — namely that the availability of
licenses for providing unprotected information about a copyrighted work, or
supplying unprotected services related to it, gives the copyright holder the right to
exclude others from providing such information or services.
While the telephone ringtones at issue in the ASCAP case Plaintiffs cite are
superficially comparable to Google’s snippets in that both consist of brief segments
of the copyrighted work, in a more significant way they are fundamentally different.
While it is true that Google’s snippets display a fragment of expressive content, the
fragments it displays result from the appearance of the term selected by the searcher
in an otherwise arbitrarily selected snippet of text. Unlike the reading experience that
the Google Partners program or the Amazon Search Inside the Book program
provides, the snippet function does not provide searchers with any meaningful
experience of the expressive content of the book. Its purpose is not to communicate
copyrighted expression, but rather, by revealing to the searcher a tiny segment
surrounding the searched term, to give some minimal contextual information to help
the searcher learn whether the book’s use of that term will be of interest to her. The
segments taken from copyrighted music as ringtones, in contrast, are selected
precisely because they play the most famous, beloved passages of the particular piece
— the expressive content that members of the public want to hear when their phone
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rings. The value of the ringtone to the purchaser is not that it provides information
but that it provides a mini-performance of the most appealing segment of the
author’s expressive content. There is no reason to think the courts in the cited cases
would have come to the same conclusion if the service being provided by the
secondary user had been simply to identify to a subscriber in what key a selected
composition was written, the year it was written, or the name of the composer.
These cases, and the existence of unpaid licensing schemes for substantial viewing of
digitized works, do not support Plaintiffs’ derivative works argument.
IV. Plaintiffs’ Exposure to Risks of Hacking of Google’s Files
Plaintiffs argue that Google’s storage of its digitized copies of Plaintiffs’ books
exposes them to the risk that hackers might gain access and make the books widely
available, thus destroying the value of their copyrights. Unlike the Plaintiffs’
argument just considered based on a supposed derivative right to supply information
about their books, this claim has a reasonable theoretical basis. If, in the course of
making an arguable fair use of a copyrighted work, a secondary user unreasonably
exposed the rights holder to destruction of the value of the copyright resulting from
the public’s opportunity to employ the secondary use as a substitute for purchase of
the original (even though this was not the intent of the secondary user), this might
well furnish a substantial rebuttal to the secondary user’s claim of fair use. For this
reason, the Arriba Soft and Perfect 10 courts, in upholding the secondary user’s
claim of fair use, observed that thumbnail images, which transformatively provided
an Internet pathway to the original images, were of sufficiently low resolution that
they were not usable as effective substitutes for the originals. Arriba Soft, 336 F.3d
811 at 819; Perfect 10, 508 F.3d at 1165.
While Plaintiffs’ claim is theoretically sound, it is not supported by the evidence. In
HathiTrust, we faced substantially the same exposure-to-piracy argument. The record
in HathiTrust, however, “documented the extensive security measures [the secondary
user] had undertaken to safeguard against the risk of a data breach,” evidence which
was unrebutted. 755 F.3d at 100. The HathiTrust court thus found “no basis ... on
which to conclude that a security breach is likely to occur, much less one that would
result in the public release of the specific copyrighted works belonging to any of the
plaintiffs in this case.” Id. at 100-101 (citing Clapper v. Amnesty Int’l USA, 133 S.Ct.
1138, 1143 (2013) (finding that risk of future harm must be “certainly impending,”
rather than merely “conjectural” or “hypothetical,” to constitute a cognizable injuryin-fact), and Sony Corp., 464 US at 453-454 (concluding that time-shifting using a
Betamax is fair use because the copyright owners’ “prediction that live television or
movie audiences will decrease” was merely “speculative”)).
Google has documented that Google Books’ digital scans are stored on computers
walled off from public Internet access and protected by the same impressive security
measures used by Google to guard its own confidential information. As Google
notes, Plaintiffs’ own security expert praised these security systems, remarking that
“Google is fortunate to have ample resources and top-notch technical talents” that
enable it to protect its data. Nor have Plaintiffs identified any thefts from Google
Books (or from the Google Library Project). Google has made a sufficient showing
of protection of its digitized copies of Plaintiffs’ works to carry its burden on this

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aspect of its claim of fair use and thus to shift to Plaintiffs the burden of rebutting
Google’s showing. Plaintiffs’ effort to do so falls far short.
V. Google’s Distribution of Digital Copies to Participant Libraries
Finally, Plaintiffs contend that Google’s distribution to a participating library of a
digital copy of Plaintiffs’ books is not a fair use and exposes the Plaintiffs to risks of
loss if the library uses its digital copy in an infringing manner, or if the library fails to
maintain security over its digital copy with the consequence that the book may
become freely available as a result of the incursions of hackers. The claim fails.
Although Plaintiffs describe the arrangement between Google and the libraries in
more nefarious terms, those arrangements are essentially that each participant library
has contracted with Google that Google will create for it a digital copy of each book
the library submits to Google, so as to permit the library to use its digital copy in a
non-infringing fair use manner. The libraries propose to use their digital copies to
enable the very kinds of searches that we here hold to be fair uses in connection with
Google’s offer of such searches to the Internet public, and which we held in
HathiTrust to be fair uses when offered by HathiTrust to its users. The contract
between Google and each of the participating libraries commits the library to use its
digital copy only in a manner consistent with the copyright law, and to take
precautions to prevent dissemination of their digital copies to the public at large.
In these circumstances, Google’s creation for each library of a digital copy of that
library’s already owned book in order to permit that library to make fair use through
provision of digital searches is not an infringement. If the library had created its own
digital copy to enable its provision of fair use digital searches, the making of the
digital copy would not have been infringement. Nor does it become an infringement
because, instead of making its own digital copy, the library contracted with Google
that Google would use its expertise and resources to make the digital conversion for
the library’s benefit.
We recognize the possibility that libraries may use the digital copies Google created
for them in an infringing manner. If they do, such libraries may be liable to Plaintiffs
for their infringement. It is also possible that, in such a suit, Plaintiffs might adduce
evidence that Google was aware of or encouraged such infringing practices, in which
case Google could be liable as a contributory infringer. But on the present record,
the possibility that libraries may misuse their digital copies is sheer speculation. Nor
is there any basis on the present record to hold Google liable as a contributory
infringer based on the mere speculative possibility that libraries, in addition to, or
instead of, using their digital copies of Plaintiffs’ books in a non-infringing manner,
may use them in an infringing manner.
We recognize the additional possibility that the libraries might incur liability by
negligent mishandling of, and failure to protect, their digital copies, leaving them
unreasonably vulnerable to hacking. That also, however, is nothing more than a
speculative possibility. There is no basis in the record to impose liability on Google
for having lawfully made a digital copy for a participating library so as to enable that
library to make non-infringing use of its copy, merely because of the speculative
possibility that the library may fail to guard sufficiently against the dangers of hacking,
as it is contractually obligated to do. Plaintiffs have failed to establish any basis for
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holding Google liable for its creation of a digital copy of a book submitted to it by a
participating library so as to enable that library to make fair use of it.
In sum, we conclude that: (1) Google’s unauthorized digitizing of copyrightprotected works, creation of a search functionality, and display of snippets from
those works are non-infringing fair uses. The purpose of the copying is highly
transformative, the public display of text is limited, and the revelations do not
provide a significant market substitute for the protected aspects of the originals.
Google’s commercial nature and profit motivation do not justify denial of fair use.
(2) Google’s provision of digitized copies to the libraries that supplied the books, on
the understanding that the libraries will use the copies in a manner consistent with
the copyright law, also does not constitute infringement. Nor, on this record, is
Google a contributory infringer.
Notes and questions
(1) In both Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014) and Authors Guild v.
Google, Inc., 804 F.3d 202 (2d Cir. 2015), the Second Circuit held that library digitization for
search related purposes was transformative and ultimately fair use. How does the defendants’
use in these cases compare to Campbell v. Acuff-Rose?

The relationship between transformative use and non-expressive use
Matthew Sag, The New Legal Landscape for Text Mining and Machine Learning, 66
Journal of the Copyright Society of the U.S.A. 291–367 (2019)
Extracted and adapted with permission

Copyright law is fundamentally concerned with the communication of original
expression to the public and not with the mechanical act of copying per se. To see
that this is so, one need only reflect on the fact that the exclusive rights of the
copyright owner are defined in terms of public communication of original expression.
It follows as a corollary that limiting them to such communication does not
undermine 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
ultimately (or substantially) convey the original expression encoded within the work
should not infringe copyright.
Another way of saying the same thing to observe that such uses pose no threat of
expressive substitution: information about a work may be useful, it may be valuable, it
may even effect the demand for that work, but it does not in any way fulfill the
public demand for the author’s original expression.
Reframing the argument in favor of non-expressive use in terms of expressive
substitution provides a bridge to the concept of transformative use. Focusing on
expressive substitution makes sense of both transformative use in general and nonexpressive use specifically. Classic transformative uses are generally fair uses because,
in spite of communicating some of the author’s original expression, they do not
substitute for it. Parody, commentary, criticism, illustration and explanation may

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include large portions of the author’s original expression, but these expressive
transformative uses do not usually pose any risk of expressive substitution. Nonexpressive use is also justified in terms of expressive substitution, but even more
emphatically so. By definition a non-expressive use does not usurp the copyright
owner’s communication of her original expression to the public because the
expression is not communicated. The key difference between the two categories is
that non-expressive uses pose no threat of expressive substitution whatsoever,
whereas expressive-transformative uses don’t generally threaten expressive
substitution, but they might in particular circumstances. As a result, expressivetransformative use cases will continue to require courts to pay careful attention to
the third and fourth fair use factors—the amount used and the market effect of that
use. In contrast, because non-expressive uses are by definition acts of copying that
do not communicate the author’s original expression to the public, the amount
copied will almost never be instructive and there will be no cognizable market effect.
Understanding transformative use and non-expressive use in terms of expressive
substitution should also help courts to evaluate the significance of minor expressive
uses embedded within a broader text mining or machine learning project. Most
researchers using text mining tools will need to compare their metadata to selections
of the actual text from time to time to evaluate the reliability of an algorithm or some
other aspect of their methodology. Whether we label these uses as intermediate or
not is largely beside the point. The important point is that, such uses are orthogonal
to the work’s ordinary expressive purpose and that they do not pose any threat of
expressive substitution. Limited expressive uses for purposes such as presenting
search results in context, or verifying the accuracy of results fit easily within the
traditional transformative use paradigm. Such uses are likely to be fair but need to be
evaluated to confirm that they are unlikely to pose any risk of expressive substitution.
The Second Circuit’s discussion of snippets in the Google Books case is an excellent
example of this approach.
Now we come to issues of terminology. First, the relative merits of the terms “nonexpressive use” and “non-consumptive use.” The ill-fated settlement agreement
between Google and the Authors Guild defined “Non-Consumptive Research” as
“research in which computational analysis is performed on one or more Books, but
not research in which a researcher reads or displays substantial portions of a Book to
understand the intellectual content presented within the Book.”93 Since that time,
many in the library community have continued to use the term non-consumptive use
in 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
substantially different meaning.94 Second, the term non-consumptive research is too
closely tied to the controversial settlement agreement. The term makes sense as used
in the settlement agreement between Google and the Authors Guild, but outside that
context of the definition in the agreement is too narrow. Third, the term non93 Amended Settlement Agreement § 1.93., Authors Guild et al. v. Google Inc., 770 F. Supp. 2d 666 (S.D.N.Y.

2011) (No. 05 Civ. 8136).
94 See

e.g., § 5:25. Waters subject to appropriation—Non-consumptive use of consumptive rights, L. OF
WATER RIGHTS AND RESOURCES § 5:25.

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expressive use directs the reader’s attention to the fundamental copyright distinction
between ideas and their expression and between facts and their expression. In
contrast, some people may well see the digitization of works as a form of
consumption in the sense that the underlying works are consumed as inputs to the
text mining process.
The second issue of terminology to address is the relationship between
“transformative use” and “non-expressive use.” In Copyright and Copy-Reliant
Technology (2009) I suggested that it might be better to recognize the transformative
use and non-expressive use as distinct categories emanating from a deeper copyright
principle relating to expressive substitution. However, at the end of the day, whether
one uses the term non-consumptive use over non-expressive use, and whether one
regards non-expressive use as just one more manifestation of transformative use as
opposed to a separate category should not matter, except to the extent that clear
terminology facilitates clear thinking. Given the influence of Campbell v. Acuff-Rose,
courts will probably continue to equate non-expressive use with transformative use, a
fact that makes it all the more important to understand how the two concepts are
linked to the deeper animating principle of expressive substitution.

Text data mining in the European Union
In April 2019, the European Union adopted the Digital Single Market Directive (“DSM
Directive”) featuring two mandatory exceptions for text and data mining along with a raft of
other measures relating to online activity and platform regulation.
Copyright in the Digital Single Market Directive of 2019
Article 3: Text and data mining for the purposes of scientific research
1. Member States shall provide for an exception to the rights provided for in Article
5(a) and Article 7(1) of Directive 96/9/EC [the Database Directive of 1996], Article
2 of Directive 2001/29/EC [the reproduction right of the Copyright Directive in
the Information Society Directive of 2001], and Article 15(1) of this Directive [the
press publications right] for reproductions and extractions made by research
organisations and cultural heritage institutions in order to carry out, for the purposes
of scientific research, text and data mining of works or other subject matter to
which they have lawful access.
2. Copies of works or other subject matter made in compliance with paragraph 1
shall be stored with an appropriate level of security and may be retained for the
purposes of scientific research, including for the verification of research results.
3. Rightholders shall be allowed to apply measures to ensure the security and
integrity of the networks and databases where the works or other subject matter are
hosted. Such measures shall not go beyond what is necessary to achieve that
objective.
4. Member States shall encourage rightholders, research organisations and cultural
heritage institutions to define commonly agreed best practices concerning the
application of the obligation and of the measures referred to in paragraphs 2 and 3
respectively.

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Article 4: Exception or limitation for text and data mining
1. Member States shall provide for an exception or limitation to the rights provided
for in Article 5(a) and Article 7(1) of Directive 96/9/EC [the Database Directive of
1996], Article 2 of Directive 2001/29/EC [the reproduction right of the Copyright
in the Information Society Directive of 2001], Article 4(1)(a) and (b) of Directive
2009/24/EC [the Computer Programs Directive] and Article 15(1) of this Directive
[the press publications right] for reproductions and extractions of lawfully accessible
works and other subject matter for the purposes of text and data mining.
2. Reproductions and extractions made pursuant to paragraph 1 may be retained for
as long as is necessary for the purposes of text and data mining.
3. The exception or limitation provided for in paragraph 1 shall apply on condition
that the use of works and other subject matter referred to in that paragraph has not
been expressly reserved by their rightholders in an appropriate manner, such as
machine readable means in the case of content made publicly available online.
4. This Article shall not affect the application of Article 3 of this Directive.
Article 2: Definitions
(1) ‘research organisation’ means a university, including its libraries, a research
institute or any other entity, the primary goal of which is to conduct scientific
research or to carry out educational activities involving also the conduct of scientific
research:
(a) on a not-for-profit basis or by reinvesting all the profits in its scientific
research; or
(b) pursuant to a public interest mission recognised by a Member State;
in such a way that the access to the results generated by such scientific research
cannot be enjoyed on a preferential basis by an undertaking that exercises a decisive
influence upon such organisation;
(2) ‘text and data mining’ means any automated analytical technique aimed at
analysing text and data in digital form in order to generate information which
includes but is not limited to patterns, trends and correlations;
(3) ‘cultural heritage institution’ means a publicly accessible library or museum, an
archive or a film or audio heritage institution;
Article 7 Common provisions
1. Any contractual provision contrary to the exceptions provided for in Articles 3, 5
and 6 shall be unenforceable.
2. Article 5(5) of Directive 2001/29/EC [The Copyright in the Information Society
Directive] shall apply to the exceptions and limitations provided for under this Title.
The first, third and fifth subparagraphs of Article 6(4) of Directive 2001/29/EC
shall apply to Articles 3 to 6 of this Directive.

Article 3 of the DSM Directive requires all members of the European Union to implement a
copyright exception for TDM in the not-for-profit research sector. Specifically, members
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must allow research organizations and cultural heritage institutions to make reproductions
and extractions of copyrighted works “in order to carry out, for the purposes of scientific
research, text and data mining …” The exemption is premised on the user’s lawful access to
the works being mined. The Article 3 exemption is intended to be robust. Thanks to Article
7(1) of the DSM Directive, the Article 3 exemption is immune from contractual override.
Furthermore, Article 3(3) provides that rightholders may adopt measures to secure their
networks and databases, but that “such measures shall not go beyond what is necessary to
achieve that objective.” It is hard to imagine any theory of the fair use doctrine that would
impose a similar non-obstruction requirement on copyright owners in the United States.
Article 4 of the DSM Directive contains a second mandatory exemption that is more
inclusive, but less powerful. The Article 4 exemption is open to all would-be data miners
(commercial and non-commercial alike), but it is focused more narrowly on reproductions
and extractions for the purpose of “text and data mining,” i.e., it lacks the broader “scientific
research” purpose of Article 3. Consistent with Article 3, the Article 4 exemption is
premised on lawful access to the works in question. Unlike Article 3, the Article 4 exemption
is not protected from contractual override or technological roadblocks. Moreover, the
Article 4 exemption is subject to an express reservation by the rightsholders. This means that
although the right to apply TDM methods to a text will soon be the new default throughout
the EU, rightsholders will be able to opt out of that default by simply reserving their rights
“in an appropriate manner, such as machine readable means in the case of content made
publicly available online.” We should expect to see a lot of boilerplate no-text mining notices
on public facing websites, e-books, and broadcasts in the very near future.
Another significant difference between Article 3 and Article 4 relates to retention of works
copied as part of a text mining process. Under the Article 3 exemption, the covered
organization must adopt an “appropriate level of security” and may be retain the works “for
the purposes of scientific research, including for the verification of research results.”
Whereas, under Article 4 the works may be retained only “for as long as is necessary for the
purposes of text and data mining.” This stricter retention requirement could prove to be
significantly more restrictive for commercial text miners than what is required under United
States law.
Notes and questions
(1) How do the exemptions in Article 3 and 4 of the DSM Directive differ from rulings in
HathiTrust and Google Books?
(2) Sci-Hub provides free access to millions of research papers and books, without regard to
and essentially in defiance of copyright law. Sci-Hub was founded by Alexandra Elbakyan in
2011 in Kazakhstan. For some, Sci-Hub is a solution to the high cost of research papers
secured behind publisher paywalls, for others it is nothing more than theft. Would a
researcher 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
once Article 3 and 4 of the DSM Directive have been implemented by member states?
(3) Article 3 and Article 4 of the DSM Directive require member states to create text data
mining exceptions with respect to some specific aspects of European Union copyright law
but not others. Keeping track of all the European Union directives can be hard work.
Without going into too much detail, the references to various directives in Article 3 and
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Article 4 of the DSM Directive target the reproduction right but do not address rights in
relation to adaptation, communication to the public, or distribution.95 Do these omissions matter?

95 The adaptation right is not harmonized by the Infosoc Directive, although there is a right with respect to

“translation, adaptation, arrangement” for databases in Article 5(b) of the Database Directive. The right of
communication to the public and the distribution rights are located in Article 3 and Article 4 of the Infosoc
Directive, respectively.

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11. COPYRIGHT SUBJECT MATTER AND THE BOUNDARIES OF THE WORK

Locating the threshold of copyrightability
We begin this chapter with a review of some important ground rules about the minimum
requirements for copyrightability: subject matter, originality (already discussed in a previous
chapter) and fixation.

Categories of work recognized by the Copyright Act.
It is important to understand the way the 1976 Act categorizes copyrightable subject matter.
17 U.S. Code § 102 - Subject matter of copyright: In general
(a) Copyright protection subsists, in accordance with this title, in original works of
authorship fixed in any tangible medium of expression, now known or later
developed, from which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device. Works of
authorship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.

Section 102(a) lists eight categories of copyrightable subject matter. This list is not definitive;
subject matter falling outside of any of the eight categories could potentially be copyrightable
so long as it is “an original work of authorship fixed in a tangible medium of expression.”
This seems clear from the structure of the section and from the legislative history. 96
However, the Copyright Office takes the view that neither it, nor the federal courts, has the
authority to establish new categories of copyright subject matter.97 Nonetheless, there is
sufficient elasticity within categories such as “literary works” to allow notions of
copyrightability to expand and adjust over time.

96 “The use of the word “include,” as defined in section 101, makes clear that the listing is “illustrative and not

limitative,” and that the seven categories do not necessarily exhaust the scope of “original works of authorship”
that the bill is intended to protect.” House Report, at 53.
97 “Congress did not delegate authority to the courts to create new categories of authorship. Congress reserved

this option to itself. If the federal courts do not have authority to establish new categories of subject matter, it
necessarily follows that the Copyright Office also has no such authority…” 77 Fed. Reg. 37,605 (2012)

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Originality
Under Section 102(a), even works that fit within the eight categories of potentially
copyrightable subject matter must also meet two additional requirements: they must be
“original works of authorship” and they must be “fixed in any tangible medium of expression.”
§ 102(a) (emphasis added). In Feist Publications, Inc. v. Rural Telephone Service, Co., 499 U.S. 340,
346 (1991), the Supreme Court held that, “originality is a constitutional requirement.” And it
explained (at 345):
Original, as the term is used in copyright, means only that the work was independently
created by the author (as opposed to copied from other works), and that it possesses
at least some minimal degree of creativity. (emphasis added)

In theory, every copyrightable work embodies “at least some minimal degree of creativity,” but
courts rarely have cause to define what that quantum of creativity is, although they often
observe its absence is particular contexts. Usually we don’t need to know much more than
that fact that telephone books lack creativity entirely and novels possess it in abundance.
However, the originality requirement has some important implications for the minimum size
of copyrightable works and the copyright office has a long-established practice of refusing
registration to words and short phrases on this basis.
37 C.F.R. § 202.1(a) Material not subject to copyright.
The following are examples of works not subject to copyright and applications for
registration of such works cannot be entertained:
(a) Words and short phrases such as names, titles, and slogans; familiar symbols or
designs; mere variations of typographic ornamentation, lettering or coloring; mere
listing of ingredients or contents; …

The requirement of originality is a good enough reason to preclude copyright for most
words and short phrases, but perhaps not all. Words and short phrases that are novel (in the
patent law sense of being entirely new) arguably are original in that they owe their existence
to the author, but they should probably be denied independent copyright status by virtue of
the merger doctrine and the idea-expression distinction, rather than a lack of creativity as
such.98 For example, the word “Quidditch” was new and creative when JK Rowling invented it.
She apparently selected it from five notebook pages of words beginning with “Q”. The word
Quidditch could not be copyrighted without depriving the public of only plausible way of
referring to the popular contact sport played on flying broomsticks in the Harry Potter
fantasy series. Quidditch is uncopyrightable because the word is merged with the much more
complicate set of ideas the word represents.
On the other hand, “supercalifragilisticexpialidocious” in Mary Poppins is also creative, and more
importantly, because it is nonsense it is hard to see that merger and idea-expression
distinction would bar it from copyright protection. But even if it could have been registered

98 See e.g. Perma Greetings, Inc. v. Russ Berrie & Co., 598 F. Supp 445, 448-49 (E.D. Mo. 1984) (finding that

phrases such as “hang in there,” “message,” and “along the way take time to smell the flowers” are unprotected
and considering ideas of images and simple design characteristics to be uncopyrightable). See also, Matthews v.
Freedman, 157 F.3d 25, 26 (1stCir.1998).

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as a one-word literary work, the fact that it wasn’t should mean something for copyright
analysis.99
Notes and questions
(1) Is the warning on the Starbucks cup copyrightable? Are other aspects of the cup’s design
copyrightable?

Fixation
The Copyright Clause gives Congress the power to “promote the Progress of Science and
the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right
to their respective Writings and Discoveries.” The Supreme Court has given the word
“writings” a broad interpretation—see e.g. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53
(1884)(photographs copyrightable as writings)—but always subject to the limitation of a
fixed material form.
The fixation requirement for copyright protection is both Constitutional and statutory.
Congress has enacted anti-bootlegging laws which prohibit the unauthorized recording of
live performances. The right to prevent bootlegging may look like a copyright right, but it
isn’t because it protects unfixed performances. The Constitutional solution was to pass the
anti-bootlegging laws under the authority of the commerce clause to circumvent the fixation
requirement.100 As noted above, Section 102(a) provides that for something to be eligible for
copyright protection it must be an original work of authorship and it must be “fixed” in some
“tangible medium of expression”.
17 U.S. Code § 102(a)
Copyright protection subsists, in accordance with this title, in original works of
authorship fixed in any tangible medium of expression, now known or later developed,
99 Life Music, Inc. v. Wonderland Music Co. 241 F. Supp. 653 (S.D.N.Y.1965).
100 See 17 U.S.C. § 1101 (prohibiting the unauthorized fixation and trafficking in sound recordings and music

videos), constitutionality upheld in Kiss Catalog, Ltd. v. Passport Int’l Prods. 350 F. Supp. 2d 823 (C.D. Cal. 2004).
See also the criminal anti-bootlegging provision in 18 U.S.C. § 2319A, constitutionality upheld in United States v.
Moghadam 175 F.3d 1269 (11th Cir. 1999), United States v. Martignon 492 F.3d 140 (2d Cir. 2007).

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from which they can be perceived, reproduced, or otherwise communicated, either
directly or with the aid of a machine or device.
17 U.S. Code § 101
A work is “fixed” in a tangible medium of expression when its embodiment in a
copy or phonorecord, by or under the authority of the author, is sufficiently
permanent or stable to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory duration. A work consisting of
sounds, images, or both, that are being transmitted, is “fixed” for purposes of this
title if a fixation of the work is being made simultaneously with its transmission.
“Copies” are material objects, other than phonorecords, in which a work is fixed by
any method now known or later developed, and from which the work can be
perceived, reproduced, or otherwise communicated, either directly or with the aid of
a machine or device. The term “copies” includes the material object, other than a
phonorecord, in which the work is first fixed.
“Phonorecords” are material objects in which sounds, other than those
accompanying a motion picture or other audiovisual work, are fixed by any method
now known or later developed, and from which the sounds can be perceived,
reproduced, or otherwise communicated, either directly or with the aid of a machine
or device. The term “phonorecords” includes the material object in which the
sounds are first fixed.

The definition of when a work is “fixed in a tangible medium of expression” in Section 101
refers specifically to reduction to material form in a “copy” or a “phonorecord.” The terms
“copies” and “phonorecords” are also defined in Section 101. For most purposes we can
think of phonorecords as a subset of copies, although technically each term is defined in
exclusion to the other. A “copy” in this broader sense is the physical embodiment of the
work and it includes the first or original copy. The term is meant to be technologically
neutral, so it does not matter if the work is fixed in computer memory or papyrus, the only
limitation is that one must be able to “perceive,” “reproduce”, or “otherwise communicate”
the work from the copy. There is no requirement that a copy is directly human readable
(obviously anything digital is not), so long as it can be “perceived, reproduced, or otherwise
communicated … with the aid of a machine or device.”
Notice that to be “fixed in a tangible medium of expression” requires a bit more than
identifying a copy/phonorecord, the work must be fixed “by or under the authority of the
author” and it must be “sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more than transitory duration.” The
permanence requirement has some interesting implications when it comes to infringement
and the cases on that issue are discussed elsewhere in these materials.

Boundary problems with copyrighted works
At the heart of copyright law is a set of exclusive rights in relation to copyrighted works,
such as the right to reproduce the work, the right to make a derivative work based upon the
copyrighted work, and the right to publicly perform the work. Justifiably, those of us who
think seriously about copyright tend to focus our attention almost exclusively on
understanding the scope of these rights, their application to new circumstances, and the role
of limiting doctrines and defenses. However, surprisingly little attention has been given to the
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surprising and persistent ambiguity as to what a copyright work actually is and how to determine the
boundaries of particular works.
Even once we settle questions about subject matter eligibility in the abstract, such as whether
a garden, a DNA sequence, a dance routine, a character, or an acting performance could ever
be treated as a copyrighted work, we still need to address some fundamental conceptual
questions about where the boundaries of particular copyrighted works should be drawn.
We need to be able to say with precision in particular cases what the work is, and just as
importantly, what it isn’t. This turns out to be a key yet overlooked question in several recent
confounding cases. The Ninth Circuit has struggled with this issue musical works
infringement cases such as Williams v. Gaye, 885 F. 3d 1150 (9th Cir 2018) (the Blurred Lines
case), but it finally got it right on the recent en banc ruling in Skidmore v. Zeppelin 952 F.3d
1051 (9th Cir. 2020) (the Stairway to Heaven case). These cases concerned copyrights
registered in an era before sound recording copyright where strict formalities still applied. In
both cases, the sheet music deposited at the Copyright Office was a simplified version of a
more complex composition. Both plaintiffs would have had stronger claims of infringement
if their rights were not limited to the sheet music underpinning their copyright registration.
Thus, in both Williams v. Gaye and Skidmore v. Zeppelin, the Ninth Circuit had to determine
whether the copyrighted work was limited to what was actually registered or whether
registration should simply be seen as evidence of the richer, more fully realized work.
In Williams and Skidmore and similar musical work infringement cases, the importance of
identifying the plaintiff's copyrighted work with precision would have been obvious to all
concerned. However, the importance of the same task in cases such as Oracle Am., Inc. v.
Google Inc., 750 F.3d 1339 (Fed. Cir. 2014)(holding that declaring code and the structure,
sequence, and organization of the Java API packages were entitled to copyright protection),
Paramount Pictures Corp. v. Axanar Prods., Inc., 2017 WL 83506 (C.D. Cal. Jan. 3, 2017) (the
Star Trek: Prelude to Axanar case), and Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496, 497
(7th Cir. 2014) (Sherlock Holmes copyright case), was probably underappreciated. These
cases also illustrate how plaintiffs are advantaged by a conception of the copyrighted work
that transcends any particular manifestation in a fixed copy thereof. Whether there is any
merit to that conception is a topic that will be explored later.101
Identifying the boundaries of the work is a critical prerequisite for determining questions of
ownership, claims of co-authorship, and eligibility for registration. It is also significant in
infringement analysis and fair use analysis where the amount of the plaintiff’s work that has
been appropriated by the defendant is at issue. Deciding whether the plaintiff owns one
work or several smaller works has some obvious implications for statutory damages which
are awarded on a “per work” basis. Without a coherent basis to determine the boundaries of
the work, copyright law invites plaintiffs to “game the system”.102 If the boundaries of the
work are left imprecise and undetermined then copyright risks becoming little more than an
unstructured tort of unfair competition.

101 Either later in this chapter if time permits, or later in the context of a law review article on this topic.
102 I.e., to use the rules and procedures of the system to achieve ends contrary to the objectives of the system as

a whole or to take unfair or undeserved advantage not intended by the system.

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When copyright began with the Statute of Anne in 1710 its subject matter was the printed
book, specifically “Copies of Printed Books.”103 Likewise the first copyright law of the newly
formed United States established rights in relation to “any map, chart, book or books.”104 In
England and the United States, copyright was contingent on registration in advance of
publication, a requirement that continued in the United States until the Copyright Act of
1976. The boundaries of the copyrighted work were much clearer under these previous
regimes because of the statutory focus on copyrightable subjects with well understood
parameters such as books, maps, etc. These boundaries were also much clearer because any
ambiguity had to be resolved at the time of registration: an author would either register 12
individual chapters, or she would register a single book.
Although in the intervening 300 years copyright law has expanded significantly in scope of
rights, duration, and subject matter covered, the printed book retains a special status as the
paradigm example of a copyrighted work. When a single author registers a unique and
original manuscript for copyright protection, subject matter eligibility and the boundaries of
the work are uncontroversial: it is obvious that an new novel meets the subject matter and
originality requirements for copyright protection, and it is equally obvious that what is being
copyrighted is the entire novel. Based on this simple paradigm we tend to think of
copyrighted works as discrete intellectual objects containerized and delimited in a stable
physical embodiments. Often that is true, but as this chapter will illustrate, there are hard
cases where the relationship between the work as an abstraction and its physical
embodiment will be contested.
To illustrate with conundrum from the Google v. Garcia litigation (extracted below): If a
filmmaker set up a camera trained on a spotlight on an empty stage and directed actor A to
decide between two and five minutes of Shakespeare, conventional principles of copyright
law suggests that actor and filmmaker are likely to be joint authors of the resulting
audiovisual work. But what if the filmmaker had the same arrangement with actors A
through Z? Would filmmaker be the sole author of a singular audiovisual work in which all
of the actors had made their contributions? Or would there be a multiplicity of works each
with different owners?
It probably seems obvious that the seven books in the original Harry Potter series are seven
separate copyrighted works, but is it obvious that each chapter isn’t also a separate
copyrighted work? And if each chapter is a work unto itself, should we treat every sentence a
new copyrighted work as well?
Such questions are just the tip of the iceberg. Later in this chapter (or in a future version of
this chapter) we will address problems relating to disappearing works, temporally contingent
works, and hyper-textual works. To answer these questions, we need a coherent concept of
the work in the abstract and a framework to determine the boundaries of particular
copyrighted works.
The indeterminacy of the boundaries of the copyrighted work was rarely an issue until the
comprehensive revision of the Copyright Act in 1976. The 1976 Act was recognized at the
time as making a number of fundamental changes to United States copyright law. However,
one of the most profound changes brought about by the Act appears to have gone largely
103 8 Ann., c. 19 (1710) (Eng.).
104 Copyright Act of 1790, ch. 15, § 1, 1 Stat. 124.

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unnoticed. That change is, in short, that we no longer know with certainty what a
copyrighted work is. Under the Copyright Act of 1909 and its predecessors, to obtain
copyright protection one had to first register one’s work and furthermore ensure that one
had not published the work prior to registration or without a copyright notice. As Justin
Hughes notes:
The Copyright Act defines a “collective work,” a “work made for hire,” “literary
works,” a “joint work,” and “a work of visual art.” But the law runs silent on the
foundational concept on which these definitions are built.105

This chapter explores some hard cases in relation to identifying the boundaries of
copyrighted works, beginning with the quantum theory of copyright (explained below) and
the supposed problem of disappearing works.

The quantum theory of copyright and the supposed problem of
disappearing works
Garcia v. Google, Inc., 786 F. 3d 733 (9th Circuit 2015) (en banc)
Opinion by Circuit Judge McKeown
In this case, a heartfelt plea for personal protection is juxtaposed with the limits of
copyright law and fundamental principles of free speech. The appeal teaches a simple
lesson — a weak copyright claim cannot justify censorship in the guise of authorship.
By all accounts, Cindy Lee Garcia was bamboozled when a movie producer
transformed her five-second acting performance into part of a blasphemous video
proclamation against the Prophet Mohammed. The producer — now in jail on
unrelated matters — uploaded a trailer of the film, Innocence of Muslims, to
YouTube. Millions of viewers soon watched it online, according to Garcia. News
outlets credited the film as a source of violence in the Middle East. Garcia received
death threats.
Asserting that she holds a copyright interest in her fleeting performance, Garcia
sought a preliminary injunction requiring Google to remove the film from all of its
platforms, including YouTube. The district court denied the injunction, finding that
Garcia did not establish likely success on the merits for her copyright claim. Nor did
she demonstrate that the injunction would prevent any alleged harm in light of the
film’s five-month presence on the Internet. A divided panel of our court reversed,
labeled her copyright claim as “fairly debatable,” but then entered a mandatory
injunction requiring Google to remove the film. That injunction was later limited to
versions of the film featuring Garcia’s performance.
As Garcia characterizes it, “the main issue in this case involves the vicious frenzy
against Ms. Garcia that the Film caused among certain radical elements of the
Muslim community.” We are sympathetic to her plight. Nonetheless, the claim
against Google is grounded in copyright law, not privacy, emotional distress, or tort
law, and Garcia seeks to impose speech restrictions under copyright laws meant to
105 Justin Hughes, Size Matters (Or Should) In Copyright Law, 74 FORDHAM LAW REVIEW 575, 576 (2005).

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foster rather than repress free expression. Garcia’s theory can be likened to
“copyright cherry picking,” which would enable any contributor from a costume
designer down to an extra or best boy to claim copyright in random bits and pieces
of a unitary motion picture without satisfying the requirements of the Copyright Act.
Putting aside the rhetoric of Hollywood hijinks and the dissent’s dramatics, this case
must be decided on the law.
In light of the Copyright Act’s requirements of an “original work of authorship fixed
in any tangible medium,” 17 U.S.C. § 102(a), the mismatch between Garcia’s
copyright claim and the relief sought, and the Copyright Office’s rejection of
Garcia’s application for a copyright in her brief performance, we conclude that the
district court did not abuse its discretion in denying Garcia’s request for the
preliminary injunction. As a consequence, the panel’s mandatory injunction against
Google was unjustified and is dissolved upon publication of this opinion.
BACKGROUND AND PROCEDURAL HISTORY
In July 2011, Cindy Lee Garcia responded to a casting call for a film titled Desert
Warrior, an action-adventure thriller set in ancient Arabia. Garcia was cast in a
cameo role, for which she earned $500. She received and reviewed a few pages of
script. Acting under a professional director hired to oversee production, Garcia
spoke two sentences: “Is George crazy? Our daughter is but a child?” Her role was
to deliver those lines and to “seem concerned.”
Garcia later discovered that writer-director Mark Basseley Youssef (a.k.a. Nakoula
Basseley Nakoula or Sam Bacile) had a different film in mind: an anti-Islam polemic
renamed Innocence of Muslims. The film, featuring a crude production, depicts the
Prophet Mohammed as, among other things, a murderer, pedophile, and homosexual.
Film producers dubbed over Garcia’s lines and replaced them with a voice asking,
“Is your Mohammed a child molester?” Garcia appears on screen for only five
seconds.
Almost 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
owned by Google, Inc., which boasts a global audience of more than one billion
visitors per month. After it was translated into Arabic, the film fomented outrage
across the Middle East, and media reports linked it to numerous violent protests.
The film also has been a subject of political controversy over its purported
connection to the September 11, 2012, attack on the United States Consulate in
Benghazi, Libya.
Shortly after the Benghazi attack, an Egyptian cleric issued a fatwa against anyone
associated with Innocence of Muslims, calling upon the “Muslim Youth in America
and Europe” to “kill the director, the producer, and the actors and everyone who
helped and promoted this film.” Garcia received multiple death threats.
Legal wrangling ensued. Garcia asked Google to remove the film, asserting it was
hate speech and violated her state law rights to privacy and to control her likeness.
Garcia also sent Google five takedown notices under the Digital Millenium
Copyright Act, 17 U.S.C. § 512, claiming that YouTube’s broadcast of Innocence of

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Muslims infringed her copyright in her “audio-visual dramatic performance.” Google
declined to remove the film.
On September 19, 2012, Garcia first sued Google, Youssef, and other unnamed
production assistants in Los Angeles Superior Court. Her complaint alleged a
compendium of torts and assorted wrongdoing under California law. As against
Google, Garcia made claims for invasion of privacy, false light, and violating her
right to publicity. She brought the same claims against Youssef and added fraud,
unfair business practices, slander, and intentional infliction of emotional distress. The
state court denied Garcia’s motion for a “temporary restraining order and for an
order to show cause re preliminary injunction,” because she had “not shown a
likelihood of success on the merits.” On September 25, 2012, Garcia voluntarily
dismissed her state court suit.
One day later, Garcia turned to federal court. She filed suit in the United States
District Court for the Central District of California and again named Google and
Youssef as codefendants. Garcia alleged copyright infringement against both
defendants and revived her state law claims against Youssef for fraud, unfair business
practices, libel, and intentional infliction of emotional distress.
Garcia then moved for a temporary restraining order and for an order to show cause
on a preliminary injunction — but only on the copyright claim. She sought to bar
Google from hosting Innocence of Muslims on YouTube or any other Google-run
website.
On November 30, 2012, the district court denied Garcia’s motion for a preliminary
injunction. As an initial matter, the court concluded that “Garcia had not
demonstrated that the requested relief would prevent any alleged harm,” because, by
that point, the film trailer had been on the Internet for five months. Nor did Garcia
establish a likelihood of success on the merits. In particular, the district court found
that the nature of Garcia’s copyright interest was unclear, and even if she could
establish such a copyright, she granted the film directors an implied license to
“distribute her performance as a contribution incorporated into the indivisible whole
of the Film.”
A divided panel of our court reversed. More than a year and a half after the film was
first uploaded, the panel majority first issued a secret takedown order, giving Google
twenty-four hours to remove all copies of Innocence of Muslims from YouTube and
other Google-controlled platforms. The panel embargoed disclosure of the order
until it issued its opinion. The panel later amended the order to allow YouTube to
post any version of the film that did not include Garcia’s performance.
In its later-issued opinion, the panel majority reversed the district court and granted
Garcia’s preliminary injunction. Garcia v. Google, Inc., 743 F.3d 1258, amended by
Garcia v. Google, Inc., 766 F.3d 929 (9th Cir.2014). Despite characterizing Garcia’s
copyright claim as “fairly debatable,” the panel majority nonetheless concluded that
Garcia was likely to prevail on her copyright claim as to her individual performance
in Innocence of Muslims. 766 F.3d at 935. In contrast to the district court’s factual
finding of an implied license from Garcia to Youssef, the panel opinion held that the
license ran in the opposite direction: “Youssef implicitly granted [Garcia] a license to
perform his screenplay,” and that Garcia did not grant Youssef an implied license to
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incorporate her performance into the film. Id. at 935-38. Finally, the panel majority
held that, because of the death threats against her, Garcia had established irreparable
harm and the equities and public interest favored an injunction. Id. at 938-40. The
opinion did not address the First Amendment consequences of the mandatory
takedown injunction, beyond stating that the First Amendment does not protect
copyright infringement.
Judge N.R. Smith dissented. He wrote that Garcia had not met the high burden
required for a mandatory preliminary injunction because she was unlikely to succeed
on her copyright claim. Id. at 941 (N.R. Smith, J., dissenting). Specifically, Garcia was
not likely to prove her performance was a “work,” nor would she likely meet the
copyright requirements of authorship and fixation, among other shortcomings with
her claim. Id. at 946. In sum, “because the facts and law do not ‘clearly favor’ issuing
a preliminary injunction to Garcia, the district court did not abuse its discretion in
denying Garcia’s requested relief.” Id. at 940.
We granted rehearing en banc.
The central question is whether the law and facts clearly favor Garcia’s claim to a
copyright in her five-second acting performance as it appears in Innocence of
Muslims. The answer is no. This conclusion does not mean that a plaintiff like
Garcia is without options or that she couldn’t have sought an injunction against
different parties or on other legal theories, like the right of publicity and defamation.
Under the Copyright Act, “copyright protection subsists ... in original works of
authorship fixed in any tangible medium of expression ... [including] motion pictures.”
17 U.S.C. § 102(a). That fixation must be done “by or under the authority of the
author.” 17 U.S.C. § 101. Benchmarked against this statutory standard, the law does
not clearly favor Garcia’s position.
The statute purposefully left “works of authorship” undefined to provide for some
flexibility. Nevertheless, several other provisions provide useful guidance. An
audiovisual work is one that consists of “a series of related images which are
intrinsically intended to be shown” by machines or other electronic equipment, plus
“accompanying sounds.” 17 U.S.C. § 101. In turn, a “motion picture” is an
“audiovisual work[ ] consisting of a series of related images which, when shown in
succession, impart an impression of motion, together with accompanying sounds, if
any.” Id. These two definitions embody the work here: Innocence of Muslims is an
audiovisual work that is categorized as a motion picture and is derivative of the script.
Garcia is the author of none of this and makes no copyright claim to the film or to
the script. Instead, Garcia claims that her five-second performance itself merits
copyright protection.
In the face of this statutory scheme, it comes as no surprise that during this litigation,
the Copyright Office found that Garcia’s performance was not a copyrightable work
when it rejected her copyright application. The Copyright Office explained that its
“longstanding practices do not allow a copyright claim by an individual actor or
actress in his or her performance contained within a motion picture.” Thus, “for
copyright registration purposes, a motion picture is a single integrated work....
Assuming Ms. Garcia’s contribution was limited to her acting performance, we
cannot register her performance apart from the motion picture.”
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We credit this expert opinion of the Copyright Office — the office charged with
administration and enforcement of the copyright laws and registration. The
Copyright Office’s well-reasoned position reflects a body of experience and
informed judgment to which courts and litigants may properly resort for guidance.
In analyzing whether the law clearly favors Garcia, Aalmuhammed v. Lee, 202 F.3d
1227 (9th Cir.2000), provides a useful foundation. There, we examined the meaning
of “work” as the first step in analyzing joint authorship of the movie Malcolm X.
The Copyright Act provides that when a work is “prepared by two or more authors
with the intention that their contributions be merged into inseparable or
interdependent parts of a unitary whole,” the work becomes a “joint work” with two
or more authors. 17 U.S.C. § 101 (emphasis added). Garcia unequivocally disclaims
joint authorship of the film.
In Aalmuhammed, we concluded that defining a “work” based upon “some minimal
level of creativity or originality ... would be too broad and indeterminate to be useful.”
202 F.3d at 1233 (internal quotation marks omitted).9
Footnote 9: Although the ultimate issue in Aalmuhammed pertained to joint authorship, the definition
of “work” was essential, just as in our case, to the analysis. 202 F.3d at 1233-34; see also Richlin v.
Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 968 (9th Cir. 2008) (relying on Aalmuhammed in
reasoning that to determine authorship, the court must first determine the “work” to be examined).

Our animating concern was that this definition of “work” would fragment copyright
protection for the unitary film Malcolm X into many little pieces:
So many people might qualify as an “author” if the question were limited to whether
they made a substantial creative contribution that that test would not distinguish one
from another. Everyone from the producer and director to casting director,
costumer, hairstylist, and “best boy” gets listed in the movie credits because all of
their creative contributions really do matter.

Id.
Garcia’s theory of copyright law would result in the legal morass we warned against
in Aalmuhammed — splintering a movie into many different “works,” even in the
absence of an independent fixation. Simply put, as Google claimed, it makes Swiss
cheese of copyrights.
Take, for example, films with a large cast — the proverbial “cast of thousands” —
such as Ben-Hur or Lord of the Rings. The silent epic Ben-Hur advertised a cast of
125,000 people. In the Lord of the Rings trilogy, 20,000 extras tramped around
Middle-Earth alongside Frodo Baggins (played by Elijah Wood). Treating every
acting performance as an independent work would not only be a logistical and
financial nightmare, it would turn cast of thousands into a new mantra: copyright of
thousands.
The dissent spins speculative hypotheticals about copyright protection for book
chapters, movie outtakes, baseball games, and Jimi Hendrix concerts. This hyperbole
sounds a false alarm. Substituting moral outrage and colorful language for legal
analysis, the dissent mixes and matches copyright concepts such as collective works,
derivative works, the requirement of fixation, and sound recordings. The statutory
definitions and their application counsel precision, not convolution. See, e.g., 17

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U.S.C. §§ 101, 103, 114, 201. The citation to Effects Associates, Inc. v. Cohen, 908 F.2d
555 (9th Cir.1990) (Kozinski, J.), is particularly puzzling. There, neither party
disputed the plaintiff’s copyright, and the plaintiff independently fixed the specialeffects footage and licensed it to the filmmakers.
The reality is that contracts and the work-made-for-hire doctrine govern much of the
big-budget Hollywood performance and production world. Absent these formalities,
courts have looked to implied licenses. Indeed, the district court found that Garcia
granted Youssef just such an implied license to incorporate her performance into the
film. But these legal niceties do not necessarily dictate whether something is
protected by copyright, and licensing has its limitations. As filmmakers warn, lowbudget films rarely use licenses. Even if filmmakers diligently obtain licenses for
everyone on set, the contracts are not a panacea. Third-party content distributors,
like YouTube and Netflix, won’t have easy access to the licenses; litigants may
dispute their terms and scope; and actors and other content contributors can
terminate licenses after thirty five years. See 17 U.S.C. § 203(a)(3). Untangling the
complex, difficult-to-access, and often phantom chain of title to tens, hundreds, or
even thousands of standalone copyrights is a task that could tie the distribution chain
in knots. And filming group scenes like a public parade, or the 1963 March on
Washington, would pose a huge burden if each of the thousands of marchers could
claim an independent copyright.
Garcia’s copyright claim faces yet another statutory barrier: She never fixed her
acting performance in a tangible medium, as required by 17 U.S.C. § 101 (“A work is
‘fixed’ in a tangible medium of expression when its embodiment in a copy or
phonorecord, by or under the authority of the author, is sufficiently permanent or stable to
permit it to be perceived, reproduced, or otherwise communicated for a period of
more than transitory duration.”) (emphasis added). According to the Supreme Court,
“the author is the party who actually creates the work, that is, the person who
translates an idea into a fixed, tangible expression entitled to copyright protection.”
Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989). Garcia did
nothing of the sort.
For better or for worse, Youssef and his crew “fixed” Garcia’s performance in the
tangible medium, whether in physical film or in digital form. However one might
characterize Garcia’s performance, she played no role in fixation. On top of this,
Garcia claims that she never agreed to the film’s ultimate rendition or how she was
portrayed in Innocence of Muslims, so she can hardly argue that the film or her
cameo in it was fixed “by or under [her] authority.” 17 U.S.C. § 101.
In sum, the district court committed no error in its copyright analysis. Issuance of
the mandatory preliminary injunction requires more than a possible or fairly
debatable claim; it requires a showing that the law clearly favors Garcia. Because
neither the Copyright Act nor the Copyright Office’s interpretation supports
Garcia’s claim, this is a hurdle she cannot clear. …
At this stage of the proceedings, we have no reason to question Garcia’s claims that
she was duped by an unscrupulous filmmaker and has suffered greatly from her
disastrous association with the Innocence of Muslims film. Nonetheless, the district

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court did not abuse its discretion when it denied Garcia’s motion for a preliminary
injunction under the copyright laws.
Circuit Judge Kozinski, dissenting:
Garcia’s dramatic performance met all of the requirements for copyright protection:
It was copyrightable subject matter, it was original and it was fixed at the moment it
was recorded. So what happened to the copyright? At times, the majority says that
Garcia’s performance was not copyrightable at all. And at other times, it seems to say
that Garcia just didn’t do enough to gain a copyright in the scene. Either way, the
majority is wrong and makes a total mess of copyright law, right here in the
Hollywood Circuit. In its haste to take Internet service providers off the hook for
infringement, the court today robs performers and other creative talent of rights
Congress gave them. I won’t be a party to it.
I
Youssef handed Garcia a script. Garcia performed it. Youssef recorded Garcia’s
performance on video and saved the clip. Until today, I understood that the rights in
such a performance are determined according to elementary copyright principles: An
“original work[] of authorship,” 17 U.S.C. § 102(a), requires only copyrightable
subject matter and a “minimal degree of creativity.” Feist Publications v. Rural Telephone,
499 U.S. 340, 345, (1991). The work is “fixed” when it is “sufficiently permanent or
stable to permit it to be perceived, reproduced, or otherwise communicated for a
period of more than transitory duration.” 17 U.S.C. § 101. And at that moment, the
“author or authors of the work” instantly and automatically acquire a copyright
interest in it. 17 U.S.C. § 201(a). This isn’t exactly String Theory; more like Copyright
101.
Garcia’s performance met these minimal requirements; the majority doesn’t contend
otherwise. The majority nevertheless holds that Garcia’s performance isn’t a “work,”
apparently because it was created during the production of a later-assembled film,
Innocence of Muslims. But if you say something is not a work, it means that it isn’t
copyrightable by anyone. Under the majority’s definition of “work,” no one (not
even Youssef) can claim a copyright in any part of Garcia’s performance, even
though it was recorded several months before Innocence of Muslims was assembled.
Instead, Innocence of Muslims — the ultimate film — is the only thing that can be a
“work.” If this is what my colleagues are saying, they are casting doubt on the
copyrightability of vast swaths of material created during production of a film or
other composite work.
The implications are daunting. If Garcia’s scene is not a work, then every take of
every scene of, say, Lord of the Rings is not a work, and thus not protected by
copyright, unless and until the clips become part of the final movie. If some
dastardly crew member were to run off with a copy of the Battle of Morannon, the
dastard would be free to display it for profit until it was made part of the final movie.
And, of course, the take-outs, the alternative scenes, the special effects never used, all
of those things would be fair game because none of these things would be “works”
under the majority’s definition. And what about a draft chapter of a novel? Is there

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no copyright in the draft chapter unless it gets included in the published book? Or if
part of the draft gets included, is there no copyright in the rest of it?
This is a remarkable proposition, for which the majority provides remarkably little
authority. Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir.2000), the only case that the
majority cites, says just the opposite. In Aalmuhammed, we considered a claim by a
contributor to the movie Malcolm X that he was a joint author of the entire movie.
Everyone in Aalmuhammed agreed that the relevant “work” was Malcolm X. The
only question was whether the contributor was a joint author of that work. We went
out of our way to emphasize that joint authorship of a movie is a “different question”
from whether a contribution to the movie can be a “work” under section 102(a). Id.
at 1233. And we clearly stated that a contribution to a movie can be copyrightable
(and thus can be a “work”). Id. at 1232.
The majority’s newfangled definition of “work” is directly contrary to a quartercentury-old precedent that has never been questioned, Effects Associates, Inc. v. Cohen,
908 F.2d 555 (9th Cir.1990). There, we held that a company that created special
effects footage during film production retained a copyright interest in the footage
even though it became part of the film. The majority tries to distinguish Effects
Associates by arguing that the footage there was a standalone work that was
separately fixed and incorporated into a film. But Garcia’s performance was also
“separately fixed and incorporated into” Innocence of Muslims. Why then are the
seven shots “featuring great gobs of alien yogurt oozing out of a defunct factory”
interspersed in The Stuff, any more a “standalone work” than Garcia’s performance?
Youssef wasn’t required to use any part of Garcia’s performance in the film; he could
have sold the video clip to someone else. The clip might not have had much
commercial value, but neither did the special effects scenes in Effects Associates.
Nothing in the Copyright Act says that special effects scenes are “works” entitled to
copyright protection but other scenes are not. And what about scenes that have
actors and special effects? Are those scenes entitled to copyright protection (as in
Effects Associates), or are they denied copyright protection like Garcia’s scene?
II
A.
The majority also seems to hold that Garcia is not entitled to copyright protection
because she is not an author of the recorded scene. According to the majority,
Garcia can’t be an author of her own scene because she played no role in her
performance’s fixation.
But a performer need not operate the recording equipment to be an author of his
own performance. See House Report at 56 (1976); Senate Report at 53-54 (1975).
Without Garcia’s performance, all that existed was a script. To convert the script into
a video, there needed to be both an actor physically performing it and filmmakers
recording the performance. Both kinds of activities can result in copyrightable
expression. Garcia’s performance had at least “some minimal degree of creativity”
apart from the script and Youssef’s direction. See Feist, 499 U.S. at 345. One’s
“personality always contains something unique. It expresses its singularity even in
handwriting, and a very modest grade of art has in it something which is one man’s
alone.” Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250 (1903). To dispute
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this is to claim that Gone With the Wind would be the same movie if Rhett Butler
were played by Peter Lorre.
Actors usually sign away their rights when contracting to do a movie, but Garcia
didn’t and she wasn’t Youssef’s employee. I’d therefore find that Garcia acquired a
copyright in her performance the moment it was fixed. When dealing with material
created during production of a film or other composite work, the absence of a
contract always complicates things. See Effects Associates, 908 F.2d at 556
(“Moviemakers do lunch, not contracts.”). Without a contract the parties are left
with whatever rights the copyright law gives them. It’s not our job to take away from
performers rights Congress gave them. Did Jimi Hendrix acquire no copyright in the
recordings of his concerts because he didn’t run the recorder in addition to playing
the guitar? Garcia may not be as talented as Hendrix — who is? — but she’s no less
entitled to the protections of the Copyright Act.
B.
While the Copyright Office claims that its “longstanding practices” don’t recognize
Garcia’s copyright interest, it doesn’t seem that the Register of Copyrights got the
memo. The Register was a member of the U.S. delegation that signed the Beijing
Treaty on Audiovisual Performances. See U.S. Copyright Office, Annual Report of
the Register of Copyrights 8 (2012). The Treaty would recognize Garcia’s rights in
her performance. It provides that “performers” have the “exclusive right of
authorizing ... the fixation of their unfixed performances,” and “reproduction of
their performances fixed in audiovisual fixations, in any manner or form.” World
Intellectual Property Organization, Beijing Treaty on Audiovisual Performances, Art. 6(ii), 7
(2012).
The Patent Office, which led the delegation, states that U.S. law is “generally
compatible” with the Treaty, as “actors and musicians are considered to be ‘authors’
of their performances providing them with copyright rights.” U.S. Patent &
Trademark Office, Background and Summary of the 2012 WIPO Audiovisual
Performances Treaty 2 (2012). Although the Copyright Office hasn’t issued a
statement of compatibility, it’s hard to believe that it would sign on if it believed that
the Treaty’s key provisions are inconsistent with U.S. copyright law. In fact, the
Copyright Office praised the Treaty as “an important step forward in protecting the
performances of television and film actors throughout the world.” Except in the
Ninth Circuit.
The Copyright Office’s position is thus inconsistent at best. And, in any event,
neither the Copyright Office’s reasoning nor the authority it relies on in its letter to
Garcia fare any better than the majority’s. The Copyright Office would refuse
copyright registration to an actor like Garcia because “an actor or an actress in a
motion picture is either a joint author in the entire work or, as most often is the case,
is not an author at all by virtue of a work made for hire agreement.” However,
Garcia isn’t a joint author of the entire movie and didn’t sign any agreements. She
doesn’t fit into either category. Like the majority, the Copyright Office would wish
this problem away by refusing registration unless the copyright claimant personally
recorded his performance. But nothing in the legislative history relied on by the
Copyright Office (which concerned joint authorship of an entire film) suggests that a

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non-employee doesn’t retain any copyright interest in a video clip of his acting
performance because it’s recorded by the film’s producer. See House Report at 120.
III
The harm the majority fears would result from recognizing performers’ copyright
claims in their fixed, original expression is overstated. The vast majority of copyright
claims by performers in their contributions are defeated by a contract and the work
for hire doctrine. And most of the performers that fall through the cracks would be
found to have given an implied license to the film’s producers to use the
contribution in the ultimate film. See Effects Associates, 908 F.2d at 558. Very few
performers would be left to sue at all, and the ones that remain would have to find
suing worth their while. They wouldn’t be able to claim the valuable rights of joint
authorship of the movie, such as an undivided share in the movie or the right to
exploit the movie for themselves. Rather, their copyright claims would be limited to
the original expression they created. See Aalmuhammed, 202 F.3d at 1232; Effects
Associates, 908 F.2d at 559. Which is why filmmaking hasn’t ground to a halt even
though we held a quarter-century ago that “where a non-employee contributes to a
book or movie, ... the exclusive rights of copyright ownership vest in the creator of
the contribution, unless there is a written agreement to the contrary.” Effects Associates,
908 F.2d at 557.
Regardless, the Supreme Court has reminded us that “speculation about future
harms is no basis for [courts] to shrink authorial rights.” N.Y. Times Co. v. Tasini, 533
U.S. 483, 505-06 (2001). In Tasini, freelance authors argued that the inclusion in
databases of their articles that originally appeared in periodicals infringed their
copyrights in the works. Publishers warned that “‘devastating’ consequences,”
including massive damages awards, would result if the Court were to hold for the
freelancers. The Court nonetheless held for the freelancers, turning back the parade
of horribles deployed by the publishers. The Court explained that there are
“numerous models for distributing copyrighted works and remunerating authors for
their distribution.” Tasini is a powerful reminder that movie producers, publishers
and distributors will always claim that the sky is falling in cases that might recognize
an individual contributor’s copyright interest in material he created. They will always
say, as Google says here, that holding in the contributor’s favor will make “Swiss
cheese” of copyrights.
But under our copyright law, the creators of original, copyrightable material
automatically acquire a copyright interest in the material as soon as it is fixed. There’s
no exception for material created during production of a film or other composite
work. When modern works, such as films or plays, are produced, contributors will
often create separate, copyrightable works as part of the process. Our copyright law
says that the copyright interests in this material vest initially with its creators, who
will then have leverage to obtain compensation by contract. The answer to the
“Swiss cheese” bugbear isn’t for courts to limit who can acquire copyrights in order
to make life simpler for producers and internet service providers. It’s for the parties
to allocate their rights by contract. See Effects Associates, 908 F.2d at 557. Google
makes oodles of dollars by enabling its users to upload almost any video without prescreening for potential copyright infringement. Google’s business model, like that of
the database owners in Tasini, assumes the risk that a user’s upload infringes
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someone else’s copyright, and that it may have to take corrective action if a copyright
holder comes forward.
The majority credits the doomsday claims at the expense of property rights that
Congress created. Its new standard artificially shrinks authorial rights by holding that
a performer must personally record his creative expression in order to retain any
copyright interest in it, speculating that a contrary rule might curb filmmaking and
burden the internet. But our injunction has been in place for over a year; reports of
the Internet’s demise have been greatly exaggerated. For the reasons stated here and
in the majority opinion in Garcia v. Google, Inc., 766 F.3d 929, 933-36 (9th Cir.2014), I
conclude that Garcia’s copyright claim is likely to succeed. I’d also find that Garcia
has made an ample showing of irreparable harm. It’s her life that’s at stake.
Notes and questions
(1) In Garcia v. Google, Inc., 786 F. 3d 733 (9th Cir. 2015) (en banc), the Ninth Circuit en banc
agreed with the position of the Copyright Office that a motion picture is a single integrated
work and that there is no scope for a separately copyrighted simultaneously created subwork consisting of an actor’s performance. The Ninth Circuit majority argued that to hold
otherwise would encumber the ordinary motion picture in a tangle of hundreds if not
thousands of fractured ownership claims. The essence of majority opinion was its analysis (at
742) that:
Garcia’s theory of copyright law would result in a legal morass, making Swiss cheese
of copyrights.

The court did not consider the work made for hire doctrine or implied license to be a
sufficient solution to the problem of fractured ownership in this context.
(2) The Ninth Circuit also held that even if Garcia’s performance was potentially a separate
copyright work, she never fixed her acting performance in a tangible medium, as required by
§ 102(a) and defined in § 101. In the majority’s view, although her performance was fixed, it
was not fixed under her authority because she had no control over that part of the process. Is
the majority stretching when it says that Garcia’s performance was not fixed under her
authority? She voluntarily performed for the camera, why isn’t that enough?
(3) In dissent, Judge Kozinski noted that under the Beijing Treaty on Audiovisual Performances
“performers” have the “exclusive right of authorizing the fixation of their unfixed
performances,” and “reproduction of their performances fixed in audiovisual fixations, in
any manner or form.” See World Intellectual Property Organization, Beijing Treaty on
Audiovisual Performances, Art. 6(ii), 7 (2012). Such international treaties do not have direct
effect under United States law, but Judge Kozinski argued that the court should have given
some weight to representations by the U.S. Patent and Trademark Office that United States
law is “generally compatible” with the Treaty, as “actors and musicians are considered to be
‘authors’ of their performances providing them with copyright rights.” See U.S. Patent &
Trademark Office, Background and Summary of the 2012 WIPO Audiovisual Performances
Treaty 2 (2012). Is this argument convincing?
(4) Judge Kozinski’s embrace of pop culture, relaxed writing style, and punchy rhetoric make
his decisions great fodder for textbooks. Kozinski is the author of many excellent and
quotable opinions. However, we should be wary of lionizing judges and Supreme Court

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justices simply because we appreciate their writing, or their politics. Judge Kozinski
announced his retirement on December 18, 2017, after a growing number of allegations of
improper sexual conduct and abusive practices toward law clerks.106 For all his swaggering
opinions, that is his legacy.
(5) In the case extracted below, the Second Circuit also held, in effect, that a motion picture
is a single integrated work and that there is no scope for a separately copyrighted
simultaneously created sub-work consisting of a director’s contributions to the film.
16 Casa Duse, LLC v. Merkin, 791 F. 3d 247 (2nd Cir. 2015)
In September 2010, Robert Krakovski, acting at all relevant times as the principal of a film-production company 16 Casa
Duse, purchased the rights to a screenplay entitled Heads Up from the work’s author, Ben Carlin. Krakovski hired Alex
Merkn to direct a short film shot over three days of filming. Merkn, the director was not an employee and, in spite of long
negotiations, the parties ultimately never agreed to a work for hire contract. The parties agreed that the director was not a
co-author of the final film, but the director claimed both a copyright interest in his directorial contributions to the finished
film and a separate copyright interest in the entire local footage shot under his direction. The relationship ended poorly.

Opinion by Circuit Judge Sack
BACKGROUND
… In January 2012, as the dispute continued to simmer, Merkin registered a
copyright in the film with the United States Copyright Office. The title of the
registration was “Raw footage for film ‘Heads Up’ Disks 1-4,” reflecting the fact that
Merkin had copied the footage from the hard drive onto four DVDs. The
registration listed the type of work as “Motion Picture” and asserted that Merkin was
its sole author. Merkin did not obtain Casa Duse’s permission to register the
copyright, and Krakovski was unaware of the registration.
In March 2012, Krakovski began submitting Heads Up to film festivals and making
plans to publicize the film. To that end, he scheduled an invitation-only screening for
approximately seventy persons at the New York Film Academy (“NYFA”) on April
18, 2012. Krakovski also organized a reception to follow at a nearby restaurant, City
Crab, for which he paid a non-refundable deposit of $1,956.58.
On the date of the event, the NYFA chairperson contacted Krakovski to tell him
that Merkin’s attorney (Reichman) had threatened the NYFA with a cease-and-desist
order to prevent the screening from proceeding. According to Reichman, it was
Merkin — not Reichman — who contacted the NYFA and mentioned a cease and
desist “notice,” not an order, at which point the NYFA contacted Reichman. In any
event, the NYFA cancelled the screening in response to these threats, and Casa Duse
lost its restaurant deposit. Casa Duse subsequently missed at least four film festival
submission deadlines as a result of the dispute. Merkin did not return the hard drive,
the DVDs, or the raw footage in any form.
Casa Duse brought suit against Merkin and his limited liability company, A. Merkin
Entertainment, LLC, (“AME”) in May 2012 seeking, inter alia, a temporary
restraining order and injunction enjoining Merkin from interfering with its use of the
film.

106 The details are set out in a Wikipedia entry, among other places.

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DISCUSSION
This case requires us to answer a question of first impression in this Circuit: May a
contributor to a creative work whose contributions are inseparable from, and
integrated into, the work maintain a copyright interest in his or her contributions
alone? We conclude that, at least on the facts of the present case, he or she may not.
Merkin argues that the district court erred in concluding, first, that Merkin could not
copyright his creative contributions to the film, and, second, that he lacks copyright
ownership of the “raw film footage.” Casa Duse responds that individual
contributions to a film, such as direction, are not themselves subject to copyright
protection and that Casa Duse retains sole copyright ownership of the film and the
“raw footage,” to the extent the two are distinguishable for copyright purposes.
Two points merit mention at the outset.
First, the parties agree that Merkin is not a “joint author” or “co-author” of the film
under the 1976 Copyright Act. See 17 U.S.C. § 101 (“A ‘joint work’ is a work
prepared by two or more authors with the intention that their contributions be
merged into inseparable or interdependent parts of a unitary whole.”). If he were,
that fact would likely prohibit his interference with Casa Duse’s use and display of
the film, because one joint owner cannot be liable for copyright infringement to
another joint owner. A co-authorship claimant in our Circuit generally must show
that “each of the putative co-authors (1) made independently copyrightable
contributions to the work; and (2) fully intended to be co-authors.” Thomson v. Larson,
147 F.3d 195, 200 (2d Cir.1998) (citing Childress v. Taylor, 945 F.2d 500, 507-08 (2d
Cir.1991)). Even assuming the first prong3 is met here, we agree with the district
court that the record uniformly establishes that Casa Duse, through its principal,
Krakovski, never intended to share authorship of the film with Merkin or anyone
else, and there is also considerable evidence that Merkin never intended to be Casa
Duse’s co-author.”4
Footnote 3: It seems likely that by “copyrightable” the Childress court meant only to say that the
coauthor’s contribution must be the product of authorship, i.e., expression. The court did not mean
that in order to be a coauthor one must be able to obtain a copyright on his or her separate
contribution, or even that such would be possible. See 2 Patry on Copyright § 5:15
Footnote 4: We noted in Thomson that “the test of co-authorship intent will vary depending on the
specific factual circumstances.” Thomson, 147 F.3d at 201 n. 16. We need not determine the ways in
which the test might vary in the circumstances presented by this case, because the parties disclaim
joint authorship.

Second, the parties also agree that Merkin’s efforts cannot be deemed a “work made
for hire.” See 17 U.S.C. § 201(b) (“The ... person for whom the work[-for-hire] was
prepared is considered the author ... and, unless the parties have expressly agreed
otherwise in a written instrument signed by them, owns all of the rights comprised in
the copyright.”). A work-for-hire arrangement requires:
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a
collective work, as a part of a motion picture[, or for other specified purposes] ... if
the parties expressly agree in a written instrument signed by them that the work shall
be considered a work made for hire.

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Id. § 101. Merkin was not Casa Duse’s employee and the parties failed to execute a
written agreement.
A. Copyright in Creative Contributions to a Work
“Copyright protection subsists ... in original works of authorship fixed in any tangible
medium of expression, now known or later developed, from which they can be
perceived, reproduced, or otherwise communicated, either directly or with the aid of
a machine or device.” 17 U.S.C. § 102(a). We have never decided whether an
individual’s non-de minimis creative contributions to a work in which copyright
protection subsists, such as a film, fall within the subject matter of copyright, when
the contributions are inseparable from the work and the individual is neither the sole
nor a joint author of the work and is not a party to a work-for-hire arrangement. See
Thomson, 147 F.3d at 206 (acknowledging open question and resolving case on
alternative grounds). We answer that question in the negative on the facts of the
present case, finding that the Copyright Act’s terms, structure, and history support
the conclusion that Merkin’s contributions to the film do not themselves constitute a
“work of authorship” amenable to copyright protection.
The Copyright Act does not define the term “works of authorship.” Section 102 of
the Act, however, lists examples of categories of “works of authorship,” including
“literary works,” 17 U.S.C. § 102(a)(1), “musical works,” id. § 102(a)(2), and — most
relevant here — “motion pictures and other audiovisual works,” id. § 102(a)(6). This
list is not exhaustive, but as we have previously observed, categories of creative
efforts that are not “similar [] or analogous to any of the listed categories” are
unlikely to fall within the subject matter of federal copyright protection. National
Basketball Association v. Motorola, Inc., 105 F.3d 841, 846 (2d Cir.1997) (concluding that
“basketball games do not fall within the subject matter of federal copyright
protection because they do not constitute ‘original works of authorship’ under 17
U.S.C. § 102(a).”). Motion pictures, like “pantomimes,” 17 U.S.C. § 102(a)(4), and
“dramatic works,” id. § 102(a)(3), are works that may be expected to contain
contributions from multiple individuals. See Richlin v. Metro-Goldwyn-Mayer Pictures, Inc.,
531 F.3d 962, 975 (9th Cir.2008) (“A motion picture is a work to which many
contribute; however, those contributions ultimately merge to create a unitary
whole.”). But the Act lists none of the constituent parts of any of these kinds of
works as “works of authorship.” This uniform absence of explicit protection
suggests that non-freestanding contributions to works of authorship are not
ordinarily themselves works of authorship.
Other provisions of the Act support this conclusion. The Act’s definition of “joint
work,” a work prepared by multiple authors “with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole,”
17 U.S.C. § 101 (emphasis added), suggests that such inseparable contributions are
not themselves “works of authorship.” Copyright may subsist in contributions to a
collective work, see id. § 201(c) (“Copyright in each separate contribution to a
collective work is distinct from copyright in the collective work as a whole.”), but
only when such contributions constitute “separate and independent” works. Id. §
101 (“A ‘collective work’ is a work, such as a periodical issue, anthology, or
encyclopedia, in which a number of contributions, constituting separate and
independent works in themselves, are assembled into a collective whole.” (emphasis
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added)). The requirement that contributions be “separate and independent” in order
to obtain their own copyright protection also indicates that inseparable contributions
integrated into a single work cannot separately obtain such protection.
The legislative history of the Copyright Act further supports this reading. According
to the House Report on the 1976 Act:
[A] motion picture would normally be a joint rather than a collective work with
respect to those authors who actually work on the film, although their usual status
as employees for hire would keep the question of coownership from coming up. On
the other hand, although a novelist, playwright, or songwriter may write a work with
the hope or expectation that it will be used in a motion picture, this is clearly a case
of separate or independent authorship rather than one where the basic intention
behind the writing of the work was for motion picture use.

House Report at 120 (1976). While issues of “coownership” of a copyright may arise in
the motion picture context, the question of separate contributions meriting separate
copyrights as “works” ordinarily would not, unless the motion picture incorporates
separate, freestanding pieces that independently constitute “works of authorship.” In
a joint work, “the separate elements [comprising the work] merge into a unified
whole,” whereas in a collective work, individuals’ contributions “remain unintegrated
and disparate.” Id.
As Casa Duse observes, the Copyright Office has, in an unrelated case, suggested a
similar interpretation of the Act. The Office has stated that an individual who lacks a
work-for-hire agreement but who “intend[s] her contribution or performance to ‘be
merged into inseparable or interdependent parts of a unitary whole[,]’ 17 U.S.C. §
101[,] ... may assert a claim in joint authorship in the motion picture, but not sole
authorship of her performance in a portion of the work.”107 We need not defer to the
Copyright Office’s interpretation as a general matter, see Carol Barnhart Inc. v. Econ.
Cover Corp., 773 F.2d 411, 414 (2d Cir.1985), or under the factually distinct
circumstances of the present case. We find its analysis persuasive nonetheless.
There was, until recently, some authority apparently to the contrary. The majority of
a three-judge panel of the Ninth Circuit concluded that copyright protection may
subsist in an actor’s performance in a motion picture. See Garcia v. Google, Inc., 766
F.3d 929, 933-36 (9th Cir.), reversed en banc, 786 F.3d 733 (9th Cir.2015) (“Garcia
(en banc)”). In Garcia, as in the present case, an individual who made a contribution
to a finished film — in that case, an actor — claimed ownership of a copyright
interest in her contribution. The court reasoned that the actor’s performance
exhibited at least a “minimal degree of creativity” such that the actor had probably
engaged in an original act of authorship. Id. at 934 (quoting Feist). And the
performance was, in the court’s view, “fixed” in a tangible medium as part of the
finished film. Id.
An en banc panel reversed, however, adhering to the Copyright Office’s view and,
based thereon, concluding that the actor’s “theory of copyright law would result in a
107 Letter from Robert J. Kasunic, Assoc. Register of Copyrights and Dir. of Registration Policy and Practices,

U.S. Copyright Office, 11 to M. Cris Armenta, The Armenta Law Firm (Mar. 6, 2014) (attached as appendix 12
to Brief in Response to Suggestion of Rehearing En Banc [Dkt. 54] at ADD47, Garcia v. Google, No. 1257302 (9th Cir. Mar. 12, 2014)).

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legal morass, making Swiss cheese of copyrights.” Garcia (en banc), 786 F.3d at 742.
We agree. Filmmaking is a collaborative process typically involving artistic
contributions from large numbers of people, including — in addition to producers,
directors, and screenwriters — actors, designers, cinematographers, camera operators,
and a host of skilled technical contributors. If copyright subsisted separately in each
of their contributions to the completed film, the copyright in the film itself, which is
recognized by statute as a work of authorship, could be undermined by any number
of individual claims. These various contributors may make original artistic
expressions, which are arguably fixed in the medium of film footage. But while
originality and fixation are necessary prerequisites to obtaining copyright protection,
see 17 U.S.C. § 102(a), they are not alone sufficient: Authors are not entitled to
copyright protection except for the “works of authorship” they create and fix. See
id.; see also Garcia, 766 F.3d at 941 (N.R. Smith, J., dissenting).
Our conclusion in the present case does not suggest that motion picture directors
such as Merkin may never achieve copyright protection for their creative efforts. The
director of a film may, of course, be the sole or joint author of that film, such that
she or he can secure copyright protection for the work. See Community for Creative
Non-Violence, 490 U.S. at 737 (“As a general rule, the author is the party who actually
creates the work, that is, the person who translates an idea into a fixed, tangible
expression entitled to copyright protection.”); see also F. Jay Dougherty, Not A Spike
Lee Joint? Issues in the Authorship of Motion Pictures Under U.S. Copyright Law, 49 UCLA
L.Rev. 225, 312 (2001) (“The director of the film is certainly potentially one of its
most important authors.”). And authors of freestanding works that are incorporated
into a film, such as dance performances or songs, may copyright these “separate and
independent works.” 17 U.S.C. § 101 (defining “collective work”). But a director’s
contribution to an integrated “work of authorship” such as a film is not itself a
“work of authorship” subject to its own copyright protection.
A final observation: A conclusion other than the one we adopt would grant
contributors like Merkin greater rights than joint authors, who, as we have noted,
have no right to interfere with a co-author’s use of the copyrighted work. See
Childress, 945 F.2d at 508 (“Joint authorship entitles the co-authors to equal
undivided interests in the work.”). We doubt that Congress intended for contributors
who are not joint authors to have greater rights enabling them to hamstring authors’
use of copyrighted works, as apparently occurred in the case at bar. We agree with
the en banc Ninth Circuit, then, that the creation of “thousands of standalone
copyrights” in a given work was likely not intended. Garcia (en banc), 786 F.3d at 743.
We conclude that Merkin did not obtain and does not possess a copyright in his
directorial contributions to the finished film.
Notes and questions
(1) In 16 Casa Duse, LLC v. Merkin, 791 F. 3d 247 (2nd Cir. 2015), the Second Circuit held a
film director did not have a copyright interest in either his directorial contributions to the
finished film or the raw film footage shot under his direction. The director was not an
employee and had not signed a work for hire agreement. Note that as in the Garcia case, the

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director in 16 Casa Duse did not claim to be a joint author of the final film, he claimed to be
the sole author of his contributions to that film.
(2) The Second Circuit seemed to take a dim view of Merkin’s conduct and that may have
colored its assessment of his other copyright claim, not covered in the extract above.
Merkin’s second argument was that he was the sole author of the raw film footage. If the
court had accepted this argument, Merkin would have been able to exercise veto power over
the final film because the final film was a derivative work based on the raw film footage. In a
portion of the opinion not extracted above, the court held that “in the context of the project
as a whole, Casa Duse exercised far more decisionmaking authority [than the director].” But
wouldn’t Merkin still be joint author, given his significant degree of control over many of the
creative decisions underlying both the raw film footage and the finished product? The court
did not think so.
The court dispensed with Merkin’s argument that he and not Casa Duse owned the
copyright in the raw film footage from which the final film was produced. The court agreed
with the parties that the raw film footage was not intended to be a joint work and thus the
sole winner-take-all question was who was the “dominant author.” Applying various criteria
taken from joint-authorship cases: decisionmaking authority, billing, and written agreements
with third parties, the court of appeals agreed with the district court that Casa Duse was the
dominant author of the film and the raw footage. It concluded thus, “that Casa Duse, not
Merkin, owns the copyright in the finished film and its prior versions, including the disputed
raw film footage.”
This conclusion is debatable. As director, Merkin made a variety of creative decisions related
to camera work, lighting, blocking, and actors’ wardrobe, makeup, and dialogue delivery,
particularly during the three days of filming. The court notes “Casa Duse initiated the
project; acquired the rights to the screenplay; selected the cast, crew and director; controlled
the production schedule; and coordinated (or attempted to coordinate) the film’s publicity
and release.” But it does not seem to stop and consider whether these are authorial activities
or simply activities that set the stage for authorship.

Addition thoughts on the quantum theory of copyright
Consider an iconic moment in cinema such as the scene in Dirty Harry where Clint Eastwood
says “So you gotta ask yourself this question: ‘Do I feel lucky?’ Well, do ya, punk?” The
scene is memorable, and Eastwood’s performance is original to him, even if he did not write
the dialogue, and quite arguably displays a modicum of creativity. Does it make sense to
think of this isolated fragment as a distinct copyrighted work within a larger copyrighted
work?
In his dissent in Garcia v. Google, Judge Kozinski asks a series of questions about the
disappearing copyright under the majority’s theory. At 749, he says:
Garcia’s dramatic performance met all of the requirements for copyright protection:
It was copyrightable subject matter, it was original and it was fixed at the moment it
was recorded. So what happened to the copyright?

And later at 750, he continued:
And what about a draft chapter of a novel? Is there no copyright in the draft chapter
unless it gets included in the published book? Or if part of the draft gets included, is
there no copyright in the rest of it?

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Kozinski’s argument is wrong, but it takes a moment to understand why. His argument
begins with the assertion that Garcia’s dramatic performance was sufficiently creative to
meet the Feist standard for originality. Let’s take that as given. Accordingly, the performance
potentially could have supported the claim for copyrightable subject matter in a standalone
work. This seems right. In terms of subject matter, the video recording of a dramatic
performance would be an audiovisual work. In this scenario, the creativity inherent in the
performance would be a significant part of the originality that enabled the audiovisual work
to satisfy the Feist threshold.
So far, so good, but Kozinski further contended that because the recording of Garcia’s
dramatic performance could have been an independent copyright work, it must continue to be
so even though it was embedded in a larger copyrighted work. In contrast to Kozinski, the
majority in Garcia held that the actress had no separate copyright interest in the part of the
film that captured her performance. Kozinski sees this as raising an unanswerable question
of “what happened to the copyright?” or, how did Garcia’s copyrighted work disappear?
Kozinski’s dissent in Garcia is classic illustration of what could be termed the “quantum view
of copyright.” The quantum view of copyright is that the things we understand as
copyrighted works—books, poems, movies, computer games, paintings, etc.—are merely the
largest recognizable manifestation of the work and that all such “grand works” are simply
collections of an almost infinite number of smaller copyrighted works, limited only by the
minimum threshold of creativity that meets the originality standard articulated in Feist.
Proponents of the quantum view, like Judge Kozinski, argue that it must be correct because
otherwise copyrighted works would disappear. This is remarkably close to the nonsense
argument that because every letter in the English language is silent in some contexts—e.g.,
the second B in bomb, the C in ascend and the D edge—that all letters are silent thus no
words can be spoken!108 Much like the mystery of the silent letters, on closer inspection, the
purported disappearance of copyrighted works proves nothing. As the next section will show,
copyrighted works disappear all the time as works are made and remade over time.

A thought experiment: serial fixation by a sole author
The thought experiment that follows is designed to illustrate the absurd proliferation of
works implied by the quantum view of copyright. I argue that quantum view of copyright
works and the disappearance objection make little sense in practice in the context of works
that are fixed progressively (as opposed to in an instant) and even less upon a careful reading
of the relevant provisions of the Copyright Act.
Consider the following hypothetical in which our hero is a romantic poet. On Monday
morning Poet took up her pen and wrote the heading “Questions” and these additional four
lines:
Is it that in some brighter sphere
We part from friends we meet with here?
Or do we see the Future pass
Over the Present’s dusky glass?

On Monday afternoon she added:
108 I believe this was the plot of an episode of the educational program “MathNet” I saw as child, but I have

not been able to verify this.

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Or what is that that makes us seem
To patch up fragments of a dream,
Part of which comes true, and part
Beats and trembles in the heart?109

Assuming that each session of writing met the minimum requirement for creativity set out in
Feist (they clearly do) and that they were original to Poet (they are not, but let’s pretend),
should we treat this as:
•
•
•
•

one original work: “Is-heart?” (55 words);
two original works: “Is-glass” (27 words) + “Or-heart” (28 words);
one original work: “Is-glass” (27 words) and one derivative work “Is-heart” (55 words); or
two original works: “Is-glass” (27 words) + “Or-heart” (28 words) and one derivative work
“Is-heart” (55 words)?

These permutations are not the only options! If we take the quantum view seriously and
assume for the sake of argument that every two lines of the poem could be separately
copyrighted (i.e., that two lines meets the Feist minimum), then plausible subworks spring
into existence as an additive sequence, under the quantum view there are at least seven
subworks here:
•
•
•
•
•
•
•

Lines 1 & 2
Lines 1, 2 & 3
Lines 1, 2, 3 & 4
Lines 1, 2, 3, 4 & 5
Lines 1, 2, 3, 4, 5 & 6
Lines 1, 2, 3, 4, 5, 6 & 7
Lines 1, 2, 3, 4, 5, 6, 7 & 8

But under the logic of the quantum view we could also carve out any two consecutive lines as
standalone works. This adds at least another five potential subworks.
•
•
•
•
•

Lines 2 & 3
Lines 3 & 4
Lines 4 & 5
Lines 5 & 6
Lines 7 & 8

This is by no means the end of proliferation of works that the quantum view implies.
Consider, for example, a subwork consisting of lines 2, 3 & 4, or of lines 3, 4 & 5. I could go
on, and on, and on.
If Poet regards the 55 word composition as a single work and presents it to the public as
such, is there any merit in the quantum view that Questions is simply the largest identifiable
grand work of a sprawling multiplicity of subworks? The notion that Questions is sixteen
different copyrighted works would strike the author and the general public as bizarre. This
fact alone does not settle the matter; after all, there are many aspects of copyright law that
would strike the uninitiated as bizarre. It should at least give us pause before we embrace
such an unwieldy conclusion.
109 The poem is Questions by Percy Bysshe Shelley, 1792–1822.

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What does the Copyright Act say?
A careful analysis of the Copyright Act indicates that the disappearance of copyrighted
works into larger copyrighted works is a common and unremarkable phenomenon. Subject
to certain limits, copyright works mutate overtime through a process of self-erasure. It is
only when a work crosses the threshold of becoming a new “version” that it forms a new
work, rather than simply superseding the original work.
I have seen my fellow academics argue that the quantum view of copyright is required by the
definition of when a work is “created” in Section 101 of the Copyright Act. I find this
curious, and I wonder if they have ever read that section with any care at all.
17 U.S. Code § 101. Definitions
A work is “created” when it is fixed in a copy or phonorecord for the first time;
where a work is prepared over a period of time, the portion of it that has been fixed
at any particular time constitutes the work as of that time, and where the work has
been prepared in different versions, each version constitutes a separate work.

The statute says: “where a work is prepared over a period of time, the portion of it that has
been fixed at any particular time constitutes the work as of that time.” Does this mean that
as an author writes each word of a literary work, she first creates one original work that
springs into existence whenever the Feist threshold is met, and that as she adds additional
works she creates a set of new derivative works? No. In fact, careful consideration of the
statute indicates to the contrary.
The statute tells us that “where a work is prepared over a period of time” as surely all works
other than photography must be, “the portion of it that has been fixed at any particular time
constitutes the work as of that time[.]” The more natural reading of this phrase is that what
constitutes “the work” can and will change over time. I.e., copyrighted works exhibit
temporal mutability.
What is the outer boundary of this temporal mutability? The next phrase in Section 101
holds the key; it says that “and where the work has been prepared in different versions, each
version constitutes a separate work.” The implicit and logical corollary of this is that “where
the work has [not] been prepared in different versions,” these incremental and iterative fixations
“[do not] constitute[] separate work[s].”
Thus, far from supporting the quantum view, the statute suggests that copyright works
mutate overtime through a process of self-erasure within version, however when a certain
threshold is crossed a new consolidated work springs into being. That threshold between
consolidation and multiplicity is whether a new “version” of the work has been produced.
The key then is to identify when an iterative fixation constitutes a different version (and thus
a new work) and when it merely creates a new consolidated work that subsumes previous
fixations.
We can explore this distinction by returning to the poetry hypothetical above and
considering some permutations:
(1) If Poet died after completing line 4 of Questions, then lines 1 to 4 would constitute the
consolidated work as of that moment in time, regardless of her intention to keep working on
the poem and make it something more. No one would dispute this.

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(2) If Poet published or registered the first four lines of Questions with the Copyright Office,
that would establish (at least presumptively) that those four lines were a distinct version of
the work. In that case the addition of another four lines would create a new version of the
work, not merely a new consolidated work that subsumed previous fixations. That new work
would be a derivative work based upon the original four line version.
(3) But if Poet regarded the complete eight line poem work as the work, held it out to the
public as such (by general public display or general publication), and registered it with the
Copyright Office as a single work, there is no reason to think that any of the more than a
dozen potential subworks identified above are “different versions” and thus “separate works.”
The reader may well ask why any of this matters? Fair question, often it does not matter at
all. But to see why it might matter, let’s continue the story above. Suppose that on
Wednesday Plagiarist reads the words Poet wrote on Monday and composes his own poem,
Answers, as follows:
We separate ourselves from our friends
Where do we see the future transpire?
On the dark glass of our present fire.

In the copyright suit between Poet and Plagiarist, should the court compare Answers to the
first four lines of Questions, to all eight lines of Questions, or can Poet argue that whatever else
she might own, she is also the copyright owner in a distinct copyrighted work consisting of
lines two, three, and four of Questions (these being the lines that most closely correspond to
Answers)? Perhaps not much turns on this distinction in this example, but suppose Poet’s
grand work was a 600-page novel. Then all of a sudden, this kind of retrospective
gamesmanship would undermine the requirement of substantial similarity at the heart of the
reproduction right.
***
In summary, the serial progressive (as opposed to instant) fixation of a work by an author
leads to the disappearance of old works into new works. In other words, the new
consolidated work subsumes previous fixations of the work. This disappearance is neither
troubling nor surprising. It is both common sense and what a plain reading of the statute
requires.
This reading minimizes the discontinuity between the copyright system under the 1909 Act
and the current system; it consolidates ownership of copyrighted works into discrete and
manageable units of economic significance; and it aligns the technical ownership structure of
copyrighted expression with conventional understandings of the works at issue. Indeed,
because the key distinction between a new work with a separate copyright and a new
consolidated work that subsumes previous fixations of the work is whether the new fixation
is regarded as a “new version”, conventional and common sense understanding of the works
at issue will likely be the deciding factor in the mine run of cases.

Thought experiments on the disappearance of subworks in joint works
The quantum view of copyright works and the disappearance objection are also fatally
undermined by the way the Copyright Act of 1976 deals with joint works. To see why,
consider the following scenarios for the creation of new song by lyricist Andy and musician
Becca.

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Scenario 1: synchronous creation and unitary fixation
In the first scenario, we have synchronous creation and unitary fixation, i.e., the different
contributions that go into the song (words and music) are created at the same time and there
is only one fixed copy of the work created.
Andy composes lyrics off the top of his head and whispers them to Becca. Becca improvises
a tune and sings the lyrics. To keep the story simple, we can image that the words and music
are transcribed in real time by an efficient but uncreative musical amanuensis—a recording
would do just as well to fix the musical work, but it would also create a second work in the
form of a sound recording, which seems like an unnecessary complication for the time being.
What are the underlying copyright interests in the musical work as recorded by the scribe? If
we were designing a copyright system on a blank slate, a few plausible overlapping answers
come to mind:
(i)
(ii)
(iii)

Andy and Becca could be the joint-authors of a musical work consisting of words and
music;
Andy could be the owner of a distinct literary work consisting of just the words; and/or
Becca could be the owner of a distinct musical work consisting of just the composition.

In theory we could combine all these options, or any two of them.
What does the Copyright Act say?
17 U.S. Code § 201. Ownership of copyright
(a) Initial Ownership.--Copyright in a work protected under this title vests initially in the
author or authors of the work. The authors of a joint work are co-owners of copyright
in the work.
17 U.S. Code § 101
A “joint work” is a work prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts of a unitary whole.

Section 201 of the Copyright Act of 1976 provides that: “the authors of a joint work are coowners of copyright in the work.” The term “joint work” is defined in Section 101 as “a
work prepared by two or more authors with the intention that their contributions be merged
into inseparable or interdependent parts of a unitary whole.”
The Andy/Becca hypothetical above has been carefully constructed—contrived even—to
make one conclusion irresistible, that Andy and Becca are joint-authors of a musical work
consisting of words and music. The conclusion is irresistible because their contributions are
simultaneous and there is only one fixation. The setup could easily be altered so that
potential subworks A (words alone) and B (music alone) were individual copyrightable
works, but that conclusion is unavailable under the scenario presented. The shared intention
evident in the simultaneous creation and unitary fixation make it obvious in scenario 1 that
the only work is a joint musical work AB.
Scenario 2: Asynchronous creation and multiple fixations
Now we turn to a more difficult scenario. Suppose Andy writes lyrics intending that they will
be combined with Becca’s music, but that music has not been written yet. Once the words
and music have been integrated to Andy and Becca’s satisfaction, we need to take stock of
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the copyrighted works that result from this collaboration and the respective rights of Andy
and Becca in those works. Again, it is helpful to set out some possibilities.
(i) Joint work AB
(ii) Original work A + joint work AB (a derivative work based on A)
(iii) Original work A + Original work B

The first possibility is that, just like in the synchronous creation and unitary fixation scenario
sketched out above, there is only one work, and it is a joint work consisting of words and
music. The second possibility is that Andy owns a literary work consisting of his words and
Andy and Becca are co-owners of joint work that is a derivative work based on Andy’s
original work. The third and final possibility is that Andy owns his original literary work,
Becca owns her musical work, and there is no joint work. If this was the outcome, then the
combined use of the words and music together would require the separate approval of both
authors.
Which of these results actually transpires depends on an assessment of multiple factors. If
Andy and Becca agreed in advance that their contributions would remain independent, then
they would lack the vital “intention that their contributions be merged” under the Section
101 definition. With an objectively demonstrable lack of intention that their contributions be
merged, Option 3 is the only option. This remains true even if Andy and Becca’s
contributions would be more efficiently exploited under some alternative ownership
structure.
Option 2 is a possibility,110 but only under some circumstances. For Andy to be the sole
author of A and co-author of AB, Andy would need to add some copyrightable expression
to the new work AB, new copyrightable expression beyond what was already inherent in A.
Without some minimal change to A to facilitate its merger with B, Andy can’t claim to be an
author of the new AB work and also remain the author of a distinct work A. Indeed, there
can’t be a new AB work at all without some amendment to A, let’s call it A-prime. So we need
to restate option 2 as A + A-primeB. Assuming Andy makes some additional contribution
beyond A, then it is possible that we would be left with the original work A, and derivative
joint work A-primeB. But if Andy and Becca have the required “intention that their
contributions be merged” and Andy contributes no new or revised expression beyond A,
then option 2 is no longer a possibility and option 3 where there is no joint work AB seems
counter-intuitive. After all, it is black letter law that simultaneous collaboration is not
required for the creation of a joint work. All that the Copyright Act requires is that the
contributors are “authors” who “intend[] that their contributions [are] merged into
inseparable or interdependent parts of a unitary whole.”
If option 2 disappears when Andy fails to make any additional contribution and option 3
defies the intention and reasonable expectations of the parties that there will be a joint work,
then we are left with option 1 as the only plausible outcome. In this scenario, there is only one
work; it is joint work comprising words and music.
But where does the copyright go?

110 In Greene v. Ablon, 794 F.3d 133 (1st Cir. 2015) the First Circuit held that a work can be both a “joint work”

and a “derivative work,” simultaneously.

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Of course, option 1 brings us back to the disappearing works objection. To see why, let’s
begin with the same set up that led to option 1 and change the facts such that Andy and
Becca never actually reach an agreement on the merger of their contributions (due to artistic
differences, untimely death, apathy, or distraction). In that case, the subworks A and B
would be recognized as separate copyrighted works. But in a happier world where Andy and
Becca agree on a joint work, these potential individual subworks are subsumed into the
greater joint work. Admittedly, this means that the boundaries of the copyrighted work take
on Schrodinger’s Cat-like quality. Copyrighted works exist at one point in time but then later
effectively vanish if they are merged into a larger copyrighted work.
This possibility of disappearing copyright should not be surprising; it is exactly what the
Copyright Act contemplates and it is clearly reflected in the relevant case law. In terms of the
statute, it is telling that Section 101 refers to contributions being “merged into inseparable or
interdependent parts of a unitary whole.” To merge means to combine to form a single
entity, the word “merged” is used in this context in the sense that the two potentially
separate works are blended, fused, or integrated into one. Submergence is not inevitable in
every permutation of the words and music hypothetical discussed above, but it is the
common outcome.
That copyrighted works disappear into larger copyrighted works should not be controversial
in light of the case law. In Edward B. Marks Music Corp v. Jerry Vogel Music Co., 140 F.2d 268
(2d Cir. 1944), a lyricist and composer were found to be co-authors where the lyricist wrote
the words for the song, intending that someone else would eventually compose the music
for those particular words. Judge Hand explained that:
It makes no difference whether the authors work in concert, or even whether they
know each other; it is enough that they mean their contributions to be
complementary in the sense that they are to be embodied in a single work to be
performed as such. That was the case here: Marks wrote the words for a song;
Loraine composed the music as music for that song. It is true that each knew that
his part could be used separately; the words, as a 'lyric;' the melody as music. But
that was not their purpose; the words and the music were to be enjoyed and
performed together; unlike the parts of a 'composite work,' each of which is
intended to be used separately, and whose only unity is that they are bound
together….

For a similar case under the 1976 Act, see C & C Entertainment, Inc. v. Rios-Sanchez, 208 F.
Supp. 2d 139, 143 (D.P.R. 2002) holding that the song “Veneno” was the joint work of
plaintiff and Castillo-Paredes, and the defendants did not infringe on Rivera’s copyright.
The line between submerged and separate
What determines whether subworks A and B are submerged or separate? The same kinds of
factors that courts must consider in figuring out whether serial fixations of a sole authored
work are distinct “versions” of that work, each with a separate copyright existence. These
include: the intention of the parties, objective evidence of how the work(s) were presented to
and received by the public, copyright registration, and the norms and conventions of the
applicable genre. In Shapiro v. Jerry Vogel Music Co., 221 F.2d 569 (2d Cir. 1955) (the Twelfth
Street Rag case), the Second Circuit found that the intention required for joint authorship
could be formulated post hoc by an assignee of the original copyrighted work. This goes too
far, but there is no reason in law or policy why the actual author of work A couldn’t form
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the intention to merge her contribution with the contributions of another author after her
initial fixation. Indeed, co-authors should face no more exacting constraint here than sole
authors would face in the case of serial fixation discussed above. In the case of a sole author,
iterative fixation creates a new consolidated work that subsumes previous fixations of the
work, unless the additional fixation would be regarded as a “new version” and thus a new
work with a separate copyright.
Submergence of and loss of authorship
Garcia and Casa Duce go one step further than the submergence of sole-authored work A into
a co-authored work AB discussed above. In Garcia and Casa Duce potentially copyrightable
subworks were subsumed into a larger work resulting in a loss of potential rights for
someone who might have been recognized as an author of the subwork. This seems like the
right outcome under the logic of Aalmuhammed. In that case, the Ninth Circuit was at pains
to point out that the quantum of creativity required to establish that a work was
copyrightable was not the same quantum required to determine contested claims of
authorship. The Feist question is an objective inquiry into the sufficiency of creativity to
ground a claim of copyrightability, the question in cases like Aalmuhammed, Garcia, and Casa
Duce is not whether the work is copyrightable, but which of multiple contributors should be
regarded as the author or authors of that work.
***

The problem of temporarily contingent works
Consider the following hypotheticals set around a Central Park photo shoot. Amanda, a
professional photographer, arranges for her young niece to dress in a particular outfit chosen
by Amanda and to meet her in Central Park by the Alice in Wonderland statue. Amanda sets
up an SLR camera on a tripod and instructs the girl where to stand, her posture, facial
expression, and affect. If we compare this scenario to the Supreme Court's decision in Sarony
(extracted in a previous chapter), the sum total of these decisions should be enough to satisfy
the originality requirement and have us regard Amanda as the author of any photos she takes.
But now consider the following variations:
Variation 1:
Bob is an amateur photographer who happens upon the scene with his own SLR Camera
with all settings on automatic. While Amanda is preparing to take her photo, but before she
does so, Bob fires off a few shots with his camera very near to where Amanda has placed her
tripod. Is Bob an infringer?
Variation 2:
As above, except that Bob takes his photo a millisecond after Amanda takes her first photo.
Is Bob an infringer?

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Variation 3:
In this scenario Bob is Amanda. In other words, there is no second photographer but there
are two photos. Should we think of Amanda’s second photo as a copy of her first one? Is it a
derivative work based on the earlier photo? Or, is it a separate copyrighted work? Should
Amanda be able to obtain a separate copyright registration for each photo? If Amanda only
registers one of the photos and an unscrupulous third-party copies the other photo, does
Amanda meet the statutory requirements for bringing a federal lawsuit and for obtaining
statutory damages and attorneys fees?
Discussion
In variation one, Bob has taken a photo that embodies a number of artistic and creative
choices made by Amanda, but it's hard to argue that this is copyright infringement. The
scene that Amanda has created is not copyrightable because it is not fixed. Although
Amanda manifested some creativity in the setup of her photo, she does not actually get
copyright until she fixes that creativity in some non-transitory medium, i.e. until she takes
the photo. So, we can’t say that Bob has reproduced Amanda's copyrighted work when his
work was first in time.
Arguably, Amanda faces a similar problem in variation 2. Even though Bob’s photo occurs
functionally after her own photo comes into existence, it’s still difficult to see how we can
say that Bob has reproduced Amanda's copyrighted work. You could argue that he has
indirectly copied the work by copying the setup, but that seems unsatisfactory. The reason
why it’s unsatisfactory is that on this theory, Bob’s liability for infringement depends not on
his access to the copyrighted work, but on a mere accident of timing as to whether he took
his photo a millisecond before, or millisecond after Amanda’s first photo.
If you conclude in the second variation that Bob's photo does not infringe Amanda's
copyright, then does that imply that the two photos in variation three separate and
independent copyrighted works?

Emergent and hyper-textual works
[Placeholder: A future draft of this chapter will also address the issue of emergent and hypertextual works.]

Copyrightable Characters (and Musical Hooks and Riffs)?
Any discussion of principles for locating the boundaries of the copyrighted work must
address the persistent claim that characters are copyrightable. Character and story are
inexorably linked, but also conceptually distinct. A character is a person, animal, or even an
inanimate object imbued with personality that is a recognizable expressive creation.
The notion that characters are copyrightable has been long accepted, but that is somewhat
perplexing. Copyright does not protect the mere concept of a character, nor a character’s

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name. But if a character is delineated with sufficient detail, textually, visually, or both, the
character will usually be treated by the courts as a distinct copyright entity, separate from the
underlying literary, artistic or other work that introduced the character to the world. And yet,
you can’t register a character with the Copyright Office separate from some underlying work
of visual art, literary work, etc. because characters as such are not enumerated in the statute
as a separate class of copyrightable work in Section 102(a). The Copyright Office
Compendium states that “a work that depicts or describes a particular character may be
registered” but the office does not recognize characters as freestanding works disassociated
from the work that depicts or describes them.
Compendium III, 313.4(H) Characters
Although the copyright law does not protect the name or the general idea for a
character, a work that depicts or describes a particular character may be registered if
it contains a sufficient amount of original authorship.
A registration for a visual art work, a literary work, or a work of the performing arts
that depicts or describes a character covers the expression set forth in the deposit
copy(ies), but it does not cover the character per se. In other words, the copyright in
the registered work protects the author’s expression of the character, but it does not
protect the mere concept of the character. The copyright in the character itself is
limited to the artistic rendition of the character in visual form or the literary
delineation of the character’s specific attributes in textual form. (The trade- mark
law may provide additional protection for the character’s name or other attributes if
the character is sufficiently distinctive and is used to identify the source of the
trademark owner’s goods or services.)

In my opinion, characters are not really copyrightable works as such,111 but in the context of
an infringement action it is a reasonable time-saving heuristic to talk about them as though
they were.
One way to think of copyright in characters is by way of analogy to pop music. The typical
pop song plays for about 2 to 3 minutes and has a verse-chorus structure with a focus on
melodies and catchy hooks (repeated lyrical phrases), and usually a chorus that contrasts
melodically, rhythmically and harmonically with the verse. A riff is series of notes, chord
pattern or musical phrase repeated within a song. Typically, each song is single musical work
and would be registered for copyright as such. However, in many cases one musician has had
to pay royalties to another for copying far less than the entire song.
For example, the guitar riff in Vanilla Ice’s 1990 hit Ice Ice Baby is almost identical to Under
Pressure by Queen and David Bowie. The guitar riff is not a distinct copyright entity unto
itself, but slavishly copying the riff was enough to make Ice Ice Baby an infringing copy of
Under Pressure. Courts could take the mental shortcut of talking about the guitar riff as a
distinct copyrighted work, but they don’t. A guitar riff is not a distinct copyrighted work, but
in cases where it displays sufficient creativity and originality it may as well be. In other words,
a court may well find that by copying the riff of a song, the defendant has created something

111 For a similar argument, see Leslie Kurtz, The Independent Legal Lives of Fictional Characters, 3 WIS. L. REV. 429,

440 (1986) (arguing that by “focusing on the copyrightability of a character, courts have blurred the distinction
between the concepts of infringement and copyrightability;”) and more recently, Jani McCutcheon, Works of
Fiction: The Misconception of Literary Characters As Copyright Works, 66 J. Copyright Soc'y U.S.A. 115 (2019).

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that is substantially similar to the original, even though defendant’s song differs significantly
in many other respects.
Copyright in a work, such as novel, a motion picture, or a comic book, protects the author’s
expression of the character, but it does not literally give rise to a separate copyright in the
character itself. However, just like the distinctive guitar riff in Under Pressure, there are many
instances where closely copying the character will be enough to establish infringement of the
underlying work. The only difference is that with respect to characters, courts tend to adopt
the shortcut of talking about the character as it were a free-standing copyrighted work.

Tests of the “copyrightability” of characters
Courts use the heuristic of copyrightable characters to assess whether one work that copies a
character from another work should be held liable for infringement. Accordingly, the
approach the courts take to determining whether a character is "copyrightable" are extremely
important. Important, but misleading. For the reasons discussed, these tests are not actually
determining whether a character is copyrightable as a separate work. What these tests are
really doing is establishing when copying a character will be sufficient to infringe the
underlying work in which the character is depicted or expressed.
To be clear, this is not how the courts see it. According to a recent Ninth Circuit case,
Daniels v. Walt Disney Company (9th Circuit 2020):
Although characters are not an enumerated copyrightable subject matter under the
Copyright Act, see 17 U.S.C. § 102(a), there is a long history of extending copyright
protection to graphically-depicted characters.

The Ninth Circuit accepts two tests for character copyrightability. In Warner Bros. Pictures, Inc.
v. Columbia Broadcasting System, 216 F.2d 945, 950 (9th Cir. 1954) (the Sam Spade case) the
court held that no character was protectible by copyright unless “the character really
constitutes the story being told.”
The Sam Spade case is an odd case because, in effect, the author of the character and the
alleged infringer were the same person. Author Dashiell Hammett had given Warner Bros.
the right to make a motion picture version of his novel The Maltese Falcon, whose principal
character was the fictional detective Sam Spade. The contract gave Warner “exclusive rights
to the use of The Maltese Falcon 'writings' in moving pictures, radio, and television.” And so,
when Hammett tried to license radio plays of subsequent Sam Spade stories to CBS, Warner
sued.
As a matter of contractual interpretation, the Ninth Circuit ruled that copyright did not
normally include or protect characters and thus the rights in the Sam Spade character had
never been included in the contract. In the course of this ruling the court announced that no
character was protectable by copyright unless “the character really constitutes the story being
told.”
In DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015) the Ninth Circuit set forth a different
test, holding that a character is entitled to copyright protection if (1) the character has
"physical as well as conceptual qualities," (2) the character is "sufficiently delineated to be
recognizable as the same character whenever it appears" and "display[s] consistent,
identifiable character traits and attributes," and (3) the character is "especially distinctive"
and "contain[s] some unique elements of expression." Id. at 1021.

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The second prong of Towle requires that a character must be "sufficiently delineated to be
recognizable as the same character whenever it appears." The character need not have a
consistent appearance, but it "must display consistent, identifiable character traits and
attributes" such that it is recognizable whenever it appears. This seems like a fuzzy test, but
as the court explained recently in Daniels v. Walt Disney Company:
Consistently recognizable characters like Godzilla or James Bond, whose physical
characteristics may change over various iterations, but who maintain consistent and
identifiable character traits and attributes across various productions and
adaptations, meet the test. See Tono Co. v. William Morrow & Co., 33 F. Supp. 2d 1206,
1215 (C.D. Cal. 1998) (finding that Godzilla is consistently a “pre-historic, firebreathing, gigantic dinosaur alive and well in the modern world”), Metro-GoldwynMayer, Inc. v. Am. Honda Motor Corp., 900 F. Supp. 1287, 1296 (C.D. Cal. 1995)
(noting that James Bond has consistent traits such as “his cold-bloodedness; his
overt sexuality; his love of martinis ‘shaken, not stirred;’ his marksmanship; his
‘license to kill’ and use of guns; his physical strength; his sophistication”). By
contrast, a character that lacks a core set of consistent and identifiable character
traits and attributes is not protectable, because that character is not immediately
recognizable as the same character whenever it appears. See, e.g., Olson, 855 F.2d at
1452-53 (holding that television characters from "Cargo" are too "lightly sketched"
to be independently protectable by copyright).
There, we recognized [in Towle] that from the time of the 1966 television series to
the 1989 motion picture, the Batmobile had numerous identifiable and consistent
character traits and attributes. It was always a "crime-fighting car" that allowed
Batman to defeat his enemies. It consistently had jet-engines and far more power
than an ordinary car, the most up-to-date weaponry, and the ability to navigate
through landscapes impassible for an ordinary vehicle.

Warner Brothers and Towle are two different tests for character copyrightability, the former
seems more apt for literary works and the later for characters that emerge from comics, film
and television.
Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496 (7th Cir. 2014)
POSNER, Circuit Judge.
Arthur Conan Doyle published his first Sherlock Holmes story in 1887 and his last in
1927. There were 56 stories in all, plus 4 novels. The final 10 stories were published
between 1923 and 1927. As a result of statutory extensions of copyright protection
culminating in the 1998 Copyright Term Extension Act, the American copyrights on
those final stories (copyrights owned by Doyle's estate, the appellant) will not expire
until 95 years after the date of original publication — between 2018 to 2022,
depending on the original publication date of each story. The copyrights on the other
46 stories and the 4 novels, all being works published before 1923, have expired.
Once the copyright on a work expires, the work becomes a part of the public
domain and can be copied and sold without need to obtain a license from the holder
of the expired copyright. Leslie Klinger, the appellee in this case, co-edited an
anthology called A Study in Sherlock: Stories Inspired by the Sherlock Holmes Canon (2011)
— "canon" referring to the 60 stories and novels written by Arthur Conan Doyle, as
opposed to later works, by other writers, featuring characters who had appeared in

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the canonical works. Klinger's anthology consisted of stories written by modern
authors but inspired by, and in most instances depicting, the genius detective
Sherlock Holmes and his awed sidekick Dr. Watson. Klinger didn't think he needed a
license from the Doyle estate to publish these stories, since the copyrights on most
of the works in the "canon" had expired. But the estate told Random House, which
had agreed to publish Klinger's book, that it would have to pay the estate $5000 for a
copyright license. Random House bowed to the demand, obtained the license, and
published the book.
Klinger and his co-editor decided to create a sequel to A Study in Sherlock, to be called
In the Company of Sherlock Holmes. They entered into negotiations with Pegasus Books
for the publication of the book and W.W. Norton & Company for distribution of it
to booksellers. Although the editors hadn't finished the book, the companies could
estimate its likely commercial success from the success of its predecessor, and thus
decide in advance whether to publish and distribute it. But the Doyle estate learned
of the project and told Pegasus, as it had told Random House, that Pegasus would
have to obtain a license from the estate in order to be legally authorized to publish
the new book. The estate didn't threaten to sue Pegasus for copyright infringement if
the publisher didn't obtain a license, but did threaten to prevent distribution of the
book. It did not mince words. It told Pegasus: "If you proceed instead to bring out
Study in Sherlock II [the original title of In the Company of Sherlock Holmes]
unlicensed, do not expect to see it offered for sale by Amazon, Barnes & Noble, and
similar retailers. We work with those compan[ies] routinely to weed out unlicensed
uses of Sherlock Holmes from their offerings, and will not hesitate to do so with
your book as well." There was also a latent threat to sue Pegasus for copyright
infringement if it published Klinger's book without a license, and to sue Internet
service providers who distributed it. Pegasus yielded to the threat, as Random House
had done, and refused to publish In the Company of Sherlock Holmes unless and
until Klinger obtained a license from the Doyle estate.
Instead of obtaining a license, Klinger sued the estate, seeking a declaratory
judgment that he is free to use material in the 50 Sherlock Holmes stories and novels
that are no longer under copyright, though he may use nothing in the 10 stories still
under copyright that has sufficient originality to be copyrightable — which means: at
least a tiny bit of originality, Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S.
340, 345 (1991) ("at least some minimal degree of creativity ... the requisite level of
creativity is extremely low").
[Klinger prevailed and on appeal, the estate argued that] copyright on a "complex"
character in a story, such as Sherlock Holmes or Dr. Watson, whose full complexity
is not revealed until a later story, remains under copyright until the later story falls
into the public domain. The estate argues that the fact that early stories in which
Holmes or Watson appeared are already in the public domain does not permit their
less than fully "complexified" characters in the early stories to be copied even though
the stories themselves are in the public domain.
…
The issue as we said is whether copyright protection of a fictional character can be
extended beyond the expiration of the copyright on it because the author altered the

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character in a subsequent work. In such a case, the Doyle estate contends, the
original character cannot lawfully be copied without a license from the writer until
the copyright on the later work, in which that character appears in a different form,
expires.
We cannot find any basis in statute or case law for extending a copyright beyond its
expiration. When a story falls into the public domain, story elements — including
characters covered by the expired copyright — become fair game for follow-on
authors, as held in Silverman v. CBS Inc., 870 F.2d 40, 49-51 (2d Cir.1989), a case
much like this one. At issue was the right to copy fictional characters (Amos and
Andy) who had appeared in copyrighted radio scripts. The copyrights covered the
characters because they were original. As in this case the characters also appeared in
subsequent radio scripts that remained under copyright, though the copyrights on
the original scripts in which the characters had appeared had expired. The court
ruled that "a copyright affords protection only for original works of authorship and,
consequently, copyrights in derivative works secure protection only for the
incremental additions of originality contributed by the authors of the derivative
works." The copyrights on the derivative works, corresponding to the copyrights on
the ten last Sherlock Holmes stories, were not extended by virtue of the incremental
additions of originality in the derivative works.
And so it is in our case. The ten Holmes-Watson stories in which copyright persists
are derivative from the earlier stories, so only original elements added in the later
stories remain protected. The "freedom to make new works based on public domain
materials ends where the resulting derivative work comes into conflict with a valid
copyright," Warner Bros. Entertainment, Inc. v. X One X Productions, 644 F.3d 584, 596
(8th Cir. 2011) — as Klinger acknowledges. But there is no such conflict in this case.
Lacking any ground known to American law for asserting post-expiration copyright
protection of Holmes and Watson in pre-1923 stories and novels going back to 1887,
the estate argues that creativity will be discouraged if we don't allow such an
extension. It may take a long time for an author to perfect a character or other
expressive element that first appeared in his early work. If he loses copyright on the
original character, his incentive to improve the character in future work may be
diminished because he'll be competing with copiers, such as the authors whom
Klinger wishes to anthologize. Of course this point has no application to the present
case, Arthur Conan Doyle having died 84 years ago. More important, extending
copyright protection is a two-edged sword from the standpoint of inducing creativity,
as it would reduce the incentive of subsequent authors to create derivative works
(such as new versions of popular fictional characters like Holmes and Watson) by
shrinking the public domain. For the longer the copyright term is, the less publicdomain material there will be and so the greater will be the cost of authorship,
because authors will have to obtain licenses from copyright holders for more
material — as illustrated by the estate's demand in this case for a license fee from
Pegasus.
Most copyrighted works include some, and often a great deal of, public domain
material — words, phrases, data, entire sentences, quoted material, and so forth. The
smaller the public domain, the more work is involved in the creation of a new work.
The defendant's proposed rule would also encourage authors to continue to write
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stories involving old characters in an effort to prolong copyright protection, rather
than encouraging them to create stories with entirely new characters. The effect
would be to discourage creativity.
The estate offers the hypothetical example of a mural that is first sketched and only
later completed by being carefully painted. If the sketch is allowed to enter the public
domain, there to be improved by creative copiers, the mural artist will have a
diminished incentive to perfect his mural. True; but other artists will have a greater
incentive to improve it, or to create other works inspired by it, because they won't
have to pay a license fee to do so provided that the copyright on the original work
has expired.
The estate asks us to distinguish between "flat" and "round" fictional characters,
potentially a sharper distinction than the other one it urges (as we noted at the
beginning of this opinion), which is between simple and complex. Repeatedly at the
oral argument the estate's lawyer dramatized the concept of a "round" character by
describing large circles with his arms. And the additional details about Holmes and
Watson in the ten late stories do indeed make for a more "rounded," in the sense of
a fuller, portrayal of these characters. In much the same way we learn things about
Sir John Falstaff in Henry IV, Part 2, in Henry V (though he doesn't actually appear
in that play but is merely discussed in it), and in The Merry Wives of Windsor, that
were not remarked in his first appearance, in Henry IV, Part 1. Notice also that
Henry V, in which Falstaff is reported as dying, precedes The Merry Wives, in which
he is very much alive. Likewise the ten last Sherlock Holmes stories all are set before
1914, which was the last year in which the other stories were set. One of the ten, The
Adventure of the Veiled Lodger (published in 1927), is set in 1896. Thus a more
rounded Holmes or Watson (or Falstaff) is found in a later work depicting a younger
person. We don't see how that can justify extending the expired copyright on the
flatter character. A contemporary example is the six Star Wars movies: Episodes IV,
V, and VI were produced before I, II, and III. The Doyle estate would presumably
argue that the copyrights on the characters as portrayed in IV, V, and VI will not
expire until the copyrights on I, II, and III expire.
The estate defines "flat" characters oddly, as ones completely and finally described in
the first works in which they appear. Flat characters thus don't evolve. Round
characters do; Holmes and Watson, the estate argues, were not fully rounded off
until the last story written by Doyle. What this has to do with copyright law eludes us.
There are the early Holmes and Watson stories, and the late ones, and features of
Holmes and Watson are depicted in the late stories that are not found in the early
ones (though as we noted in the preceding paragraph some of those features are
retrofitted to the earlier depictions). Only in the late stories for example do we learn
that Holmes's attitude toward dogs has changed — he has grown to like them —
and that Watson has been married twice. These additional features, being (we may
assume) "original" in the generous sense that the word bears in copyright law, are
protected by the unexpired copyrights on the late stories. But Klinger wants just to
copy the Holmes and the Watson of the early stores, the stories no longer under
copyright. The Doyle estate tells us that "no workable standard exists to protect the
Ten Stories' incremental character development apart from protecting the completed
characters." But that would be true only if the early and the late Holmes, and the

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early and the late Watson, were indistinguishable — and in that case there would be
no incremental originality to justify copyright protection of the "rounded" characters
(more precisely the features that makes them "rounder," as distinct from the features
they share with their earlier embodiments) in the later works.
It's not unusual for an author to use the same character in successive works, yet with
differences resulting, in the simplest case, just from aging. In Shakespeare's two
Henry IV plays, the Henry who later becomes Henry V is the Prince of Wales, hence
Crown Prince of England; in Henry V he is the King of England. Were Henry IV in
the public domain and Henry V under copyright, Henry Prince of Wales could be
copied without Shakespeare's permission but not Henry V. Could the Doyle estate
doubt this? Could it think Holmes a more complex and altered character than
Henry?
The more vague, the less "complete," a character, the less likely it is to qualify for
copyright protection. An author "could not copyright a character described merely as
an unexpectedly knowledgeable old wino," but could copyright "a character that has
a specific name and a specific appearance. Cogliostro's age, obviously phony title
(‘Count’), what he knows and says, his name, and his faintly Mosaic facial features
combine to create a distinctive character. No more is required for a character
copyright." Gaiman v. McFarlane, 360 F.3d 644, 660 (7th Cir.2004); see also Nichols v.
Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930) (L.Hand, J.). From the outset
of the series of Arthur Conan Doyle stories and novels that began in 1887 Holmes
and Watson were distinctive characters and therefore copyrightable. They were
"incomplete" only in the sense that Doyle might want to (and later did) add
additional features to their portrayals. The resulting somewhat altered characters
were derivative works, the additional features of which that were added in the ten
late stories being protected by the copyrights on those stories. The alterations do not
revive the expired copyrights on the original characters.
We can imagine the Doyle estate being concerned that a modern author might write
a story in which Sherlock Holmes was disparaged (perhaps by being depicted as a
drug dealer — he was of course a cocaine user — or as an idiot detective like
Inspector Clouseau of the Pink Panther movies), and that someone who read the
story might be deterred from reading Doyle's Sherlock Holmes stories because he
would realize that he couldn't read them without puzzling confusedly over the "true"
character of Sherlock Holmes. The analogy would be to trademark dilution … There
is no comparable doctrine of copyright law; parodies or burlesques of copyrighted
works may or may not be deemed infringing, depending on circumstances, but there
is no copyright infringement of a story or character that is not under copyright.
Anyway it appears that the Doyle estate is concerned not with specific alterations in
the depiction of Holmes or Watson in Holmes-Watson stories written by authors
other than Arthur Conan Doyle, but with any such story that is published without
payment to the estate of a licensing fee.
With the net effect on creativity of extending the copyright protection of literary
characters to the extraordinary lengths urged by the estate so uncertain, and no legal
grounds suggested for extending copyright protection beyond the limits fixed by
Congress, the estate's appeal borders on the quixotic. The spectre of perpetual, or at
least nearly perpetual, copyright (perpetual copyright would violate the copyright
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clause of the Constitution, Art. I, § 8, cl. 8, which authorizes copyright protection
only for "limited Times") looms, once one realizes that the Doyle estate is seeking
135 years (1887-2022) of copyright protection for the character of Sherlock Holmes
as depicted in the first Sherlock Holmes story.
AFFIRMED.
Notes and questions
(1) So-called copyrightable characters are often sub-works within actual copyrighted works.
But the more interesting characters commonly evolve across the course of several related
works in a series. Sherlock Holmes and his side-kick, Dr. Watson, began as characters within
“A Study in Scarlet” by Sir Arthur Conan Doyle. Clearly, the Doyle estate’s claim that pre1923 Sherlock Holmes is saved from the public domain because the character was further
developed by works still subject to copyright protection was ridiculous. But is there any
merit in thinking about characters as separate works that emerge from a series of works and
yet somehow transcend those works as well?
(2) After reading this case are you any clearer on what the test of copyrightable characters is
meant to be in the Seventh Circuit?

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12. OWNERSHIP, AUTHORSHIP AND TRANSFER
Initial ownership of copyright interests: International framework
The initial ownership of copyright interests is not addressed by the TRIPs Agreement or the
Berne Convention.

Initial ownership of copyright interests under United States copyright
law
Ownership of the physical embodiment of the work has no bearing on copyright
ownership
Pope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.)
The ownership of any particular physical embodiment of a work, even if it is the original and
only copy, has no bearing on the question of who owns the copyright in the work. This
long-standing principle of copyright law goes all the way back to a 1741 case decided in the
English Court of Chancery, Pope v. Curl, 2 Atk. 342 (1741) (Ch. U.K.).
Alexander Pope was a famous and profitable author in an age when professional authorship
was considered unworthy of a gentleman.112 In pursuit of fame and profit, Pope very much
wanted to publish his correspondence, but as a gentleman he needed a pretext to do so in
order to avoid the charge of vanity. At Pope’s behest, his friend and correspondent Jonathan
Swift (also a famous author) sent an edited collection of their letters to a publisher in Dublin,
Ireland to have them printed. Dublin was beyond the reach of English copyright law, or
indeed any copyright law at the time.
When the disreputable London bookseller, Edmund Curl, republished the same volume of
correspondence (as it seemed Pope hoped he would), Pope sued to protect his honor and
reputation as an author. Curl defended the suit, in part, on the basis that the letters, once
sold and delivered were the property of the receiver, not the author. Lord Hardwicke noted
Curl’s argument and rejected it, saying:
It has been objected, that where a man writes a letter, it is in the nature of a gift to
the receiver.
But I am of opinion it is only a special property in the receiver; possibly the
property in the paper may belong to him; but this does not give a licence to any
person whatsoever to publish them to the world, for at most the receiver has only a
joint property with the writer.

Pope v. Curl established for the first time the fundamental distinction between ownership of a
particular copy of a copyrighted work and the ownership of the copyrighted work. The
principle is reflected in Section 202 of the Copyright Act.

112 This account of Pope v. Curl is based on MARK ROSE, AUTHORS IN COURT: SCENES FROM THE THEATER

OF COPYRIGHT, 11-35 (2016).

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17 U.S. Code § 202. Ownership of copyright as distinct from ownership of
material object
Ownership of a copyright, or of any of the exclusive rights under a copyright, is
distinct from ownership of any material object in which the work is embodied.
Transfer of ownership of any material object, including the copy or phonorecord in
which the work is first fixed, does not of itself convey any rights in the copyrighted
work embodied in the object; nor, in the absence of an agreement, does transfer of
ownership of a copyright or of any exclusive rights under a copyright convey
property rights in any material object.

Authorship and ownership are inextricably entwined
The concepts of ownership and authorship are inextricably entwined under the Copyright
Act of 1976. Copyright ownership vests, at the moment of creation, initially in the author or
authors of the work. Under Section 201 of the Act, the creator of a work is, at least
presumptively, its author and owner of the copyright.
17 U.S. Code § 201. Ownership of copyright
(a) Initial Ownership.--Copyright in a work protected under this title vests initially in
the author or authors of the work. The authors of a joint work are co-owners of
copyright in the work.

Section 201(b) complicates that picture somewhat by introducing the concept of a work
made for hire (see below), but putting that question to one side, we can proceed on the
assumption that authors are owners. The next natural question is of course, how do we
determine who is the author?
The Supreme Court implicitly addressed this question in Burrow-Giles Lithographic Co. v. Sarony
111 U.S. 53 (1884). The issue in Burrow-Giles was whether a staged photograph of Oscar
Wilde qualified for copyright protection at all, but in answering that question, the Court also
elaborated how one might go about determining who is the author. The Court relied on an
English case about the ownership of a photo of the Australian cricket team. In Nottage v.
Jackson, 11 Q.B.D. 627 (1883), the court had to choose between recognizing as author either
the photographer or the enterprise that arranged for the photograph to be taken and sold. In
Burrow-Giles (at 60-61), the Court quotes various members of the House of Lords in Nottage v.
Jackson with approval:
Brett, M.R., said, in regard to who was the author: “The nearest I can come to, is
that it is the person who effectively is as near as he can be, the cause of the picture
which is produced, that is, the person who has superintended the arrangement, who
has actually formed the picture by putting the persons in position, and arranging the
place where the people are to be — the man who is the effective cause of that.”
Lord Justice Cotton said: “In my opinion, ‘author’ involves originating, making,
producing, as the inventive or master mind, the thing which is to be protected,
whether it be a drawing, or a painting, or a photograph;” and Lord Justice Bowen
says that photography is to be treated for the purposes of the act as an art, and the
author is the man who really represents, creates, or gives effect to the idea, fancy, or
imagination.

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Coauthors are joint owners of the work
In Burrow-Giles, the question of whether the work contained enough authorship to be
copyrightable also settled the question of who should be seen as the author of the work.
There was only one photographer and really no other obvious candidate, except perhaps the
subject of the photo himself, Oscar Wilde. The attribution of authorship becomes quite
complex where the work in question was produced by some form of collective effort.
As Section 201 (quoted above) states: “The authors of a joint work are co-owners of
copyright in the work.” A joint work is defined as follows:
17 U.S. Code § 101
A “joint work” is a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or interdependent parts of a unitary
whole.

The authors of a joint work are co-owners of the copyright in the work. Each owns a share
of an undivided whole or is entitled to undivided ownership or interest in the entire work,
despite any differences in each author’s contribution.
Does the division of the copyright interest into multiple interests mean that these interests
must be equal? Certainly, they are equal in their ability to exercise the rights of the copyright
owner, but there is a reasonable argument that these undivided shares need not be equal in
terms of their right to remuneration in the face of unequal contributions.113 How exactly a
coauthor would establish her entitlement to a greater than 50% ownership stakes is an
interesting question.
The implications of joint-ownership are profound. As co-owners of the copyright, joint
authors are treated as tenants in common. Tenancy in common is a common law property
concept. If A and B own real property as tenants in common, each has the right to possess
the 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
can convey nonexclusive rights to the joint work without the consent of his or her coauthor, subject
to a duty to account to the other co-owners for any profit.

Who qualifies as a joint author?
The Copyright Act does not use the terms “joint author” or “co-author,” but the terms are
used interchangeably in the relevant case law to describe the authors of a joint work. To
meet the definition of a joint work under Section 101, the relevant co-authors must have
“the intention that their contributions be merged into inseparable or interdependent parts of
a unitary whole.”
This deceptively simple sentence raises a number of difficult questions:
•

What degree of contribution is required for someone to qualify as an author? Indeed, how
should contribution be measured: aesthetic merit, control, audience appeal, …?

113 See Shyam Balganesh, et al. Amicus Brief in Google v. Garcia. For additional discussion, see Benjamin E. Jaffe,

Rebutting the Equality Principle: Adapting the Co-Tenancy Law Model to Enhance the Remedies Available to Joint Copyright
Owners, 32 Cardozo Law Review 1549 (2011).

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•
•
•

•
•

Does each author need to make the same level of contribution? Are contributions assessed
relative to other authors of the work, or only on some absolute scale?
Do the contributions of each person claiming to be a co-author need to be something that
could have been separately copyrighted?
How specific must the putative authors’ “intention that their contributions be merged” be?
I.e., does each co-author need to have a shared vision of the ultimate creation, or is it
enough that they make their separate contributions in the expectation that those
contributions will be subsumed into a larger work?
When exactly do the potential co-authors need to form the relevant intention? Can they
form it at different times?
How do we distinguish between separate works, derivative works, and sub-works that are
“inseparable or interdependent parts of a unitary whole?”

There are answers to almost all of these questions in the case law, but those answers are not
necessarily the same in each circuit.
Before delving into the case law, it is useful to think about what kinds of joint authorship
cases end up in court. As Shyam Balganesh explains in his 2014 Virginia Law Review article
on Unplanned Coathorship:
In most instances of coauthorship the parties agree with each other in advance, both
as to the nature of the collaboration and on their respective ownership claims to the
final work, necessitating little judicial interpretation (and validation) of the
arrangement. The principal instances that actually reach courts and require their
intervention are instead those where there exists no formal agreement between the
parties, which in turn necessitate courts’ interpretations of the parties’ actions and
behaviors to determine the existence of a common design or the intention to
produce a work of joint authorship. The courts’ task in such situations is usually
further compounded by the parties’ fundamental disagreement about their real
intentions while undertaking the collaboration. In these instances, the status of
coauthorship is determined ex post and imputed to parties, much like how the
objective theory of contract formation interprets the parties’ actions to find the
existence of a contract ex post.
This ex post nature of the determination introduces an important nuance into the
process of determining whether the parties ought to be classified as coauthors. The
absence of an advance ownership arrangement between the parties invariably forces
courts to rely extensively on objective evidence of cooperative behavior, often to the
exclusion of evidence relating to subjective intention on the question of
coauthorship from the time of the work’s creation.114

Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)
Circuit Judge Kleinfeld
In 1991, Warner Brothers contracted with Spike Lee and his production companies
to make the movie Malcolm X, to be based on the book, The Autobiography of
Malcolm X. Lee co-wrote the screenplay, directed, and co-produced the movie,
which starred Denzel Washington as Malcolm X. Washington asked Jefri
Aalmuhammed to assist him in his preparation for the starring role because
Aalmuhammed knew a great deal about Malcolm X and Islam. Aalmuhammed, a
114 Shyamkrishna Balganesh, Unplanned Coauthorship, 100 Va. L. Rev. 1683, 1695-1696 (2014).

419

devout Muslim, was particularly knowledgeable about the life of Malcolm X, having
previously written, directed, and produced a documentary film about Malcolm X.
Aalmuhammed joined Washington on the movie set. The movie was filmed in the
New York metropolitan area and Egypt. Aalmuhammed presented evidence that his
involvement in making the movie was very extensive. He reviewed the shooting
script for Spike Lee and Denzel Washington and suggested extensive script revisions.
Some of his script revisions were included in the released version of the film; others
were filmed but not included in the released version. Most of the revisions
Aalmuhammed made were to ensure the religious and historical accuracy and
authenticity of scenes depicting Malcolm X’s religious conversion and pilgrimage to
Mecca.
Aalmuhammed submitted evidence that he directed Denzel Washington and other
actors while on the set, created at least two entire scenes with new characters,
translated Arabic into English for subtitles, supplied his own voice for voice-overs,
selected the proper prayers and religious practices for the characters, and edited parts
of the movie during post production. Washington testified in his deposition that
Aalmuhammed’s contribution to the movie was “great” because he “helped to
rewrite, to make more authentic.” Once production ended, Aalmuhammed met with
numerous Islamic organizations to persuade them that the movie was an accurate
depiction of Malcolm X’s life.
Aalmuhammed never had a written contract with Warner Brothers, Lee, or Lee’s
production companies, but he expected Lee to compensate him for his work. He did
not intend to work and bear his expenses in New York and Egypt gratuitously.
Aalmuhammed ultimately received a check for $25,000 from Lee, which he cashed,
and a check for $100,000 from Washington, which he did not cash.
During the summer before Malcolm X’s November 1992 release, Aalmuhammed
asked for a writing credit as a co-writer of the film, but was turned down. When the
film was released, it credited Aalmuhammed only as an “Islamic Technical
Consultant,” far down the list. In November 1995, Aalmuhammed applied for a
copyright with the U.S. Copyright Office, claiming he was a co-creator, co-writer,
and co-director of the movie. The Copyright Office issued him a “Certificate of
Registration,” but advised him in a letter that his “claims conflict with previous
registrations” of the film.
On November 17, 1995, Aalmuhammed filed a complaint against Spike Lee, his
production companies, and Warner Brothers.
ANALYSIS
A. Copyright claim
Aalmuhammed claimed that the movie Malcolm X was a “joint work” of which he
was an author, thus making him a co-owner of the copyright. He sought a
declaratory judgment to that effect, and an accounting for profits. He is not claiming
copyright merely in what he wrote or contributed, but rather in the whole work, as a
co-author of a “joint work.” The district court granted defendants summary
judgment against Mr. Aalmuhammed’s copyright claims. We review de novo.

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Aalmuhammed argues that he established a genuine issue of fact as to whether he
was an author of a “joint work,” Malcolm X. The Copyright Act does not define
“author,” but it does define “joint work”:
A “joint work” is a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or interdependent parts of a unitary
whole.

“When interpreting a statute, we look first to the language.” The statutory language
establishes that for a work to be a “joint work” there must be (1) a copyrightable
work, (2) two or more “authors,” and (3) the authors must intend their contributions
be merged into inseparable or interdependent parts of a unitary whole. A joint work
in this circuit requires each author to make an independently copyrightable
contribution to the disputed work.9
Footnote 9: Ashton-Tate Corp. v. Ross, 916 F.2d 516, 521 (9th Cir.1990).

Malcolm X is a copyrightable work, and it is undisputed that the movie was intended
by everyone involved with it to be a unitary whole. It is also undisputed that
Aalmuhammed made substantial and valuable contributions to the movie, including
technical help, such as speaking Arabic to the persons in charge of the mosque in
Egypt, scholarly and creative help, such as teaching the actors how to pray properly
as Muslims, and script changes to add verisimilitude to the religious aspects of the
movie. Speaking Arabic to persons in charge of the mosque, however, does not
result in a copyrightable contribution to the motion picture. Coaching of actors, to
be copyrightable, must be turned into an expression in a form subject to copyright.
The same may be said for many of Aalmuhammed’s other activities. Aalmuhammed
has, however, submitted evidence that he rewrote several specific passages of
dialogue that appeared in Malcolm X, and that he wrote scenes relating to Malcolm
X’s Hajj pilgrimage that were enacted in the movie. If Aalmuhammed’s evidence is
accepted, as it must be on summary judgment, these items would have been
independently copyrightable. Aalmuhammed, therefore, has presented a genuine
issue of fact as to whether he made a copyrightable contribution. All persons
involved intended that Aalmuhammed’s contributions would be merged into
interdependent parts of the movie as a unitary whole. Aalmuhammed maintains that
he has shown a genuine issue of fact for each element of a “joint work.”
But there is another element to a “joint work.” A “joint work” includes “two or
more authors.” Aalmuhammed established that he contributed substantially to the
film, but not that he was one of its “authors.” We hold that authorship is required
under the statutory definition of a joint work, and that authorship is not the same
thing as making a valuable and copyrightable contribution. We recognize that a
contributor of an expression may be deemed to be the “author” of that expression
for purposes of determining whether it is independently copyrightable. The issue we
deal with is a different and larger one: is the contributor an author of the joint work
within the meaning of 17 U.S.C. § 101.
By statutory definition, a “joint work” requires “two or more authors.” The word
“author” is taken from the traditional activity of one person sitting at a desk with a
pen and writing something for publication. It is relatively easy to apply the word
“author” to a novel. It is also easy to apply the word to two people who work
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together in a fairly traditional pen-and-ink way, like, perhaps, Gilbert and Sullivan. In
the song, “I Am the Very Model of a Modern Major General,” Gilbert’s words and
Sullivan’s tune are inseparable, and anyone who has heard the song knows that it
owes its existence to both men, Sir William Gilbert and Sir Arthur Sullivan, as its
creative originator. But as the number of contributors grows and the work itself
becomes less the product of one or two individuals who create it without much help,
the word is harder to apply.
Who, in the absence of contract, can be considered an author of a movie? The word
is traditionally used to mean the originator or the person who causes something to
come into being, or even the first cause, as when Chaucer refers to the “Author of
Nature.” For a movie, that might be the producer who raises the money. Eisenstein
thought the author of a movie was the editor. The “auteur” theory suggests that it
might be the director, at least if the director is able to impose his artistic judgments
on the film. Traditionally, by analogy to books, the author was regarded as the
person who writes the screenplay, but often a movie reflects the work of many
screenwriters. [Richard Grenier, Capturing the Culture] suggests that the person with
creative control tends to be the person in whose name the money is raised, perhaps a
star, perhaps the director, perhaps the producer, with control gravitating to the star
as the financial investment in scenes already shot grows.
Where the visual aspect of the movie is especially important, the chief
cinematographer might be regarded as the author. And for, say, a Disney animated
movie like “The Jungle Book,” it might perhaps be the animators and the composers
of the music.
The Supreme Court dealt with the problem of defining “author” in new media in
Burrow-Giles Lithographic Co. v. Sarony. The question there was, who is the author of a
photograph: the person who sets it up and snaps the shutter, or the person who
makes the lithograph from it. Oscar Wilde, the person whose picture was at issue,
doubtless offered some creative advice as well. The Court decided that the
photographer was the author, quoting various English authorities: “the person who
has superintended the arrangement, who has actually formed the picture by putting
the persons in position, and arranging the place where the people are to be—the
man who is the effective cause of that”; “‘author’ involves originating, making,
producing, as the inventive or master mind, the thing which is to be protected”; “the
man who really represents, creates, or gives effect to the idea, fancy, or imagination.”
The Court said that an “author,” in the sense that the Founding Fathers used the
term in the Constitution, was “‘he to whom anything owes its origin; originator;
maker; one who completes a work of science or literature.’”
Answering a different question, what is a copyrightable “work,” as opposed to who
is the “author,” the Supreme Court held in Feist Publications that “some minimal level
of creativity” or “originality” suffices. But that measure of a “work” would be too
broad and indeterminate to be useful if applied to determine who are “authors” of a
movie. So many people might qualify as an “author” if the question were limited to
whether they made a substantial creative contribution that that test would not
distinguish one from another. Everyone from the producer and director to casting
director, costumer, hairstylist, and “best boy” gets listed in the movie credits because
all of their creative contributions really do matter. It is striking in Malcolm X how
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much the person who controlled the hue of the lighting contributed, yet no one
would use the word “author” to denote that individual’s relationship to the movie. A
creative contribution does not suffice to establish authorship of the movie.
Burrow-Giles, in defining “author,” requires more than a minimal creative or original
contribution to the work. Burrow-Giles is still good law, and was recently reaffirmed in
Feist Publications. Burrow-Giles and Feist Publications answer two distinct questions; who
is an author, and what is a copyrightable work. Burrow-Giles defines author as the
person to whom the work owes its origin and who superintended the whole work,
the “master mind.” In a movie this definition, in the absence of a contract to the
contrary, would generally limit authorship to someone at the top of the screen credits,
sometimes the producer, sometimes the director, possibly the star, or the
screenwriter—someone who has artistic control. After all, in Burrow-Giles the
lithographer made a substantial copyrightable creative contribution, and so did the
person who posed, Oscar Wilde, but the Court held that the photographer was the
author.
The Second and Seventh Circuits have likewise concluded that contribution of
independently copyrightable material to a work intended to be an inseparable whole
will not suffice to establish authorship of a joint work.24
Footnote 24: Thomson v. Larson, 147 F.3d 195, (2nd Cir. 1998); Erickson v. Trinity Theatre, Inc., 13 F.3d
1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2d Cir.1991).

Although the Second and Seventh Circuits do not base their decisions on the word
“authors” in the statute, the practical results they reach are consistent with ours.
These circuits have held that a person claiming to be an author of a joint work must
prove that both parties intended each other to be joint authors. In determining
whether the parties have the intent to be joint authors, the Second Circuit looks at
who has decision making authority, how the parties bill themselves, and other
evidence.
In Thomson v. Larson, an off-Broadway playwright had created a modern version of La
Boheme, and had been adamant throughout its creation on being the sole author. He
hired a drama professor for “dramaturgical assistance and research,” agreeing to
credit her as “dramaturg” but not author, but saying nothing about “joint work” or
copyright. The playwright tragically died immediately after the final dress rehearsal,
just before his play became the tremendous Broadway hit, Rent. The dramaturg then
sued his estate for a declaratory judgment that she was an author of Rent as a “joint
work,” and for an accounting. The Second Circuit noted that the dramaturg had no
decision making authority, had neither sought nor was billed as a co-author, and that
the defendant entered into contracts as the sole author. On this reasoning, the
Second Circuit held that there was no intent to be joint authors by the putative
parties and therefore it was not a joint work.
Considering Burrow-Giles, the recent cases on joint works33 (especially the thoughtful
opinion in Thomson v. Larson), and the Gilbert and Sullivan example, several factors
suggest themselves as among the criteria for joint authorship, in the absence of
contract.
Footnote 33: See Thomson v. Larson, 147 F.3d 195, (2nd Cir.1998); Erickson v. Trinity Theatre, Inc.,
13 F.3d 1061 (7th Cir.1994); Childress v. Taylor, 945 F.2d 500 (2nd Cir.1991).

423

First, an author “superintends” the work by exercising control. This will likely be a
person “who has actually formed the picture by putting the persons in position, and
arranging the place where the people are to be-the man who is the effective cause of
that,” or “the inventive or master mind” who “creates, or gives effect to the idea.”
Second, putative coauthors make objective manifestations of a shared intent to be
coauthors, as by denoting the authorship of The Pirates of Penzance as “Gilbert and
Sullivan.” We say objective manifestations because, were the mutual intent to be
determined by subjective intent, it could become an instrument of fraud, were one
coauthor to hide from the other an intention to take sole credit for the work. Third,
the audience appeal of the work turns on both contributions and “the share of each
in its success cannot be appraised.”40
Footnote 40: Edward B. Marks Music Corp. v. Jerry Vogel Music Co., Inc., 140 F.2d 266, 267 (2nd Cir.
1944) (Hand, J.) modified by, 140 F.2d 268 (1944).

Control in many cases will be the most important factor. The best objective
manifestation of a shared intent, of course, is a contract saying that the parties intend
to be or not to be co-authors. In the absence of a contract, the inquiry must of
necessity focus on the facts. The factors articulated in this decision and the Second
and Seventh Circuit decisions cannot be reduced to a rigid formula, because the
creative relationships to which they apply vary too much. Different people do
creative work together in different ways, and even among the same people working
together the relationship may change over time as the work proceeds.
Aalmuhammed did not at any time have superintendence of the work. Warner
Brothers and Spike Lee controlled it. Aalmuhammed was not the person “who has
actually formed the picture by putting the persons in position, and arranging the
place ....” Spike Lee was, so far as we can tell from the record. Aalmuhammed, like
Larson’s dramaturg, could make extremely helpful recommendations, but Spike Lee
was not bound to accept any of them, and the work would not benefit in the
slightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over
the work, and absence of control is strong evidence of the absence of co-authorship.
Also, neither Aalmuhammed, nor Spike Lee, nor Warner Brothers, made any
objective manifestations of an intent to be coauthors. Warner Brothers required
Spike Lee to sign a “work for hire” agreement, so that even Lee would not be a coauthor and co-owner with Warner Brothers. It would be illogical to conclude that
Warner Brothers, while not wanting to permit Lee to own the copyright, intended to
share ownership with individuals like Aalmuhammed who worked under Lee’s
control, 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
litigation that Aalmuhammed was intended to be a co-author and co-owner.
Aalmuhammed offered no evidence that he was the “inventive or master mind” of
the movie. He was the author of another less widely known documentary about
Malcolm X, but was not the master of this one. What Aalmuhammed’s evidence
showed, and all it showed, was that, subject to Spike Lee’s authority to accept them,
he made very valuable contributions to the movie. That is not enough for coauthorship of a joint work.

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The Constitution establishes the social policy that our construction of the statutory
term “authors” carries out. The Founding Fathers gave Congress the power to give
authors copyrights in order “to promote the progress of Science and useful arts.”
Progress would be retarded rather than promoted, if an author could not consult
with others and adopt their useful suggestions without sacrificing sole ownership of
the work. Too open a definition of author would compel authors to insulate
themselves and maintain ignorance of the contributions others might make. Spike
Lee could not consult a scholarly Muslim to make a movie about a religious
conversion to Islam, and the arts would be the poorer for that.
The broader construction that Aalmuhammed proposes would extend joint
authorship to many overreaching contributors, like the dramaturg in Thomson, and
deny sole authors “exclusive authorship status simply because another person
rendered some form of assistance.” Claimjumping by research assistants, editors, and
former spouses, lovers and friends would endanger authors who talked with people
about what they were doing, if creative copyrightable contribution were all that
authorship required.
Aalmuhammed also argues that issuance of a copyright registration certificate to him
establishes a prima facie case for ownership. A prima facie case could not in any
event prevent summary judgment in the presence of all the evidence rebutting his
claim of ownership. The presumptive validity of the certificate may be rebutted and
defeated on summary judgment. The Copyright Office stated in its response to
Aalmuhammed’s application for copyright (during the pendency of this litigation)
that his claims “conflict with previous registration claims,” and therefore the
Copyright Office had “several questions” for him. One of the questions dealt with
the “intent” of “other authors,” i.e., Warner Brothers. The evidence discussed above
establishes without genuine issue that the answers to these questions were that
Warner Brothers did not intend to share ownership with Aalmuhammed.
Because the record before the district court established no genuine issue of fact as to
Aalmuhammed’s co-authorship of Malcolm X as a joint work, the district court
correctly granted summary judgment dismissing his claims for declaratory judgment
and an accounting resting on co-authorship.
[The judgment of the district court was affirmed as it pertains to this extract.]
Notes and questions
(0) Why didn’t Aalmuhammed cash the $100,000 check from Denzel Washington?
(1) In Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), the Ninth Circuit held that
“substantial and valuable contributions” to a film by a technical consultant did not make the
consultant an author of the joint work in the film. The court explicitly stated that
“authorship is not the same thing as making a valuable and copyrightable contribution.”
Aalmuhammed clearly differentiates between the modest level of creativity required to make a
work copyrightable and the extent of contribution required to claim the status of a co-author
of a joint work.
(2) In assessing contested claims of co-authorship, the Ninth Circuit looks to three factors:
control over the final form of the work; objective manifestations of a shared intent to be
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coauthors; and whether the audience appeal of the work turns on the multiple contributions
such that “the share of each in its success cannot be appraised.” What exactly the court in
Aalmuhammed meant by referring to audience appeal is not entirely clear. In any event,
Aalmuhammed stresses that “control in many cases will be the most important factor.”
(3) Note that the Ninth Circuit does not require a strict requirement of shared intent to be
joint authors, only “objective manifestations” of such an intention. Why does the court
prefer an objective mutual intent standard to subjective intent?
Arguably the courts are more interested in identifying collaborative processes than whether
the parties understood or intended particular legal consequences. See, for example, Strauss v.
Hearst Corp. 1988 WL 18932 (S.D.N.Y. Feb. 19, 1988) where the court found that the
defendant magazine and the professional photographer it hired were coauthors by virtue of
the fact that the defendant’s representative had played an active role in positioning the props
and selecting the photograph to use, and its editors later retouched the photograph before
final publication. As Balganesh explains in Unplanned Coauthorship:
The parties never entered into a formal contractual arrangement specifying their
relationship and ownership over the photographs. At trial, the court concluded that
the parties were indeed coauthors of the photographs. The court’s decision was
based entirely on its analysis of the collaboration involved in producing the
photograph. Rather interestingly, the court disallowed any reliance on evidence
relating to the parties’ subjective state of mind at the time the photographs were
taken and before.115

(4) If coauthorship is simply one type of authorship, it makes sense that anyone claiming the
status of author must add something recognizable as original expression to the joint work.
Many circuits, including the Ninth Circuit in Aalmuhammed, hold that a putative co-author
must go further and make an independently copyrightable contribution to the joint work. In
Gaiman v. McFarlane 360 F.3d 644 (7th Cir. 2004), the Seventh Circuit suggested that this rule
should not apply in situations where no single contribution meets the standard, but the work
would be copyrightable if attributed to a single author.
(5) The issue of timing: in Shapiro v. Jerry Vogel Music Co., 221 F.2d 569 (2d Cir. 1955), the
Second Circuit found that the intention required for joint authorship could be formulated
post hoc. In The Twelfth Street Rag case (as it is commonly known), the musician Euday L.
Bowman had composed an instrumental piano solo in 1914, and assigned his rights thereto
to the Jenkins Music Company. In 1918 the Jenkins Company retained James S. Sumner to
write a lyric for Bowman’s music, but Sumner’s contribution was not a work for hire. The
court held that under these circumstances, the combined words and music constituted a joint
work.
It seems rather remarkable on these facts that the Second Circuit would allow the assignee of
an ownership interest in a musical composition to add new elements to a pre-existing work
and thereby create new ownership interests in the resulting “joint work,” and thus
extinguishing any other ownership interests in the pre-existing work. In Batiste v. Island
Records, Inc., 179 F.3d 217, 222 n.7 (5th Cir. 1999), the Fifth Circuit commented that
“Congress overruled this doctrine in 1976 by adopting the current definition for “joint work,”
which requires that each author intend the merger at the time the author prepares his or her
115 Shyamkrishna Balganesh, Unplanned Coauthorship, 100 VA. L. REV. 1683, 1696-1967 (2014)

426

contribution.” (emphasis added)) This doesn’t seem quite right either. In general, there is no
reason why the intention to merge couldn’t arise after the author prepares her contribution,
after all, the author can change her mind about other aspects of the work without necessarily
creating a new version. Works generally have a certain amount of definitional plasticity until
they are released to the public and not every change to a work creates a new derivative work
layered on top of the old one. However, the Twelfth Street Rag case goes too far in holding
that an assignee of the original author can form that intention. At the moment the work is
transferred, it loses the plasticity that allows it to grow and morph into a joint work.
(6) Note that in the United Kingdom joint works are limited to instances “in which the
contribution of each author is not distinct from that of the other authors.” Copyright Designs and
Patents Act, 20 1988, c. 48, § 10 (UK). In other words, the U.K. position is that a joint work

must be “inseparable” and not just “interdependent.” As the Copyright Office Compendium
(3d) explains at 505.1:
A contribution to a joint work is considered “inseparable” if the work contains a
single form of authorship, such as a novel or painting, and it is considered
“interdependent” if the work contains multiple forms of authorship, such as motion
picture, opera, or the music and lyrics of a song. (Citing Senate Report at 103-104).
Why would the United States and the United Kingdom have a different conception of what
constitutes a joint work? Which is preferable?

Joint works and derivative works
Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989)
Circuit Judge Cardamone
This appeal presents the paradigm of the problems that arise when a long
relationship between accomplished professor and brilliant assistant comes to an end.
Together the two had researched and co-authored scholarly scientific works. When
the appellant — the younger assistant — individually wrote what she considered a
new work, the appellee — the mentor — believing himself a co-author of the new
piece, used his assistant’s work, styling it as his own, and thereby precipitated the
instant litigation.
The parties are both accomplished scientists in the field of nuclear medicine.
Appellant Heidi S. Weissmann, M.D is an Associate Professor of Radiology and
Nuclear Medicine at the Albert Einstein College of Medicine (Einstein), and is an
attending physician specializing in nuclear medicine at the Montefiore Medical
Center (Montefiore). She has received numerous awards in the area of radionuclide
imaging, and published more than 80 scholarly articles. Appellee Leonard M.
Freeman, M.D is also a prolific author, and a noted lecturer in the fields of nuclear
medicine and diagnostic radiology. He has served as President of the Society of
Nuclear Medicine, and currently is a professor of Radiology and of Nuclear Medicine
at Einstein, where he has taught since 1964. He is the Director of the Nuclear
Medicine Service at Montefiore and Vice-Chairman of the Department of Nuclear
Medicine at Einstein.
The parties’ professional association began in 1977 when Dr. Weissmann was in her
fourth year of residency at Montefiore and Dr. Freeman was Chief of the Division of
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Nuclear Medicine at that hospital. In early 1977 appellee was researching the
application of the derivatives of a certain radiopharmaceutical, iminodiacetic acid
(IDA). IDA is a substance labeled with a radioactive isotope that is injected into the
bloodstream and, when picked up by the liver, permits diagnosis of certain liver and
biliary disorders. In the late 1970’s drug manufacturers producing IDA analogs
needed scientists to develop a patient data base to obtain approval of their Food and
Drug Administration applications in order to market the isotopes in the United
States. One selected scientist was Dr. Freeman, who began using the IDA analogs in
his research efforts. As a fourth-year resident, appellant worked on these initial
studies under Dr. Freeman’s tutelage. The parties’ first jointly authored article on
IDA derivatives was published in January 1979. Over the next several years a series
of articles on the use of IDA scanning in diagnosing biliary diseases were published
in the names of Freeman, Weissmann, and other scientists.
Beginning in 1980 the parties worked together as researchers and co-authors of a
number of papers focusing on various aspects of nuclear medicine, particularly IDA
imaging. Prior versions of the work alleged to have been infringed in the instant
litigation were first written in 1980 for a nuclear medicine review course sponsored
by the Harvard Medical School. The district court found that the work in which
appellant claims a copyright (Plaintiff’s exhibit 1 or P-1) is a “syllabus,” that is, a
paper reviewing the state of the art of hepatobiliary imaging techniques, prepared to
accompany lectures, and used by medical residents to study for specialty boards.
From 1980 to 1985 prior versions of P-1 were constantly revised and updated by the
parties in an ongoing cooperative effort.
In 1985 Dr. Weissmann authored the article that precipitated the present copyright
suit. It was entitled “Hepatobiliary Imaging” (P-1), and reported on a relatively new
diagnostic technique employing radioactive analogs of the agent IDA. The work was
prepared as a chapter for the Radiological Society of North America’s book entitled
“Syllabus: A Categorical Course in Nuclear Medicine,” printed and published in 1985.
The publication listed Dr. Weissmann as the article’s sole author.
Appellant’s creation admittedly was derived from previous papers jointly written by
the parties during the course of their professional relationship that extended from
1977 to 1984. An examination of the relevant documents reveals that portions of P-1
were taken virtually verbatim from prior jointly authored pieces that had been
presented at Einstein and at the Mount Sinai School of Medicine (Mount Sinai) in
1983 and 1984 respectively. Although P-1 appears to restate the central propositions
asserted in the prior works, Weissmann’s exhibits includes the following new
elements: (1) a new selection of photo illustrations and associated captions; (2)
references to four recent reports in the pertinent literature; (3) new textual additions;
and (4) reorganization of previous material. Appellee conceded at trial that this
material in P-1 was created solely by appellant.
In the summer of 1987 Dr. Freeman was invited to give a review course on nuclear
medicine at Mount Sinai. He prepared P-1 to use in giving the course by deleting Dr.
Weissmann’s name from P-1 and replacing it with his own, and by adding three
words to the title. Fifty copies of the article were made. Before the date set for the
course, appellant obtained one of the copies, and through counsel requested that her
revised article not be circulated, and that all those who had received copies be
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informed that she claimed sole authorship of it. The article was removed from the
packet of course materials. Dr. Freeman delivered his lecture without the use of his
version of P-1.
After this incident, Weissmann filed the instant suit alleging copyright infringement
in violation of 17 U.S.C. § 501. In her prayer for relief she sought a declaration that
Freeman had committed actionable infringement, an injunction permanently
restraining him from infringing, and an award of actual damages and profits.
After a four-day bench trial, Judge Pollack in a written decision concluded that Dr.
Freeman’s use of P-1 did not violate the copyright law. In support of its
determination that Freeman had not infringed any legally cognizable rights that
appellant may have had in P-1, the district court found that appellee was a joint
author, and therefore a co-owner of any copyright Weissmann acquired in the article.
The trial court also determined that P-1’s new matter was too trivial to qualify for
protection as a derivative work under the copyright statute.
DISCUSSION
I. Joint Authorship
Before discussing whether P-1 was a joint work, we set forth the standard of review
to be applied to the district court’s determination that P-1 was such a work.
Ordinarily the clearly erroneous standard under Fed.R.Civ.P. 52(a) would govern.
But, when a district court makes findings of fact predicated upon an incorrect legal
standard such findings are not binding on an appellate court.
Here the district court determined that the entire series of the parties’ works on the
subject of radionuclide imaging — including the work alleged to have been infringed
— constituted a single evolutionary joint work. It discussed the conceded joint
authorship in the preexisting works. Without making any specific findings respecting
P-1 itself, the court found that Dr. Freeman was a co-owner of P-1 and that P-1 was
a joint work. The trial court made this surprising finding despite Dr. Freeman’s
concession that he had no hand in P-1’s preparation. The finding was made based on
the district court’s mistaken view that joint authorship of the prior existing works
automatically makes the two joint authors co-owners of the derivative work. Such a
ruling stands copyright law on its head. It flies in the face of the Copyright Act which
affords protection to each work at the moment of its creation. Thus, § 101 provides
for those works prepared over time that “the portion of it that has been fixed at any
particular time constitutes the work as of that time, and where the work has been
prepared in different versions, each version constitutes a separate work.”
Of greater significance is that the trial court’s view would convert all derivative
works based upon jointly authored works into joint works, regardless of whether
there had been any joint labor on the subsequent version. If such were the law, it
would eviscerate the independent copyright protection that attaches to a derivative
work that is wholly independent of the protection afforded the preexisting work. See
§ 103(b). Hence, it was a plain error for the district court to rule, as a matter of law,
that Dr. Freeman’s joint authorship of the prior works made him a joint author with
appellant in the derivative work.

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The district court also made a finding of fact that Dr. Freeman was a joint author
with Dr. Weissmann of P-1. Section 201(a) of the Act provides: “Copyright in a
work protected under [the Copyright Act] vests initially in the author or co-authors
of the work.” Section 101 defines a “joint work” as one “prepared by two or more
authors with the intention that their contributions be merged into inseparable or
interdependent parts of a unitary whole.” In a joint work each author automatically
acquires an undivided ownership in the entire work including any portion of it. Thus,
an action for infringement between joint owners will not lie because an individual
cannot infringe his own copyright. The only duty joint owners have with respect to
their joint work is to account for profits from its use.
A review of the meaning of §§ 101 and 103(b) and of their legislative history reveals
two basic criteria that must be satisfied before one is a joint author of a derivative
work. First, each putative author must have “contributed” to the work. Second, each
must intend to contribute to a joint work at the time his or her alleged contribution
is made. Because § 103(b) extends independent protection to derivative works, an
intent to contribute or an actual contribution to previous works does not serve as
proof of ownership in the derivative work. See House Report at 120. We consider
these two criteria.
A. Contribution to Derivative Work
The statute envisions that each author contribute to a joint work. “Under the [§ 101]
definition a work would not be ‘joint’ unless its authors collaborated among
themselves or unless each of the authors knew, at the time the work was being
written, that his contribution would be integrated as an ‘inseparable’ or
‘interdependent’ part of a ‘unitary whole.’” Supplementary Report of the Register of
Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill,
89th Cong., 1st Sess., Copyright Law Revision Part 6, at 65 (House Comm. Print
1965), reprinted in 1 Copyright Law Revision (1964-1965).
In enacting the definition of a joint work set forth in § 101, Congress endeavored to
“make plain that copyright in a derivative work is independent of, and does not
enlarge the scope of rights in, any pre-existing material incorporated in it. There was
thus no need to spell this conclusion out in the definition of ‘joint work.’” House
Report at 120. The legislative history clearly indicates that one cannot be deemed to
be a joint author without actually collaborating in the work’s preparation. Critical
therefore “is the intention, at the time the writing is done, that the parts be absorbed
or combined into an integrated unit.” Id. That intention must be with respect to the
work in which a copyright is claimed, not with respect to the prior works from which
it is derived. See MCA, Inc. v. Wilson, 425 F.Supp. 443, 455 (S.D.N.Y.1976) (owner of
underlying work obtains no property rights in derivative work), aff’d, 677 F.2d 180
(2d Cir.1981).
In the case at hand, because Dr. Freeman conceded that he had not participated in
drafting the new matter included in P-1, it follows as a logical corollary, therefore,
that he acquired no interest in or right to use P-1 beyond those rights which he had
as 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

430

work, the other co-author acquires no property rights in the newly created work
prepared without his involvement.
B. Intent to Contribute to Derivative Work
The second point upon which inquiry is focused is Dr. Weissmann’s intent. The
district court made no express finding on this critical issue. It simply stated in
conclusory fashion that because the parties had intended P-1’s predecessors to be
used jointly as a “stock piece” to accompany their review lectures, they had
somehow impliedly agreed that all future works on the subject of radioactive analogs
of IDA, including P-1, would also be a joint work.
In order for a work to be deemed a joint work, the parties must evince “the intention
that their contributions be merged,” § 101 (emphasis added), “at the time the writing
is done,” House Report at 120, not at some later date. The law on this point is set forth
in Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 266 (2d Cir.1944) (L.
Hand, J.). There it was observed that a finding of joint authorship requires that each
author intend his or her contribution, at the time that it is created, to become part of
a unitary work to which another will make or already has made a contribution. Or, as
Judge Hand stated it, “when both plan an undivided whole ..., their separate interests
will be as inextricably involved, as are the threads out of which they have woven the
seamless fabric of the work.” Id. at 267; see also Shapiro, Bernstein & Co. v. Jerry Vogel
Music Co., (“Melancholy Baby”), 161 F.2d 406, 409 (2d Cir.1946).
Marks was a case in which one individual had written the lyrics for a song and
another had written the music. Neither party knew the other, but both were aware
that their individual efforts would not stand alone. In holding that the resulting song
was a joint work, the critical fact was that both parties were equally aware that their
individual authorship efforts would have to be combined in order to create the final
integrated product — a commercially viable song. See Marks, 140 F.2d at 267. From
this, the rule has evolved that an author who intends to create a joint work must
clearly demonstrate his or her intent in that regard. Although such an intent may, as
in Marks, be inferred from the circumstances surrounding the creation of the work,
in the absence of such a showing, the work is presumed to be the product of an
individual author and is the sole property of its creator.
In the present case, Drs. Weissmann and Freeman collaborated in the preparation
and publication of the works from which P-1 was derived. Yet, there is no evidence
that they intended their joint product to be forever indivisible like the finite whole of
the completed single song in Marks. The facts point to a contrary conclusion.
Scientific research is a quest for new discoveries and the preexisting joint works by
definition were continually evolving. Dr. Weissmann believed she had a new and
better approach and decided to author her research alone. Section 103(b) of the
Copyright Act gives her that right when it extends independent protection to
derivative works. The joint authorship of the underlying work does not confer any
property right in the new work, save those rights which the co-author (here Dr.
Freeman) of the previous works retains in the material used as part of the
compilation of the derivative work. The district court opinion reveals a fundamental
misunderstanding of these principles. This misconception is reflected in its

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discussion of Dr. Weissmann’s intent to merge her efforts with Dr. Freeman based
only on P-1’s predecessors, and not on P-1 itself.
C. Appellant’s Intent to Create a Derivative Work
The remainder of discussion of joint authorship concerns the substantial and
uncontroverted evidence that Dr. Weissmann intended P-1 to be her own individual
work. As a preliminary matter, it is important to note that of the 88 articles, abstracts,
and book chapters listed on her curriculum vitae, 71 credit Dr. Freeman as a coauthor. Appellant’s having deviated from that pattern in submitting P-1 for
publication as a chapter in the Radiological Society of North America’s book under
the name “Heidi S. Weissmann” is persuasive proof of the fact that she intended this
particular piece to represent her own individual authorship. Appellant’s use of her
own by-line on P-1 constitutes prima facie proof that this work was not intended to
be joint. Appellee failed to produce any evidence to rebut appellant’s showing. In
fact, Dr. Freeman lectured at the same meeting at which P-1 was first presented, and
made no objection to the omission of his name from it.
Again, had the trial court separately considered P-1, it would have concluded that
appellant’s article was the only work with respect to which it was repeatedly
conceded that appellee had played no role. Yet, the trial judge found that “plaintiff
did almost all of the writing” for the works listed on her resume of which Freeman
was a “co-author” and that she routinely “submitted drafts to Dr. Freeman before
publication.” It also found that “she would always make sure to leave a copy of a
manuscript on his desk if he was not in town or busy with other commitments; she
did not always get comments back, but often she did.” Hence, it is significant on the
issue of appellant’s intent that P-1 was one of those few works that was not
submitted for Dr. Freeman’s review and on which she did not receive his comments.
These facts — found by the district court — strongly evidence appellant’s intent that
P-1 be solely her own work.
The district court found that Freeman’s participation in the preparation of P-1 was
“strikingly illustrated” by Weissmann’s inclusion in P-1 of a section entitled “FalsePositive Studies for Acute Cholecystitis” which Dr. Freeman had independently
composed for a 1984 Harvard review course. The incorporation of this material into
P-1 is irrelevant to the question of whether or not the parties intended P-1 to be a
joint work. Appellant correctly points out that the inclusion of the “False Positive”
section is not proof of any intention on Dr. Freeman’s part to make a contribution
to P-1 because, prior to 1985, he could not have formed an intent to contribute his
efforts to her then nonexistent work.
In sum, the evidence presented at trial fully supports appellant’s contention that the
work alleged to have been infringed was solely the product of her authorship efforts.
Although her work derived from preexisting jointly authored material, appellee
played no role in P-1’s creation. As a non-contributing party to P-1, Dr. Freeman’s
intent regarding his contributions to the underlying preexisting work is not relevant
to claimed joint authorship of P-1. The district court’s conclusion that P-1 was a
joint work because the entire series of the parties’ articles on IDA, including P-1, was
one evolutionary joint work disregards the copyright protection accorded derivative
works, independent of the preexisting works under § 103(b). As a consequence of its

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plain error of law in this regard, the district court’s finding of fact that Freeman’s coauthorship of the preexisting works also made him a joint author of P-1 is clearly
erroneous.
II. Derivative Work
We now turn attention to whether P-1 qualifies for protection as a derivative work as
that term is defined by the Copyright Act. To establish a claim of copyright
infringement, plaintiff must prove ownership of a valid copyright and copying by the
defendant. With Dr. Freeman’s copying admitted, the only question is whether Dr.
Weissmann owned a valid copyright in a so-called derivative work. Although her
certificate of registration constitutes “prima facie evidence of the validity of the
copyright and of the facts stated in the certificate,” 17 U.S.C. § 410(c), it is not
conclusive on the issue of copyrightability; it merely creates a presumption of validity.
See, e.g., Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980); Past Pluto
Productions Corp. v. Dana, 627 F.Supp. 1435, 1440 (S.D.N.Y.1986) (certificate shifts
burden to defendant to disprove copyright’s validity).
Section 101 of the Copyright Act defines a “derivative work” as one that is based on
“preexisting works.” In addition, § 103(b) provides as follows
The copyright in a compilation or derivative work extends only to the material
contributed by the author of such work, as distinguished from the preexisting
material employed in the work, and does not imply any exclusive right in the
preexisting material. The copyright in such a work is independent of, and does not
affect or enlarge the scope, duration, ownership, or subsistence of, any copyright
protection in the preexisting material.

Section 101 of the statute further defines a derivative work as “[a] work consisting of
editorial revisions, annotations, elaborations, or other modifications which, as a
whole, represent an original work of authorship....” Thus, it is clear that “the manner
of expression, the author’s analysis or interpretation of events, the way he structures
his material and marshals facts, his choice of words, and the emphasis he gives to
particular developments” are protected under the copyright laws. Wainwright Securities,
Inc. v. Wall Street Transcript Corp., 558 F.2d 91, 95-96 (2d Cir.1977).
The principle of derivative work protection is subject to two important limitations,
both of which were purportedly recognized by the district court. To support a
copyright, a derivative work must be more than trivial, and the protection afforded a
derivative work must reflect the degree to which the derivative work relies on
preexisting material, without diminishing the scope of the latter’s copyright
protection. Durham Indus., 630 F.2d at 909. This rule is premised on the notion that”
‘the one pervading element prerequisite to copyright protection regardless of the
form of work’ is the requirement of originality — that the work be the original
product of the claimant.” L. Batlin & Son v. Snyder, 536 F.2d 486, 489-90 (2d Cir.) (en
banc). Originality is and always has been rightly prized. Dostoevsky, for example,
insisted that the measure of a person’s worth in pre-Revolutionary Russia did not
depend so much on money or position, as it did on one’s originality. F. Dostoevsky,
The Idiot, Part I (Garrett Trans.1958). Mill wrote that “nothing was ever yet done
which someone was not the first to do, and ... all good things which exist are the
fruits of originality....” J.S. Mill, On Liberty 271 (Harvard Classics, Eliot ed. 1909).

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In the law of copyright only an unmistakable dash of originality need be
demonstrated, high standards of uniqueness in creativity are dispensed with. In
deciding whether the originality of the matter added in P-1 is sufficient to qualify for
protection as a derivative work, the standard enunciated in Alfred Bell & Co. v. Catalda
Fine Arts, Inc., 191 F.2d 99 (2d Cir.1951) (Frank, J.), remains the law in this Circuit:
“All that is needed to satisfy both the Constitution and the statute is that the ‘author’
contributed something more than a ‘merely trivial’ variation, something recognizably
‘his own’” Id. at 102-03. The originality requirement for a revised version is a
“minimal” or “modest” one. See, e.g., Eden Toys, Inc. v. Florelee Undergarment Co., 697
F.2d 27, 35 (2d Cir.1982); Durham Indus., 630 F.2d at 910.
The district court here concluded that P-1 and its predecessors had evolved over an
extended period of time and that Weissmann’s additions were minuscule,
demonstrating little originality. Although recognizing that the selection and
arrangement of data may merit copyright protection, the trial judge believed that “the
update was done as part of the evolution of the stock piece” and that appellant’s
modifications of the preexisting joint works did not warrant copyright protection.
It was formerly our rule that where, as here, the originality of a work could be
determined entirely by reference to documentary evidence, we were in as good a
position as the district court to evaluate originality. In 1985 Rule 52(a) of Fed.R.Civ.P.
was amended so that findings of fact based upon documentary — along with oral —
evidence are not to be set aside unless clearly erroneous.
In our view the district court implausibly overlooked the fact that appellant’s 1985
selection of subject matter and content drawn from prior works and their
rearrangement in P-1 is sufficiently the product of original authorship to warrant
copyright protection. It failed to give detailed consideration to the new matter that
Weissmann added to the parties’ prior works in her authorship of P-1. Its main
discussion of P-1’s content is a passing reference to the addition of “only” four new
sources from the relevant scientific literature. Although the credibility of the parties
as witnesses was fully discussed, the relevance of such an inquiry is problematic
when the evidence upon which the derivative work determination must be based is
solely documentary. Credibility might have been relevant, for example, had the
question of who actually authored the new material been contested. But it is scarcely
pertinent to determining whether the newly-added matter satisfies the statutory
requirements for protectability. Research has not revealed a single case in which
credibility has been deemed significant — let alone dispositive — on the question of
whether there is a sufficient level of originality in a given work to render it
copyrightable. While the district court’s findings based on the credibility of witnesses
is entitled to deference, the trial judge cannot insulate his findings on originality from
appellate review by calling them credibility determinations. Anderson v. City of Bessemer,
470 U.S. 564, 575 (1985).
Our examination of the relevant documents reveals that Weissmann’s additions and
modifications in P-1 extend well beyond the mere addition of “four sources.” A
thorough review of P-1 and of the works from which it is derived demonstrates that
Dr. Weissmann added the following new elements to the existing prior joint work:
(1) a selection and arrangement of photo illustrations and associated captions; (2)
references to recent reports in the pertinent literature; (3) selection, condensation,
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and description of additional source material; (4) several new textual additions; (5)
substantial rearrangement of the manner and order of presentation of material
contained in the parties’ prior joint works; and (6) the addition of a section on
“congenital disorders,” a revised treatment of “chronic cholecystitis,” and the
incorporation of Dr. Freeman’s “false positive” studies.
The district court found that many of the foregoing additions and revisions repeated
verbatim portions of prior works and, from that finding, concluded that P-1 was
neither new nor copyrightable. This finding wholly ignores the statutory scheme that
expressly protects the selection of subject matter and content from underlying works,
as well as the rearrangement of preexisting material taken from those works. See 17
U.S.C. § 101 (defining derivative work as an “abridgment, condensation or any other
form in which a work may be recast, transformed, or adapted”). Further, a
comparison of the parties’ prior works — including P-1’s most recent predecessor
— at once demonstrates numerous differences, and highlights the fact that P-1 gave
IDA imaging new and original treatment. Moreover, Dr. Freeman’s copying and
distributing P-1 as his own work is further evidence of the nontriviality of Dr.
Weissmann’s work, since copying without regard to a plaintiff’s rights is probative on
the issue of the originality of a work. See Bleistein v. Donaldson Lithographing Co., 188
U.S. 239, 252 (1903) (Holmes, J.) (that works have worth is sufficiently shown by
desire to copy them “without regard to the plaintiff’s rights”).
We conclude therefore that the district court’s holding that Weissmann could not
acquire a copyright in a derivative work based upon a jointly authored work was an
error of law that disregarded the provisions of § 103(b) and the protection it extends
to derivative works. Moreover, Dr. Freeman failed to rebut the prima facie showing
of copyrightability appellant obtained by her certificate of copyright registration. As a
consequence, we hold that Dr. Weissmann’s additions and modifications to the
preexisting joint work satisfy the modest requirements set forth in § 103(b) and in
the relevant case law sufficiently to make P-1 entitled to copyright protection as a
derivative work. The district court’s findings — upon which it reached a contrary
legal conclusion — were clearly erroneous because they have left us, after a thorough
review of all the evidence, with a firm conviction that the district court was mistaken.
For the reasons stated, we hold that P-1 was an individually-authored, copyrightable,
derivative work created by appellant. Accordingly, we reverse the judgment of the
district court and remand the case to it with directions that judgment be entered in
favor of appellant Weissmann.
Circuit Judge Pierce, concurring
I agree that we must reverse and remand because Dr. Freeman failed to rebut
appellant’s claim (evidenced by her registration of P-1 as a derivative work) that she
did not intend the new material to be “merged” with the prior joint work.
Appellant’s certificate of registration served as “prima facie evidence of the validity
of the copyright and of the facts stated in the certificate.” 17 U.S.C. § 410(c) (1982).
For Dr. Freeman to claim that his use was not an infringement, but rather that the
work was “joint,” was a defense much like any other under the Copyright Act.
Therefore, it was incumbent upon Dr. Freeman to rebut appellant’s prima facie
evidence that the work (P-1) was derivative, not joint. Appellee failed to meet his

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burden, however, for he failed to present sufficient evidence to demonstrate
appellant’s intent to create a joint work.
The district court appears to have applied the opposite presumption. Rather than
focusing on the appellant’s intent at the time of creating the derivative work, the
court dwelt primarily on the parties’ long-standing and close professional relationship.
From that, it seems to have presumed that P-1 — a by-product of that professional
collaboration — was a “joint” work. That presumption, however, in effect placed the
burden on the putative author to show that the work was derivative, rather than on
the putative infringer to show that the work was joint. The district court’s approach
was therefore at odds with the statutory scheme of burdens of proof, and must be
reversed as a matter of law.
I differ, though, with Judge Cardamone’s reasoning in Part I. The fact that Dr.
Freeman was not the author of any of the new material that went into P-1 did not, of
itself, preclude that work from being “joint.” Of course, as Judge Cardamone notes,
one cannot be found to be a joint author of a work without actually having
contributed to that work. However, that does not mean that an author, to be a “joint”
author, must have contributed to each incremental addition to the work. Thus, in
this case, had Dr. Weissmann’s intent been otherwise — had she intended the work
to be joint — Dr. Freeman could have been deemed a joint author simply by virtue
of his contributions to the earlier work, into which Dr. Weissmann’s material would
have been “merged.” See, e.g., Edward B. Marks Music Corp. v. Jerry Vogel Music Co.,
140 F.2d 266, 267 (2d Cir.1944).
Further, I do not agree that the earlier incorporation of Dr. Freeman’s “False
Positives” study into the evolving syllabus was irrelevant. Though not dispositive, the
parties’ past willingness to have their works absorbed into the syllabus was relevant
to the question of appellant’s intent when she reshaped the syllabus into P-1.
On balance, however, I agree with the court that the evidence relied upon by
appellee was not sufficient to show that appellant intended to create a joint work.
Therefore, I join the conclusion of the court, and would reverse and remand, with
judgment to be entered for appellant.
Circuit Judge Lumbard, dissenting:
I dissent, and vote to affirm the judgment of the district court in all respects, for the
reasons stated in Judge Pollack’s thorough and reasoned opinion. 684 F.Supp. 1248
(1988).
Notes and questions:
(1) The parties in Weissmann v. Freeman had worked collaboratively for many years in
academic medicine in the context of a mentor-mentee relationship. In 985 the junior party in
the relationship, Dr. Weissmann, published a related paper that was based on and included
portions of previous joint-works, however she contributed substantial new material and new
organization. When Dr. Freeman was invited to give a review course on nuclear medicine at
Mount Sinai in 1987, he deleted Weissmann’s name from the 1985 paper and replaced it with
his own. He also added three words to the title. Weissmann sued for copyright infringement.
The district court determined that the entire series of Weissmann and Freeman’s works on
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the subject of radionuclide imaging, including the 1985 paper, constituted a single
evolutionary joint work. Thus Freeman was joint-author of the 1985 paper and could not
infringe the copyright therein.
(2) In Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989) a fractured Second Circuit panel
reversed. The majority held that joint authorship of an original work does not, without more,
make one a joint author of a derivative work based upon the original work. Freeman neither
“contributed” to the work, nor did he intend that his contribution be merged into a joint
work. See also, MCA, Inc. v. Wilson, 425 F.Supp. 443, 455 (S.D.N.Y.1976) (owner of
underlying work obtains no property rights in derivative work), aff’d, 677 F.2d 180 (2d
Cir.1981).
(3) In his majority opinion, Judge Cardamone noted that “there is no evidence that they
intended their joint product to be forever indivisible” and that there was “substantial and
uncontroverted evidence that Dr. Weissmann intended [the 1985 paper] to be her own
individual work” How important are these findings of fact?
(4) In his concurring majority opinion, Judge Pierce asserted that “the fact that Dr. Freeman
was not the author of any of the new material that went into [the 1985 paper] did not, of
itself, preclude that work from being ‘joint.’” He argued that “Dr. Freeman could have been
deemed a joint author simply by virtue of his contributions to the earlier work” if that had
been the clear intention of the parties. Both judges cite to Edward B. Marks Music Corp. v. Jerry
Vogel Music Co., who is right? (See note 5 under Aalmuhammed above for additional
discussion)
(5) In 2020, the average No. 1 hit on the Billboard Hot 100 singles chart had 5.5 credited
writers, a significant increase from 2.1 writers in 1990. This increase owns a lot to the rise of
Hip-hop and the blurring of the distinction between songwriting and production. In the
music industry it is common practice that the writers of sampled songs are credited as
songwriters of the new track. Is this practice consistent with the rules about joint authorship
in copyright? If not, should copyright law, or the music industry, change?

Ownership of employee works and commissioned works
The United States has long recognized employer ownership of works created by employees
within the scope of their employment. Exactly where the boundary between the status of
employee and independent contractor should be drawn is a fact specific question. Likewise,
the equally important question of which activities are within the scope of employment.
17 U.S. Code § 201 - Ownership of copyright
(b) Works Made for Hire.— In the case of a work made for hire, the employer or
other person for whom the work was prepared is considered the author for
purposes of this title, and, unless the parties have expressly agreed otherwise in a
written instrument signed by them, owns all of the rights comprised in the copyright.
17 U.S. Code § 101
A “work made for hire” is—(1) a work prepared by an employee within the scope
of his or her employment;

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Under the 1976 Act, ‘work made for hire’ is defined as either “a work prepared by an
employee within the scope of his or her employment” or as a work specially ordered or
commissioned work as discussed in more detail below.

Who is an employee?
Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989)
In the late 1980s, a homeless charity, Community for Creative Non-Violence, paid a sculptor,
James Earl Reid, to create a statue depicting the plight of homeless people. Members of the
charity visited Reid’s studio as he made the statute and gave suggestions and directions as to
its appearance. Reid was paid for his work upon delivery of the statue but the parties never
discussed ownership of the copyright in the sculpture. In the resulting copyright litigation
the District Court held that CCNV owned the copyright under the “work made for hire”
doctrine, however the Court of Appeals for the District of Columbia reversed on the
grounds that Reid was not an employee, but an independent contractor.
The Supreme Court in Community for Creative Non-Violence v. Reid, held that as the term
“employee” was not defined in the Copyright Act, Congress was presumed to have intended
that it would be “understood in light of agency law, we have relied on the general common
law of agency” (at 740). The court rejected approaches based on an analysis of the hiring
parties “right to control” or “actual control” (at 742).
Applying this standard, the Court elaborated on several factors relevant to a party’s
employee status, but warned that “No one of these factors is determinative.” At 725-753
Justice Marshall said:
In determining whether a hired party is an employee under the general common law
of agency, we consider the hiring party’s right to control the manner and means by
which the product is accomplished. Among the other factors relevant to this inquiry
are the skill required; the source of the instrumentalities and tools; the location of
the work; the duration of the relationship between the parties; whether the hiring
party has the right to assign additional projects to the hired party; the extent of the
hired party’s discretion over when and how long to work; the method of payment;
the hired party’s role in hiring and paying assistants; whether the work is part of the
regular business of the hiring party; whether the hiring party is in business; the
provision of employee benefits; and the tax treatment of the hired party. See
Restatement § 220(2) (setting forth a nonexhaustive list of factors relevant to
determining whether a hired party is an employee). No one of these factors is
determinative.
Examining the circumstances of this case in light of these factors, we agree with the
Court of Appeals that Reid was not an employee of CCNV but an independent
contractor. True, CCNV members directed enough of Reid’s work to ensure that he
produced a sculpture that met their specifications. But the extent of control the
hiring party exercises over the details of the product is not dispositive. Indeed, all
the other circumstances weigh heavily against finding an employment relationship.
Reid is a sculptor, a skilled occupation. Reid supplied his own tools. He worked in
his own studio in Baltimore, making daily supervision of his activities from
Washington practicably impossible. Reid was retained for less than two months, a
relatively short period of time. During and after this time, CCNV had no right to
assign additional projects to Reid. Apart from the deadline for completing the

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sculpture, Reid had absolute freedom to decide when and how long to work. CCNV
paid Reid $15,000, a sum dependent on completion of a specific job, a method by
which independent contractors are often compensated. Reid had total discretion in
hiring and paying assistants. Creating sculptures was hardly regular business for
CCNV. Indeed, CCNV is not a business at all. Finally, CCNV did not pay payroll or
Social Security taxes, provide any employee benefits, or contribute to
unemployment insurance or workers’ compensation funds.

The Supreme Court held Reid was an independent contractor, not an employee, so the work
was not ‘made for hire’ under §101. As a result the copyright belonged to Reid as the author,
at least in part. The court left open the possibility that CCNV was a coauthor of the
sculpture. The court held that common law agency principles should be applied to decide
whether a work is made by an employee or an independent contractor.

What is within the scope of employment?
Section 228 of the Restatement Second, Agency, states that an employee’s conduct is within
the scope of employment “only if: (a) it is the kind he is employed to perform; (b) it occurs
substantially within the authorized time and space limits; [and] (c) it is actuated, at least in
part, by a purpose to serve the master.” Restatement Second, Agency § 228.

Non-employee works made for hire
Under the 1909 Copyright Act, the ownership of commissioned works was a question of
contract law, but there was a general presumption that the copyright was intended to belong
to a party who commissioned and paid for the work; conversely, an artist who created the
work at his or her own expense was presumed to be the owner. This is no longer the case
under the Copyright Act of 1976.
Work by an independent contractor can in some cases qualify as a “work made for hire” so
long as it was created at the instance and expense of the commissioning party. However, by
statute, only certain specific categories of specially ordered or commissioned works created
by an independent contractor can qualify as “works made for hire.”
Under the 1976 Act, “work made for hire” is defined as either “a work prepared by an
employee within the scope of his or her employment” or as a work specially ordered or
commissioned if that work falls into one of the nine listed categories, and the parties
expressly agree in a written instrument signed by them.
17 U.S. Code § 101
A “work made for hire” is—
(1) a work prepared by an employee within the scope of his or her employment; or
(2) a work specially ordered or commissioned for use as a contribution to a
collective work, as a part of a motion picture or other audiovisual work, as a
translation, as a supplementary work, as a compilation, as an instructional text, as a
test, as answer material for a test, or as an atlas, if the parties expressly agree in a
written instrument signed by them that the work shall be considered a work made
for hire. For the purpose of the foregoing sentence, a “supplementary work” is a
work prepared for publication as a secondary adjunct to a work by another author
for the purpose of introducing, concluding, illustrating, explaining, revising,

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commenting upon, or assisting in the use of the other work, such as forewords,
afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical
arrangements, answer material for tests, bibliographies, appendixes, and indexes, and
an “instructional text” is a literary, pictorial, or graphic work prepared for
publication and with the purpose of use in systematic instructional activities.

The nine categories are: 116
1.
2.
3.
4.
5.
6.
7.
8.
9.

a contribution to a collective work,
as a part of a motion picture or other audiovisual work,
as a translation,
as a supplementary work,
as a compilation,
as an instructional text,
as a test,
as answer material for a test, or
as an atlas

It is important to understand that if a work falls outside these categories, or is not the subject
of a written agreement signed by the author and the entity commissioning the work, then
there will be no assignment by presumption or by implied or oral contract.
Notice that since photographs and architectural drawings are not included in the categories
set forth in the work made for hire definition, they do not qualify as works made for hire.
Consequently, regardless of contractual terms to the contrary, the work for hire doctrine is
inapplicable to non-employee photographers or architects.

Transfer of copyright interests
Requirements for transfer
Copyrights are personal property. Like other forms of personal property, a copyright interest
may be transferred in whole or in part by any means of conveyance or by operation of law
and may be bequeathed by will or pass as personal property by the applicable laws of
intestate succession.
However, Section 204(a) of the Copyright Act provides that “a transfer of copyright
ownership, other than by operation of law, is not valid unless an instrument of conveyance,
or a note or memorandum of the transfer, is in writing and signed by the owner of the rights
conveyed or such owner’s duly authorized agent.”
116 § 101 hints at an interesting story. “In determining whether any work is eligible to be considered a work

made for hire under paragraph (2), neither the amendment contained in section 1011(d) of the Intellectual
Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law
106–113, nor the deletion of the words added by that amendment—(A) shall be considered or otherwise given
any legal significance, or (B) shall be interpreted to indicate congressional approval or disapproval of, or
acquiescence in, any judicial determination, by the courts or the Copyright Office. Paragraph (2) shall be
interpreted as if both section 2(a)(1) of the Work Made For Hire and Copyright Corrections Act of 2000 and
section 1011(d) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by
section 1000(a)(9) of Public Law 106–113, were never enacted, and without regard to any inaction or awareness
by the Congress at any time of any judicial determinations.”

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17 U.S. Code § 204 - Execution of transfers of copyright ownership
(a) A transfer of copyright ownership, other than by operation of law, is not valid
unless an instrument of conveyance, or a note or memorandum of the transfer, is in
writing and signed by the owner of the rights conveyed or such owner’s duly
authorized agent.

Note that Section 101 defines “transfer of copyright ownership” to include both
assignments and exclusive licenses. So, unless the interest being conveyed is a non-exclusive
license, the conveyance must comply with the Copyright Act’s writing requirement.
Also note that a grant of copyright, even if it purports to convey “all right, title and interest,”
is generally construed not to assign existing any right to sue that has already arisen by virtue
of some third party’s infringement prior to the assignment. However, such pre-existing
causes of action may be assigned by expressly including them in the grant.117
Section 204(a) of the Copyright Act is not just the Copyright version of the Statute of Frauds.
It is in fact more stringent than the common law Statute of Frauds; the writing must be
intended as a memorandum of contract communicated to the other party, and the equitable
defense of estoppel does not apply.

Failed transfers and implied licenses
Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990)
Effects Assocs. v. Cohen illustrates a number of important features of the law relating to
ownership and transfer of copyright.
Effects Associates had created special-effects footage for certain scenes in a movie that
Cohen produced. Although Cohen agreed to pay Effects Associates a fee for the footage,
the parties did not discuss the ownership of the copyright to the special-effects footage.
When Cohen subsequently refused to pay the fee in full, the ensuing lawsuit centered on
whether Effects Associates had transferred ownership of the footage to Cohen.
Citing § 204, the court found that the lack of a written agreement to transfer any copyright
meant that Effects Associates had only granted Cohen an implied license to use the footage
in his movie.
A license was implied because
Effects created a work at defendant’s request and handed it over, intending that
defendant copy and distribute it. To hold that Effects did not at the same time
convey a license to use the footage in “The Stuff” would mean that plaintiff’s
contribution to the film was “of minimal value,” a conclusion that can’t be squared
with the fact that Cohen paid Effects almost $56,000 for this footage.

The court concluded that Cohen therefore had committed no copyright infringement but
might nonetheless face liability for a breach of contract.
The short sequence of footage prepared at request of motion picture producer would
probably have been assigned in total under the 1909 Act, but there was no transfer in this
case because of the strict writing requirement in § 204. This lack of writing was not an
117 Oskar Systems, LLC v. Club Speed, Inc., 745 F. Supp. 2d 1155 (C.D. Cal. 2010).

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obstacle to an implied nonexclusive license to incorporate the footage, and distribute it, as
part of the film.

Fractured ownership – copyright divisibility
The 1976 Act abandoned the concept of indivisibility of copyright ownership. The owner of
any of the exclusive rights under Section 106 is the Copyright owner for all relevant
purposes. Most importantly, the owner of a single right under 106 can bring an action for
the infringement of that right without the cooperation of the owners of the other 106 rights.
§ 201 (d) Transfer of Ownership.—
(1) The ownership of a copyright may be transferred in whole or in part by any
means of conveyance or by operation of law, and may be bequeathed by will or pass
as personal property by the applicable laws of intestate succession.
(2) Any of the exclusive rights comprised in a copyright, including any subdivision
of any of the rights specified by section 106, may be transferred as provided by
clause (1) and owned separately. The owner of any particular exclusive right is
entitled, to the extent of that right, to all of the protection and remedies accorded to
the copyright owner by this title.
17 U.S. Code § 101. Definitions
A “transfer of copyright ownership” is an assignment, mortgage, exclusive license,
or any other conveyance, alienation, or hypothecation of a copyright or of any of
the exclusive rights comprised in a copyright, whether or not it is limited in time or
place of effect, but not including a nonexclusive license.

The divisibility of copyright rights has some important implications. Given that Section 101
recognizes an exclusive license as a form of transfer of ownership, should exclusive licenses
themselves be transferable and sub licensable by default?
Gardner v. Nike 279 F.3d 774, 780 (9th Cir. 2002)
Circuit Judge Ferguson
Appellants Michael Gardner and Bien Licensing Agency, Inc. (collectively referred to
as “Appellants”) appeal the District Court’s grant of summary judgment to Appellee
Nike, Inc. The District Court held that Appellants lacked standing because the
licensee, Sony Music Entertainment Corporation, did not have the right to transfer
its rights to Gardner under the exclusive license with the licensor, Nike, under the
Copyright Act of 1976. Although we have previously addressed this issue under the
Copyright Act of 1909, this is a case of first impression under the Copyright Act of
1976.
BACKGROUND
A. Factual History
In 1992, Nike and Sony entered into a licensing agreement involving a Nike-created
cartoon character called MC Teach. In exchange for fifteen percent (15%) of profits

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earned from any use of MC Teach in merchandise other than records, Nike
transferred the exclusive, perpetual, worldwide right to Sony to use MC Teach:
on and in the packaging of phonograph records (the ‘Records’), in publicity,
advertising and allied exploitation of the Records, in television programs or motion
pictures embodying the musical compositions embodied on the records, on
educational materials and on clothing....

The agreement also stated that Nike “shall own the copyright in the Material and any
published copy of the Material ... shall bear the following notice: 1992 Nike, Inc.” It
is undisputed that the agreement contemplated an exclusive license. The agreement
was silent as to Sony’s right to assign its rights under the exclusive license.
In June 1996, Sony assigned all its rights in the exclusive license to Gardner, on a
quitclaim basis, in exchange for a share of the proceeds derived from MC Teach. As
a result of Appellants’ use of MC Teach, Nike threatened legal action against Sony,
Appellants, and Appellants’ licensees. In response to these threats, Appellants filed
suit in state court seeking declaratory relief.
In the present appeal, Appellants argue that the District Court erred in holding that
the Copyright Act of 1976 (“1976 Act”) does not permit an exclusive licensee to
transfer its rights without the original licensor’s consent, absent contractual
provisions to the contrary. Because the transferability of an exclusive license under
the 1976 Act is a question of first impression, the state of the law prior to 1976 is
pertinent to our inquiry.
A. Copyright Act of 1909
Under the Copyright Act of 1909 (“1909 Act”), copyright licenses (whether exclusive
or not) were “not transferable as a matter of law.” Harris v. Emus Records Corp., 734
F.2d 1329, 1333 (9th Cir. 1984). Unlike an assignee, a licensee had no right to resell
or sublicense the rights acquired unless he had been expressly authorized so to do.
The distinction between licenses and assignments was based on both the doctrine of
indivisibility and the policy concerns underlying the 1909 Act.
Under the doctrine of indivisibility, a copyright owner possessed an indivisible
“bundle of rights,” which were incapable of assignment in parts. Thus, an
assignment included the totality of rights commanded by copyright. Anything less
than an assignment was considered a license. The purpose of the doctrine was to
protect alleged infringers from the harassment of successive law suits. This result was
achieved because only the copyright proprietor (which would include an assignee but
not a licensee) had standing to bring an infringement action. As discussed by the
District Court, the doctrine of indivisibility created many problems for copyright
licensees, including the licensee’s lack of standing to bring an infringement action
and the exclusive licensee’s inability to register his license.
In addition, the distinction between assignments and licenses as to transferability
under the 1909 Act was also based on policy considerations. In particular, the
licensee’s inability to resell or sublicense the rights acquired without the express
consent of the original licensor struck a balance between two competing interests —
“[the] strong reluctance to allow a monopolization of works or compositions” and

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“the necessity of preserving the rights of authors and composers in order to
stimulate creativity.” Harris, 734 F.2d at 1334.
In Harris, we addressed the question of whether a copyright license was transferable
under the 1909 Act. We held that a copyright license was not transferable, relying on
the legislative history, underlying policy concerns, and analogous rules in patent law.
Id. at 1333-34 (“Where precedent in copyright cases is lacking, it is appropriate to
look for guidance to patent law ‘because of the historic kinship between patent law
and copyright law.’”). We emphasized that, “by licensing rather than assigning his
interest in the copyright, the owner reserves certain rights, including that of
collecting royalties. His ability to monitor use would be jeopardized by allowing
sublicensing without notice.” Id. at 1334.
B. Copyright Act of 1976
The 1976 Act eradicated much of the doctrine of indivisibility as it applied to
exclusive licenses. First, § 101 defines the “transfer of copyright ownership” as “an
assignment, mortgage, exclusive license, or any other conveyance, alienation, or
hypothecation of a copyright or of any of the exclusive rights comprised in a
copyright, whether or not it is limited in time or place of effect, but not including a
nonexclusive license.” 17 U.S.C. § 101 (emphasis added). This definition calls into
question the distinctions that were previously drawn between an assignment and an
exclusive license under the indivisibility doctrine. Second, § 201(d)(2) provides that
“any of the exclusive rights comprised in a copyright, including any subdivision of
any of the rights specified by section 106, may be transferred ... and owned
separately.” 17 U.S.C. § 201(d)(2). Section 201(d)(2) constitutes “the first explicit
statutory recognition of the principle of divisibility of copyright.” 17 U.S.C.A § 201
note (West 1996) (Notes of Comm. on Judiciary, H. Rep. No. 94-1476).
The 1976 Act addressed many of the aforementioned problems faced by exclusive
licensees under the doctrine of indivisibility. For example, an exclusive licensee now
has the right to sue for infringement of the assigned right in his own name. Despite
the explicit changes in the 1976 Act, this case presents the issue of whether the 1976
Act eliminates the limitation on an exclusive licensee’s right to re-sell or sublicense
under our interpretation of the 1909 Act.
C. The Effect of the Copyright Act of 1976 on an Exclusive Licensee’s Right to
Transfer
Appellants contend that the language in the 1976 Act places an exclusive licensee on
par with an owner or assignee with the full rights of an owner or assignee, including
the right to transfer without the explicit consent of the copyright owner.
Initially, Appellants point to 17 U.S.C. § 101, which states that a “transfer of
copyright ownership is an assignment, mortgage, exclusive license, or any other
conveyance ... of any of the exclusive rights comprised in a copyright.” Thus,
Appellants argue that Sony, as exclusive licensee, was the owner of MC Teach with
all of the rights afforded to a copyright owner.
Appellants then assert that, under 17 U.S.C. § 201, Sony could freely transfer these
rights because there were no contractual restrictions requiring Nike’s consent. In
support of this argument, Appellants cite § 201(d)(1), which states that “ownership
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of a copyright may be transferred in whole or in part by any means of conveyance or
by operation of law....” Appellants next cite to § 201(d)(2) for support that an owner
of an exclusive right must have the right to transfer it.
As discussed by the District Court, the crux of this case is the appropriate
interpretation of 17 U.S.C. § 201. The District Court rejected Appellants’ argument,
finding that § 201(d)(1) did not apply to the present case and that § 201(d)(2) only
conferred the “protections and remedies” explicitly included in the 1976 Act, but not
the rights. We agree with the conclusions reached by the District Court for the
reasons discussed below.
1. 17 U.S.C. § 201(d)(1)
Section 201(d)(1) provides:
(1) The ownership of a copyright may be transferred in whole or in part by any
means of conveyance or by operation of law, and may be bequeathed by will or pass
as personal property by the applicable laws of intestate succession.

17 U.S.C. § 201(d)(1).
The District Court correctly determined that § 201(d)(1) addresses the
apportionability of the copyright owner’s interest in the totality of the copyright.
Section 201(d)(1) enables the owner to transfer any fraction of his or her ownership
interest to another party, thereby making that party a whole or joint owner. Read
apart from § 201(d)(2), § 201(d)(1) could be interpreted as extending this right of
transfer to exclusive licensees such as Sony, especially since § 101 defines “transfer of
copyright ownership” to include exclusive licenses. However, the limiting language in
§ 201(d)(2), as discussed next, indicates that this section does not, in fact, cover
transfers by exclusive licensees or owners of a particular exclusive right.
2. 17 U.S.C. § 201(d)(2)
The plain language of § 201(d)(2) limits the rights of an exclusive licensee to those
“protections and remedies” afforded in the 1976 Act. Section 201(d)(2) provides:
(2) Any of the exclusive rights comprised in a copyright, including any subdivision
of any of the rights specified by section 106, may be transferred as provided by
clause (1) and owned separately. The owner of any particular exclusive right is
entitled, to the extent of that right, to all of the protection and remedies accorded to
the copyright owner by this title.

17 U.S.C. § 201(d)(2).
Appellants contend that, if a licensee of exclusive rights under the copyright is
characterized by the 1976 Act as an “owner” of those rights under § 201(d)(2), then
it must follow that such “ownership” carries with it an unrestricted right to freely
transfer the license. However, Appellants’ argument ignores the plain language of §
201(d)(2), which states that the owner of such exclusive rights is entitled only to “the
protection and remedies” accorded the copyright owner under the 1976 Act. This
explicit language limits the rights afforded to an owner of exclusive rights. Based on
basic principles of statutory construction, the specific language of § 201(d)(2) is given
precedence over the more general language of § 101 and § 201(d)(1).

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Further, as stated by the District Court, Congress was aware that prior to the 1976
Act, licensees could not sublicense their right in an exclusive license [without the
express consent of the licensor]. With that knowledge in hand, however, Congress
chose to limit exclusive licensees ‘benefits’ under the 1976 Act to “protection and
remedies.”
In sum, both parties contend that the plain language of the 1976 Act supports their
view. There are weaknesses in both of their arguments because neither the 1909 Act
nor the 1976 Act explicitly address an exclusive licensee’s right to transfer, absent the
consent of the licensor. Although neither party’s plain language arguments is
dispositive, the fact that Congress chose not to explicitly address this issue in the
1976 Act and the limiting “protection and remedies” language of § 201(d)(2)
indicates that the state of the law remains unchanged. Thus, we hold that the 1976
Act does not allow a copyright licensee to transfer its rights under an exclusive
license, without the consent of the original licensor.
3. Policy Considerations
Moreover, the policy considerations, which influenced this Circuit’s decision under
the 1909 Act, counsel the same conclusion in the present case, especially since
neither the 1909 or 1976 Act explicitly addresses this issue. In Harris, we relied on
the legislative history of the 1909 Act, patent law, and policy considerations. 734
F.2d at 1333-34; see also In re CFLC, Inc., 89 F.3d 673, 679 (9th Cir.1996) (relying
on the federal patent policy concern that the patent holder have the ability to control
the identity of licensees and holding that nonexclusive patent licenses are not
assignable).
As discussed in Harris, there are strong policy reasons to place the burden on the
licensee to get the licensor’s explicit consent either during or after contract
negotiations. Placing the burden on the licensee assures that the licensor will be able
to monitor the use of the copyright. Harris, 734 F.2d at 1334 (“[The licensor’s] ability
to monitor use would be jeopardized by allowing sublicensing without notice.”). In
this case, Nike, the copyright owner, agreed to allow Sony the use of MC Teach in a
broad range of products. Sony assigned this right to Gardner without receiving the
consent of Nike. Consequently, Nike had no role in determining whether Gardner
would be an appropriate sublicensee.
It is easy to imagine the troublesome and potentially litigious situations that could
arise from allowing the original licensor to be excluded from the negotiations with a
sublicensee. For example, what if the sublicensee was on the verge of bankruptcy or
what if the original licensor did not agree that the sublicensee’s materials use of the
copyright fell within the original exclusive license?
Requiring the licensee to get explicit consent from the licensor strikes the balance
between the competing interests that underlie the 1976 Act and copyright law in
general. On the one hand, the 1976 Act reflects Congress’ growing awareness of the
need for free alienability and divisibility. Yet, both Congress and this Circuit have
always been aware of the necessity to preserve the rights and control of the owners
and creators. In order to reach the balance between these interests, we hold that,
under the 1976 Act, an exclusive licensee has the burden of obtaining the licensor’s

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consent before it may assign its rights, absent explicit contractual language to the
contrary.
CONCLUSION
Because the 1976 Act did not change the law as to the assignability of exclusive
licenses, we hold that federal law governs the present case and that exclusive licenses
are only assignable with the consent of the licensor. Thus, we affirm the District
Court’s grant of summary judgment and its determination that Appellants lacked
standing to bring this declaratory relief action. The other issue in this appeal is
disposed of in a separate memorandum disposition.
Notes and questions
(1) In Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2002), the Ninth Circuit held that an
exclusive license may only be assigned or sublicensed “with the consent of the licensor.”
Gardner only establishes a default rule, and however that default was set, a licensor would
have the ability to expressly permit or forbid subsequent transfer and sublicensing.
(2) Not everyone agrees with the Ninth Circuit in Gardner. For example, the court in In re
Golden Books Family Entertainment, Inc., 269 B.R. 311 (Bankr. D. Del. 2001) noted at 318:
It is difficult to understand why the Gardner court held that the phrase ‘protections
and remedies’ confers on exclusive licensees the particular rights of copyright
owners that are set forth in Section 501(b), but does not confer to exclusive
licensees the rights of copyright owners, such as the right to freely assign, that are
set forth in § 106.”

(3) In Davis v. Blige, 505 F.3d 90, 99 n.10 (2d Cir. 2007), the Second Circuit said that “the
differences between an ‘exclusive’ license and an assignment or transfer of copyright
ownership interest have diminished to the point that the terms are
nearly synonymous.” Does this track with the Ninth Circuit’s opinion in Gardner v. Nike?

United States rules on the termination of transfers
The Copyright Act of 1976 extending the duration of copyright and introduced a
termination right for authors and their statutory successors, allowing them to opt out of their
contractual agreements after a period of 35 years. The 1976 Act actually contains two
termination provisions, one applying to transfers made before January 1, 1978 that convey
an interest in the renewal term and the other applying to transfers made after January 1978.

Post-1978 Grants
Under Section 203, the author or her statutory heirs can terminate a transfer made after
January 1, 1978, at any point within a five-year window beginning, in most cases, 35 years
after the initial transfer.118 In order to terminate, the terminating party must serve notice no
less than 2 years and no more than 10 years from the termination date.
118 However, if the grant covers the right of publication, the five-year period begins either at the end of 35 years

from the date of publication of the work under the grant or at the end of 40 years from the date of execution
of the grant, whichever term ends earlier.§ 203(a)(3).

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These termination rights cannot be waived: § 203(a)(5) provides that termination of the grant
may be effected notwithstanding any agreement to the contrary, including an agreement to
make a will or to make any future grant.
For example, if the grant was made on April 1, 2000 then it could be terminated anywhere
between April 2, 2035 and April 1, 2040. Accordingly, the very first day that notice could be
served would be April 2, 2025 and the last possible day notice could be served would be
March 31, 2038.

Pre-1978 Grants
The termination of transfers made before the effective date of the Copyright Act of 1976, i.e.
January 1, 1978, are controlled by Section 304(c) and 304(d) of the Copyright Act. These
provisions operate a little differently to Section 203, and to understand why requires a quick
review of the way the term of copyright protection has changed over the years. Under the
Copyright Act of 1909 copyright began when a work was registered and lasted for an initial
term of 28 years; copyright could then be renewed for an additional 28 year term.
Under the 1909 Act, the author was entitled to the renewal term even if she had transferred
all of her rights initially. Section 24 of the Copyright Act of 1909 provided as follows:
Section 24 of the Copyright Act of 1909
“[T]he author of [a copyrighted] work, if still living, or the widow, widower, or
children of the author, if the author be not living, or if such author, widow, widower,
or children be not living, then the author’s executors, or in the absence of a will, his
next of kin shall be entitled to a renewal and extension of the copyright in such
work for a further term of twenty-eight years when application for such renewal and
extension shall have been made to the copyright office and duly registered therein
within one year prior to the expiration of the original term of copyright.”

The 1976 Act fundamentally changed the way the term of copyright protection was
calculated. Under the 1976 Act, copyright vested from the moment a work is created (i.e.
fixed in a material form) and lasted for a single term of the life of the author plus 50 years. In
1998 this term was extended, even for works that already existed, by another 20 years so that
works created under the 1976 get a copyright term of the life of the author plus 70 years. To
bridge the gap between the 1909 Act regime and the new life plus 50 regime, transitional
provisions were enacted as part of the 1976 Act. Works created under the 1909 Act but
whose terms had not expired by 1978 were entitled to a longer second term – an additional
19 years under the 1976 Act and then an additional 20 years under the Copyright Term
Extension Act of 1988.
So the termination of transfer provisions in Section 203 and Section 304 have quite different
objectives. Section 203 gives the author or her statutory heirs a nontransferable right to
terminate 35 years after a grant, where the grant was executed by the author during the
unitary term. Section 304 gives the author or her statutory heirs a nontransferable right to
terminate a grant concerning the extensions to the renewal term, where the grant was
executed by the author or statutory heir to the renewal term.
Section 304 allows the author or her statutory heirs to terminate the last 39 years of a grant
made by the author prior to 1978. Termination can occur within a five-year window
beginning at the end of the 1956 year from the date of the copyright – usually the date of

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publication – and the author or her heirs must serve notice no less than 2 years and not
more than 10 years before the termination date.
For example, consider a book published on March 1, 1950 for which the author sold the
motion picture rights on May 1, 1970. Assuming copyright was when[with? instead?] you for
a second term in 1978, the grant could be terminated in the five-year window between
March 2006 and March 2011. The corresponding earliest and latest notice states would be
March 2, 1996 and March 1, 2009.
Section 304(d) contains a special provision permitting the recapture of the 20 years added by
the Sonny Bono Copyright Term Extension Act of 1998.

Terminated derivatives
One significant issue under the termination of transfers regime is what happens to
authorized derivative works when the right to make a derivative work is terminated? For
terminated post-1978 grants, Section 203(b)(1) provides as follows:
17 U.S. Code § 203(b)(1)
A derivative work prepared under authority of the grant before its termination may
continue to be utilized under the terms of the grant after its termination, but this
privilege does not extend to the preparation after the termination of other derivative
works based upon the copyrighted work covered by the terminated grant.

For terminated pre-1978 grants Section 304(c)(6)(A) says exactly the same thing.
The case law interpreting this provision is sparse, but the language in the statute would seem
to mean that a licensee could continue to exploit derivatives created under license before
termination, but the licensee could not make new versions of those derivatives. The
Supreme Court tangentially addressed the issue in Stewart v. Abend 495 U.S. 207 (1990).
Stewart v. Abend 495 U.S. 207 (1990)
Justice O’Connor delivered the opinion of the Court.
The author of a pre-existing work may assign to another the right to use it in a
derivative work. In this case the author of a pre-existing work agreed to assign the
rights in his renewal copyright term to the owner of a derivative work, but died
before the commencement of the renewal period. The question presented is whether
the owner of the derivative work infringed the rights of the successor owner of the
pre-existing work by continued distribution and publication of the derivative work
during the renewal term of the pre-existing work.
I
Cornell Woolrich authored the story “It Had to Be Murder,” which was first
published in February 1942 in Dime Detective Magazine. The magazine’s publisher,
Popular Publications, Inc., obtained the rights to magazine publication of the story
and Woolrich retained all other rights. Popular Publications obtained a blanket
copyright for the issue of Dime Detective Magazine in which “It Had to Be Murder”
was published.

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The Copyright Act of 1909 (1909 Act) provided authors a 28-year initial term of
copyright protection plus a 28-year renewal term. See 17 U.S.C. § 24 (1976 ed.). In
1945, Woolrich agreed to assign the rights to make motion picture versions of six of
his stories, including “It Had to Be Murder,” to B. G. De Sylva Productions for
$9,250. He also agreed to renew the copyrights in the stories at the appropriate time
and to assign the same motion picture rights to De Sylva Productions for the 28-year
renewal term. In 1953, actor Jimmy Stewart and director Alfred Hitchcock formed a
production company, Patron, Inc., which obtained the motion picture rights in “It
Had to Be Murder” from De Sylva’s successors in interest for $10,000.
In 1954, Patron, Inc., along with Paramount Pictures, produced and distributed
“Rear Window,” the motion picture version of Woolrich’s story “It Had to Be
Murder.” Woolrich died in 1968 before he could obtain the rights in the renewal
term for petitioners as promised and without a surviving spouse or child. He left his
property to a trust administered by his executor, Chase Manhattan Bank, for the
benefit of Columbia University. On December 29, 1969, Chase Manhattan Bank
renewed the copyright in the “It Had to Be Murder” story pursuant to 17 U.S.C. § 24
(1976 ed.). Chase Manhattan assigned the renewal rights to respondent Abend for
$650 plus 10% of all proceeds from exploitation of the story.
“Rear Window” was broadcast on the ABC television network in 1971. Respondent
then notified petitioners Hitchcock (now represented by co-trustees of his will),
Stewart, and MCA Inc., the owners of the “Rear Window” motion picture and
renewal rights in the motion picture, that he owned the renewal rights in the
copyright and that their distribution of the motion picture without his permission
infringed his copyright in the story. Hitchcock, Stewart, and MCA nonetheless
entered into a second license with ABC to rebroadcast the motion picture. In 1974,
respondent filed suit against these same petitioners, and others, in the United States
District Court for the Southern District of New York, alleging copyright
infringement. Respondent dismissed his complaint in return for $25,000.
Three years later, the United States Court of Appeals for the Second Circuit decided
Rohauer v. Killiam Shows, Inc., 551 F. 2d 484 (1977), in which it held that the owner of
the copyright in a derivative work may continue to use the existing derivative work
according to the original grant from the author of the pre-existing work even if the
grant of rights in the pre-existing work lapsed. Several years later, apparently in
reliance on Rohauer, petitioners re-released the motion picture in a variety of media,
including new 35 and 16 millimeter prints for theatrical exhibition in the United
States, videocassettes, and videodiscs. They also publicly exhibited the motion
picture in theaters, over cable television, and through videodisc and videocassette
rentals and sales.
Respondent then brought the instant suit in the United States District Court for the
Central District of California against Hitchcock, Stewart, MCA, and Universal Film
Exchanges, a subsidiary of MCA and the distributor of the motion picture.
Respondent’s complaint alleges that the re-release of the motion picture infringes his
copyright in the story because petitioners’ right to use the story during the renewal
term lapsed when Woolrich died before he could register for the renewal term and
transfer his renewal rights to them. Respondent also contends that petitioners have
interfered with his rights in the renewal term of the story in other ways. He alleges
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that he sought to contract with Home Box Office (HBO) to produce a play and
television version of the story, but that petitioners wrote to him and HBO stating
that neither he nor HBO could use either the title, “Rear Window” or “It Had to Be
Murder.” Respondent also alleges that petitioners further interfered with the renewal
copyright in the story by attempting to sell the right to make a television sequel and
that the re-release of the original motion picture itself interfered with his ability to
produce other derivative works.
II
A
Petitioners would have us read into the Copyright Act a limitation on the statutorily
created rights of the owner of an underlying work. They argue in essence that the
rights of the owner of the copyright in the derivative use of the pre-existing work are
extinguished once it is incorporated into the derivative work, assuming the author of
the pre-existing work has agreed to assign his renewal rights. Because we find no
support for such a curtailment of rights in either the 1909 Act or the 1976 Act, or in
the legislative history of either, we affirm the judgment of the Court of Appeals.
Petitioners and amicus Register of Copyrights assert, as the Court of Appeals
assumed, that § 23 of the 1909 Act, 17 U.S.C. § 24 (1976 ed.), and the case law
interpreting that provision, directly control the disposition of this case. Respondent
counters that the provisions of the 1976 Act control, but that the 1976 Act reenacted § 24 in § 304 and, therefore, the language and judicial interpretation of § 24
are relevant to our consideration of this case. Under either theory, we must look to
the language of and case law interpreting § 24.
The right of renewal found in § 24 provides authors a second opportunity to obtain
remuneration for their works. Section 24 provides:
“[T]he author of [a copyrighted] work, if still living, or the widow, widower, or
children of the author, if the author be not living, or if such author, widow, widower,
or children be not living, then the author’s executors, or in the absence of a will, his
next of kin shall be entitled to a renewal and extension of the copyright in such
work for a further term of twenty-eight years when application for such renewal and
extension shall have been made to the copyright office and duly registered therein
within one year prior to the expiration of the original term of copyright.” 17 U.S. C.
§ 24 (1976 ed.)

Since the earliest copyright statute in this country, the copyright term of ownership
has been split between on original term and a renewal term. Originally, the renewal
was intended merely to serve as an extension of the original term; at the end of the
original term, the renewal could be effected and claimed by the author, if living, or by
the author’s executors, administrators, or assigns. See Copyright Act of May 31, 1790,
ch. XV, § 1, 1 Stat. 124. In 1831, Congress altered the provision so that the author
could assign his contingent interest in the renewal term, but could not, through his
assignment, divest the rights of his widow or children in the renewal term. See
Copyright Act of February 3, 1831, ch. XVI, 4 Stat. 436. The 1831 renewal
provisions created “an entirely new policy, completely dissevering the title, breaking
up the continuance . . . and vesting an absolutely new title eo nomine in the persons
designated.” White-Smith Music Publishing Co. v. Goff, 187 F. 247, 250 (CA1 1911). In
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this way, Congress attempted to give the author a second chance to control and
benefit from his work. Congress also intended to secure to the author’s family the
opportunity to exploit the work if the author died before he could register for the
renewal term. The evident purpose of the renewal provision is to provide for the
family of the author after his death. Since the author cannot assign his family’s
renewal rights, it takes the form of a compulsory bequest of the copyright to the
designated persons.
In its debates leading up to the Copyright Act of 1909, Congress elaborated upon the
policy underlying a system comprised of an original term and a completely separate
renewal term. The renewal term permits the author, originally in a poor bargaining
position, to renegotiate the terms of the grant once the value of the work has been
tested. “Unlike real property and other forms of personal property, [a copyright] is
by its very nature incapable of accurate monetary evaluation prior to its exploitation.”
Nimmer on Copyright § 9.02 (1989) (hereinafter Nimmer).119 “If the work proves to
be a great success and lives beyond the term of twenty-eight years, . . . it should be
the exclusive right of the author to take the renewal term, and the law should be
framed . . . so that [the author] could not be deprived of that right.” House Report at
14. With these purposes in mind, Congress enacted the renewal provision of the
Copyright Act of 1909, 17 U.S.C. § 24 (1976 ed.). With respect to works in their
original or renewal term as of January 1, 1978, Congress retained the two-term
system of copyright protection in the 1976 Act. See 17 U.S.C. §§ 304(a) and (b) (1988
ed.) (incorporating language of 17 U.S.C. § 24 (1976 ed.)).
Applying these principles in Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373
(1960), this Court held that when an author dies before the renewal period arrives,
his executor is entitled to the renewal rights, even though the author previously
assigned his renewal rights to another party. “An assignment by an author of his
renewal rights made before the original copyright expires is valid against the world, if
the author is alive at the commencement of the renewal period. Fred Fisher Co. v. M.
Witmark & Sons, 318 U.S. 643, so holds.” Id., at 375. If the author dies before that
time, the “next of kin obtain the renewal copyright free of any claim founded upon
an assignment made by the author in his lifetime. These results follow not because
the author’s assignment is invalid but because he had only an expectancy to assign;
and his death, prior to the renewal period, terminates his interest in the renewal
which by § 24 vests in the named classes.” Ibid.
The legislative history of the 1909 Act echoes this view, … the renewal provisions
were intended to give the author a second chance to obtain fair remuneration for his
creative efforts and to provide the author’s family a “new estate” if the author died
before the renewal period arrived.
An author holds a bundle of exclusive rights in the copyrighted work, among them
the right to copy and the right to incorporate the work into derivative works. By
assigning the renewal copyright in the work without limitation, as in Miller Music, the
119 Editorial comment: Although it doubtless true that estimating the value of copyrighted works is usually

more of a guess than estimating the value of real property. The notion that there is some inherent categorical
difference no sense. All estimations of value are based on expected market returns. Whether something is
“[]capable of accurate monetary evaluation” depends on the specifics of the market for the thing in question.

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author assigns all of these rights. After Miller Music, if the author dies before the
commencement of the renewal period, the assignee holds nothing. If the assignee of
all of the renewal rights holds nothing upon the death of the assignor before arrival
of the renewal period, then, a fortiori, the assignee of a portion of the renewal rights,
e.g., the right to produce a derivative work, must also hold nothing. Therefore, if the
author dies before the renewal period, then the assignee may continue to use the
original work only if the author’s successor transfers the renewal rights to the
assignee. This is the rule adopted by the Court of Appeals below and advocated by
the Register of Copyrights. Application of this rule to this case should end the
inquiry. Woolrich died before the commencement of the renewal period in the story,
and, therefore, petitioners hold only an unfulfilled expectancy. Petitioners have been
“deprived of nothing. Like all purchasers of contingent interests, [they took] subject
to the possibility that the contingency may not occur.” Miller Music at 378.
B
The reason that our inquiry does not end here, and that we granted certiorari, is that
the Court of Appeals for the Second Circuit reached a contrary result in Rohauer v.
Killiam Shows, Inc., 551 F. 2d 484 (1977). Petitioners’ theory is drawn largely from
Rohauer. The Court of Appeals in Rohauer attempted to craft a “proper reconciliation”
between the owner of the pre-existing work, who held the right to the work pursuant
to Miller Music, and the owner of the derivative work, who had a great deal to lose if
the work could not be published or distributed. 551 F. 2d, at 490. Addressing a case
factually similar to this case, the court concluded that even if the death of the author
caused the renewal rights in the pre-existing work to revert to the statutory successor,
the owner of the derivative work could continue to exploit that work. The court
reasoned that the 1976 Act and the relevant precedents did not preclude such a result
and that it was necessitated by a balancing of the equities:
“The equities lie preponderantly in favor of the proprietor of the derivative
copyright. In contrast to the situation where an assignee or licensee has done
nothing more than print, publicize and distribute a copyrighted story or novel, a
person who with the consent of the author has created an opera or a motion picture
film will often have made contributions literary, musical and economic, as great as
or greater than the original author . . . The purchaser of derivative rights has no truly
effective way to protect himself against the eventuality of the author’s death before
the renewal period since there is no way of telling who will be the surviving widow,
children or next of kin or the executor until that date arrives.” Id., at 493.

The Court of Appeals for the Second Circuit thereby shifted the focus from the right
to use the pre-existing work in a derivative work to a right inhering in the created
derivative work itself. By rendering the renewal right to use the original work
irrelevant, the court created an exception to our ruling in Miller Music and, as
petitioners concede, created an “intrusion” on the statutorily created rights of the
owner of the pre-existing work in the renewal term.
Though petitioners do not, indeed could not, argue that its language expressly
supports the theory they draw from Rohauer, they implicitly rely on § 6 of the 1909
Act, 17 U.S.C. § 7 (1976 ed.), which states that “dramatizations . . . of copyrighted
works when produced with the consent of the proprietor of the copyright in such
works . . . shall be regarded as new works subject to copyright under the provisions
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of this title.” Petitioners maintain that the creation of the “new,” i. e., derivative,
work extinguishes any right the owner of rights in the pre-existing work might have
had to sue for infringement that occurs during the renewal term.
We think that this conclusion is neither warranted by any express provision of the
Copyright Act, nor by the rationale as to the scope of protection achieved in a
derivative work. It is moreover contrary to the axiomatic copyright principle that a
person may exploit only such copyrighted literary material as he either owns or is
licensed to use. The aspects of a derivative work added by the derivative author are
that author’s property, but the element drawn from the pre-existing work remains on
grant from the owner of the pre-existing work. See Russell v. Price, 612 F. 2d 1123,
1128 (CA9 1979) (reaffirming “well-established doctrine that a derivative copyright
protects only the new material contained in the derivative work, not the matter
derived from the underlying work”). So long as the pre-existing work remains out of
the public domain, its use is infringing if one who employs the work does not have a
valid license or assignment for use of the pre-existing work. It is irrelevant whether
the pre-existing work is inseparably intertwined with the derivative work. See Gilliam
v. American Broadcasting Cos., 538 F. 2d 14, 20 (CA2 1976) (“Copyright in the
underlying script survives intact despite the incorporation of that work into a
derivative work”). Indeed, the plain language of § 7 supports the view that the full
force of the copyright in the pre-existing work is preserved despite incorporation
into the derivative work. See 17 U.S.C. § 7 (1976 ed.) (publication of the derivative
work “shall not affect the force or validity of any subsisting copyright upon the
matter employed”); see also 17 U.S.C. § 3 (1976 ed.) (copyright protection of a work
extends to “all matter therein in which copyright is already subsisting, but without
extending the duration or scope of such copyright”). This well-settled rule also was
made explicit in the 1976 Act:
“The copyright in a compilation or derivative work extends only to the material
contributed by the author of such work, as distinguished from the preexisting
material employed in the work, and does not imply any exclusive right in the
preexisting material. The copyright in such work is independent of, and does not
affect or enlarge the scope, duration, ownership, or subsistence of, any copyright
protection in the pre-existing material.” 17 U.S. C. § 103(b).

See also B. Ringer, Renewal of Copyright (1960), reprinted as Copyright Law Revision
Study No. 31, prepared for the Senate Committee on the Judiciary, 86th Cong., 2d.
Sess., 169-170 (1961) (“On the basis of judicial authority, legislative history, and the
opinions of the commentators, . . . someone cannot avoid his obligations to the
owner of a renewal copyright merely because he created and copyrighted a ‘new
version’ under a license or assignment which terminated at the end of the first term”).
Properly conceding there is no explicit support for their theory in the 1909 Act, its
legislative history, or the case law, petitioners contend, as did the court in Rohauer,
that the termination provisions of the 1976 Act, while not controlling, support their
theory of the case. For works existing in their original or renewal terms as of January
1, 1978, the 1976 Act added 19 years to the 1909 Act’s provision of 28 years of initial
copyright protection and 28 years of renewal protection. See 17 U.S. C. §§ 304(a) and
(b). For those works, the author has the power to terminate the grant of rights at the
end of the renewal term and, therefore, to gain the benefit of that additional 19 years

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of protection. See § 304(c). In effect, the 1976 Act provides a third opportunity for
the author to benefit from a work in its original or renewal term as of January 1,
1978. Congress, however, created one exception to the author’s right to terminate:
The author may not, at the end of the renewal term, terminate the right to use a
derivative work for which the owner of the derivative work has held valid rights in
the original and renewal terms. See § 304(c)(6)(A). The author, however, may
terminate the right to create new derivative works. Ibid. For example, if petitioners
held a valid copyright in the story throughout the original and renewal terms, and the
renewal term in “Rear Window” were about to expire, petitioners could continue to
distribute the motion picture even if respondent terminated the grant of rights, but
could not create a new motion picture version of the story. Both the court in Rohauer
and petitioners infer from this exception to the right to terminate an intent by
Congress to prevent authors of pre-existing works from blocking distribution of
derivative works. In other words, because Congress decided not to permit authors to
exercise a third opportunity to benefit from a work incorporated into a derivative
work, the Act expresses a general policy of undermining the author’s second
opportunity. We disagree.
The process of compromise between competing special interests leading to the
enactment of the 1976 Act undermines any such attempt to draw an overarching
policy out of § 304(c)(6)(A), which only prevents termination with respect to works
in their original or renewal copyright terms as of January 1, 1978, and only at the end
of the renewal period.
In fact, if the 1976 Act’s termination provisions provide any guidance at all in this
case, they tilt against petitioners’ theory. The plain language of the termination
provision itself indicates that Congress assumed that the owner of the pre-existing
work possessed the right to sue for infringement even after incorporation of the preexisting work in the derivative work.
“A derivative work prepared under authority of the grant before its termination may
continue to be utilized under the terms of the grant after its termination, but this
privilege does not extend to the preparation after the termination of other derivative
works based upon the copyrighted work covered by the terminated grant.” §
304(c)(6)(A) (emphasis added).

Congress would not have stated explicitly in § 304(c)(6)(A) that, at the end of the
renewal term, the owner of the rights in the pre-existing work may not terminate use
rights in existing derivative works unless Congress had assumed that the owner
continued to hold the right to sue for infringement even after incorporation of the
pre-existing work into the derivative work. Cf. Mills Music, Inc. v. Snyder, 469 U.S. 153,
164 (1985) (§ 304(c)(6)(A) “carves out an exception from the reversion of rights that
takes place when an author exercises his right to termination”).
Accordingly, we conclude that neither the 1909 Act nor the 1976 Act provides
support for the theory set forth in Rohauer. And even if the theory found some
support in the statute or the legislative history, the approach set forth in Rohauer is
problematic. Petitioners characterize the result in Rohauer as a bright-line “rule.” The
Court of Appeals in Rohauer, however, expressly implemented policy considerations
as a means of reconciling what it viewed as the competing interests in that case. See
551 F. 2d, at 493-494. While the result in Rohauer might make some sense in some
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contexts, it makes no sense in others. In the case of a condensed book, for example,
the contribution by the derivative author may be little, while the contribution by the
original author is great. Yet, under the Rohauer “rule,” publication of the condensed
book would not infringe the pre-existing work even though the derivative author has
no license or valid grant of rights in the pre-existing work. See Brief for Committee
for Literary Property Studies as Amicus Curiae 29-31; see also Brief for Songwriters
Guild of America as Amicus Curiae 11-12 (policy reasons set forth in Rohauer make
little sense when applied to musical compositions). Thus, even if the Rohauer “rule”
made sense in terms of policy in that case, it makes little sense when it is applied
across the derivative works spectrum. Indeed, in the view of the commentators,
Rohauer did not announce a rule, but rather an interest-balancing approach.
Finally, petitioners urge us to consider the policies underlying the Copyright Act.
They argue that the rule announced by the Court of Appeals will undermine one of
the policies of the Act — the dissemination of creative works — by leading to many
fewer works reaching the public. Amicus Columbia Pictures asserts that “[s]ome
owners of underlying work renewal copyrights may refuse to negotiate, preferring
instead to retire their copyrighted works, and all derivative works based thereon,
from public use. Others may make demands — like respondent’s demand for 50%
of petitioners’ future gross proceeds in excess of advertising expenses . . . — which
are so exorbitant that a negotiated economic accommodation will be impossible.”
Brief for Columbia Pictures et al. as Amici Curiae 21. These arguments are better
addressed by Congress than the courts.
In any event, the complaint that respondent’s monetary request in this case is so high
as to preclude agreement fails to acknowledge that an initially high asking price does
not preclude bargaining. Presumably, respondent is asking for a share in the
proceeds because he wants to profit from the distribution of the work, not because
he seeks suppression of it.
With the Copyright Act of 1790, Congress provided an initial term of protection plus
a renewal term that did not survive the author. In the Copyright Act of 1831,
Congress devised a completely separate renewal term that survived the death of the
author so as to create a “new estate” and to benefit the author’s family, and, with the
passage of the 1909 Act, his executors. The 1976 Copyright Act provides a single,
fixed term, but provides an inalienable termination right. See 17 U.S.C. §§ 203, 302.
This evolution of the duration of copyright protection tellingly illustrates the
difficulties Congress faces in attempting to “secure for limited Times to Authors . . .
the exclusive Right to their respective Writings.” U.S. Const., Art. I, § 8, cl. 8. Absent
an explicit statement of congressional intent that the rights in the renewal term of an
owner of a pre-existing work are extinguished upon incorporation of his work into
another work, it is not our role to alter the delicate balance Congress has labored to
achieve.
[Justice O’Connor rejected the dissent’s arguments and Petitioner’s argument that
even if their use of “It Had to Be Murder” was unauthorized, it was a fair use and,
therefore, not infringing.]
For the foregoing reasons, the judgment of the Court of Appeals is affirmed, and the
case is remanded for further proceedings consistent with this opinion.

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It is so ordered.
Notes and questions
(1) In Stewart v. Abend 495 U.S. 207 (1990), the Supreme Court held that where the author of
a work subject to the Copyright Act of 1909 (a) licensed a third party to make derivatives of
the work and (b) died before the expiration of the initial term of copyright protection, the
right to create derivative works was effectively frozen by the renewal of the copyright term
by the authors heirs. In so holding, the Court emphasized that the right of renewal in § 24 of
the 1909 Act was intended to provide authors and their heirs a second opportunity to obtain
remuneration for their works.
(2) It is worth noting that if Woolrich had lived another couple of years, his assignment of
the renewal rights would have been effective. “It Had To Be Murder” was published in 1942.
In 1945 Woolrich assigned the movie rights, including renewal rights. In 1968 Woolrich died,
leaving no heirs. In 1969 and 1970 the executor of Woolrich’s estate renewed the copyright.
(3) Why is the author’s assignment of the renewal rights binding on the author if she lives,
but not upon her heirs? In Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373 (1960) the
Court held that the author’s assignment of renewal rights before the time for renewal arrives
cannot defeat the right of the author’s statutory successor to the renewal rights if the author
dies before the right to renewal accrues. The assignee in such a contract has bargained for a
mere expectancy, not a vested right. The Court in Miller Music said (at 378):
Until [the time for registration of renewal rights] arrives, assignees of renewal rights
take the risk that the rights acquired may never vest in their assignors. A purchaser
of such an interest is deprived of nothing. Like all purchasers of contingent interests,
he takes subject to the possibility that the contingency may not occur.

The key here is that the author’s assignment is not invalid, as such; rather the author is
assigning an interest that is contingent on her survival. As the Court in Miller Music explained
(at 375)
These results follow not because the author’s assignment is invalid but because he
had only an expectancy to assign; and his death, prior to the renewal period,
terminates his interest in the renewal which by § 24 vests in the named classes.

The Supreme Court majority in Stewart v. Abend reasoned that, if, as Miller Music held, “the
assignee of all of the renewal rights holds nothing upon the death of the assignor before
arrival of the renewal period, then, a fortiori, the assignee of a portion of the renewal
rights, e.g., the right to produce a derivative work, must also hold nothing.”
(4) Does the reasoning in Miller Music and Stewart v. Abend apply to terminations of transfers
under the 1976 Act, or is it limited to the two-term duration structure of the 1909 Act and
previous Copyright Acts?

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13. MORAL RIGHTS

What are moral rights?
The central idea behind the concept of “moral rights”—a term that is derived from the
French phrase droit moral—is that the author of a copyrighted work has certain personal and
inherent rights in relation to the work. These rights exist, so the theory goes, because the
work is tied to the personality of the author. Moral rights are usually distinguished from
merely economic rights.
The content of moral rights varies from jurisdiction to jurisdiction, but the two most
commonly recognized moral rights are the right of attribution and the right of integrity.120
An author with a right of attribution has the right to be credited as the author of their work;
an author with a right of integrity has the right to prevent distortions or mutilation of her
work, but usually only if, and to the extent that, this would be prejudicial to the author’s
reputation.
Many civil law countries, such as France and Germany, treat moral rights as inalienable from
the author (although transferable by will upon death). A number of civil law countries
recognize perpetual moral rights.

The international legal framework for moral rights protection
The right of attribution and the right of integrity were recognized in the Berne Convention
as part of the 1928 Rome revision of that agreement.
Article 6bis of the Berne Convention requires all member states to provide authors of
literary and artistic works “the right to claim authorship of the work and to object to any
distortion, mutilation or other modification of, or other derogatory action in relation to, the
said work, which would be prejudicial to his honor or reputation.” However, the TRIPs
Agreement excludes Article 6bis.
Berne Convention (Paris Text 1971) Article 6bis
(1) Independently of the author’s economic rights, and even after the transfer of the
said rights, the author shall have the right to claim authorship of the work and to
object to any distortion, mutilation or other modification of, or other derogatory
action in relation to, the said work, which would be prejudicial to his honor or
reputation.
(2) The rights granted to the author in accordance with the preceding paragraph
shall, after his death, be maintained, at least until the expiry of the economic rights,
and shall be exercisable by the persons or institutions authorized by the legislation
of the country where protection is claimed. However, those countries whose
legislation, at the moment of their ratification of or accession to this Act, does not
provide for the protection after the death of the author of all the rights set out in

120 Moral rights are typically grouped into five distinct categories: the rights of attribution, integrity, disclosure,

withdrawal, and resale royalties.

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the preceding paragraph may provide that some of these rights may, after his death,
cease to be maintained.
(3) The means of redress for safeguarding the rights granted by this Article shall be
governed by the legislation of the country where protection is claimed.
TRIPs Article 9(1).
Members shall comply with Articles 1 through 21 of the Berne Convention (1971)
and the Appendix thereto. However, Members shall not have rights or obligations
under this Agreement in respect of the rights conferred under Article 6bis of that
Convention or of the rights derived therefrom.

Thus, although moral rights play an important role in many copyright systems, compliance
with the Berne Convention’s full embrace of moral rights is, if not optional, at least outside
the WTO dispute resolution framework. The exclusion of Article 6bis from TRIPs was not
an oversight; it reflected the negotiating position of the United States which had an
ambivalent (at best) commitment to moral rights.
The WIPO Performances and Phonograms Treaty (“WPPT”) of 1996 also addressed the
issue of moral rights. Section 5 of that treaty provides that performers are entitled to a right
of attribution and integrity with respect to their performances. These rights are independent
and distinct from the performer’s economic rights.
WIPO Performances and Phonograms Treaty, Article 5
Moral Rights of Performers
(1) Independently of a performer’s economic rights, and even after the transfer of
those rights, the performer shall, as regards his live aural performances or
performances fixed in phonograms, have the right to claim to be identified as the
performer of his performances, except where omission is dictated by the manner of
the use of the performance, and to object to any distortion, mutilation or other
modification of his performances that would be prejudicial to his reputation.

Article 5 of the Beijing Treaty on Audiovisual Performances of 2012 also grants performers
rights of attribution and integrity in their live and fixed audiovisual performances. The treaty
reached a critical mass in terms of ratification in early 2020 and entered into force for the
first 30 contracting parties on April 28, 2020. The United States , the United Kingdom and
the European Union are signatories to the treaty but have not yet ratified it.121

Moral rights in the United States outside the Copyright Act
The patchwork approach
The United States acceded to the Berne Convention effective March 1, 1989 without
changing any of its substantive law with respect to moral rights. The United States position
was that American law already recognized moral rights through a combination of section
43(a) of the Lanham Act (which prevents passing off), the recognition of paternity and
121 For updates, see

https://wipolex.wipo.int/en/treaties/ShowResults?start_year=ANY&end_year=ANY&search_what=C&code
=ALL&treaty_id=841 (last visited February 22, 2021).

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integrity interests through the scope of the reproduction right and the right to make
derivative works based on the copyrighted work, and state laws causes of action in relation
to privacy, the right of publicity, fraud and misrepresentation, unfair competition, and
defamation. Likewise, the United States takes the position that its obligations to performers
under the WIPO Performances and Phonograms Treaty are satisfied by the same patchwork
of protections discussed in relation to the Berne Convention.
The insistence of the United States that moral rights should be left out of the TRIPs
Agreement suggests some equivocation as to whether existing United States law really did
satisfy the Berne Convention (and the WPPT, for that matter). Moreover, the Supreme
Court’s 2003 decision in Dastar v. Twentieth Century Fox raised significant doubts about
whether Section 43 of the Lanham Act actually satisfies the United States’ moral rights
obligations.

The Dastar decision and its aftermath
Dastar v. Twentieth Century Fox 539 U.S. 23 (2003)
Justice Scalia delivered the opinion of the Court.122
In this case, we are asked to decide whether § 43(a) of the Lanham Act, 15 U.S.C. §
1125(a), prevents the unaccredited copying of a work.
I
In 1948, three and a half years after the German surrender at Reims, General Dwight
D. Eisenhower completed Crusade in Europe, his written account of the allied
campaign in Europe during World War II. Doubleday published the book, registered
it with the Copyright Office in 1948, and granted exclusive television rights to an
affiliate of respondent Twentieth Century Fox Film Corporation (Fox). Fox, in turn,
arranged for Time, Inc., to produce a television series, also called Crusade in Europe,
based on the book, and Time assigned its copyright in the series to Fox. The
television series, consisting of 26 episodes, was first broadcast in 1949. It combined a
soundtrack based on a narration of the book with film footage from the United
States Army, Navy, and Coast Guard, the British Ministry of Information and War
Office, the National Film Board of Canada, and unidentified “Newsreel Pool
Cameramen.” In 1975, Doubleday renewed the copyright on the book as the
“‘proprietor of copyright in a work made for hire.’” Fox, however, did not renew the
copyright on the Crusade television series, which expired in 1977, leaving the
television series in the public domain.
In 1988, Fox reacquired the television rights in General Eisenhower’s book,
including the exclusive right to distribute the Crusade television series on video and
to sublicense others to do so. Respondents SFM Entertainment and New Line
Home Video, Inc., in turn, acquired from Fox the exclusive rights to distribute
Crusade on video. SFM obtained the negatives of the original television series,
restored them, and repackaged the series on videotape; New Line distributed the
videotapes.
122 Justice Scalia delivered the opinion of the Court, in which all other Members joined, except Justice Breyer,

who took no part in the consideration or decision of the case.

460

Enter petitioner Dastar. In 1995, Dastar decided to expand its product line from
music compact discs to videos. Anticipating renewed interest in World War II on the
50th anniversary of the war’s end, Dastar released a video set entitled World War II
Campaigns in Europe. To make Campaigns, Dastar purchased eight beta cam tapes
of the original version of the Crusade television series, which is in the public domain,
copied them, and then edited the series. Dastar’s Campaigns series is slightly more
than half as long as the original Crusade television series. Dastar substituted a new
opening sequence, credit page, and final closing for those of the Crusade television
series; inserted new chapter-title sequences and narrated chapter introductions;
moved the “recap” in the Crusade television series to the beginning and retitled it as
a “preview”; and removed references to and images of the book. Dastar created new
packaging for its Campaigns series and (as already noted) a new title.
Dastar manufactured and sold the Campaigns video set as its own product. The
advertising states: “Produced and Distributed by: Entertainment Distributing
“ (which is owned by Dastar), and makes no reference to the Crusade television
series. Similarly, the screen credits state “DASTAR CORP presents” and “an
ENTERTAINMENT DISTRIBUTING Production,” and list as executive producer,
producer, and associate producer employees of Dastar. The Campaigns videos
themselves also make no reference to the Crusade television series, New Line’s
Crusade videotapes, or the book. Dastar sells its Campaigns videos to Sam’s Club,
Costco, Best Buy, and other retailers and mail-order companies for $25 per set,
substantially less than New Line’s video set. In 1998, respondents Fox, SFM, and
New Line brought this action alleging that Dastar’s sale of its Campaigns video set
infringes Doubleday’s copyright in General Eisenhower’s book and, thus, their
exclusive television rights in the book. Respondents later amended their complaint to
add claims that Dastar’s sale of Campaigns “without proper credit” to the Crusade
television series constitutes “reverse passing off”1 in violation of § 43(a) of the
Lanham Act, 60 Stat. 441, 15 U.S. C. § 1125(a), and in violation of state unfaircompetition law.
Footnote 1: Passing off (or palming off, as it is sometimes called) occurs when a producer
misrepresents his own goods or services as someone else’s. “Reverse passing off,” as its name implies,
is the opposite: The producer misrepresents someone else’s goods or services as his own.

On cross-motions for summary judgment, the District Court found for respondents
on all three counts treating its resolution of the Lanham Act claim as controlling on
the state-law unfair-competition claim because “the ultimate test under both is
whether the public is likely to be deceived or confused.” The court awarded Dastar’s
profits to respondents and doubled them pursuant to § 35 of the Lanham Act, 15
U.S.C. § 1117(a), to deter future infringing conduct by petitioner.
The Court of Appeals for the Ninth Circuit affirmed the judgment for respondents
on the Lanham Act claim, but reversed as to the copyright claim and remanded. (It
said nothing with regard to the state-law claim.) With respect to the Lanham Act
claim, the Court of Appeals reasoned that “Dastar copied substantially the entire
Crusade in Europe series created by Twentieth Century Fox, labeled the resulting
product with a different name and marketed it without attribution to Fox, and
therefore committed a ‘bodily appropriation’ of Fox’s series.” It concluded that
“Dastar’s ‘bodily appropriation’ of Fox’s original television series is sufficient to
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establish the reverse passing off.”2 The court also affirmed the District Court’s award
under the Lanham Act of twice Dastar’s profits. We granted certiorari.
Footnote 2: As for the copyright claim, the Ninth Circuit held that the tax treatment General
Eisenhower sought for his manuscript of the book created a triable issue as to whether he intended
the book to be a work for hire, and thus as to whether Doubleday properly renewed the copyright in
1976. The copyright issue is still the subject of litigation, but is not before us. We express no opinion
as to whether petitioner’s product would infringe a valid copyright in General Eisenhower’s book.

II
The Lanham Act was intended to make “actionable the deceptive and misleading use
of marks,” and “to protect persons engaged in . . . commerce against unfair
competition.” 15 U.S.C. § 1127. While much of the Lanham Act addresses the
registration, use, and infringement of trademarks and related marks, § 43(a), 15 U.S.C.
§ 1125(a) is one of the few provisions that goes beyond trademark protection. As
originally enacted, § 43(a) created a federal remedy against a person who used in
commerce either “a false designation of origin, or any false description or
representation” in connection with “any goods or services.” 60 Stat. 441. As the
Second Circuit accurately observed with regard to the original enactment, however—
and as remains true after the 1988 revision—§ 43(a) “does not have boundless
application as a remedy for unfair trade practices,” Alfred Dunhill, Ltd. v. Interstate
Cigar Co., 499 F.2d 232, 237 (1974). Because of its inherently limited wording, § 43(a)
can never be a federal codification of the overall law of unfair competition, but can
apply only to certain unfair trade practices prohibited by its text.
Although a case can be made that a proper reading of § 43(a), as originally enacted,
would treat the word “origin” as referring only “to the geographic location in which
the goods originated,” the Courts of Appeals considering the issue, beginning with
the Sixth Circuit, unanimously concluded that it “does not merely refer to
geographical origin, but also to origin of source or manufacture,” Federal-Mogul-Bower
Bearings, Inc. v. Azoff, 313 F. 2d 405, 408 (1963), thereby creating a federal cause of
action for traditional trademark infringement of unregistered marks. Moreover, every
Circuit to consider the issue found § 43(a) broad enough to encompass reverse
passing off. The Trademark Law Revision Act of 1988 made clear that § 43(a) covers
origin of production as well as geographic origin. Its language is amply inclusive,
moreover, of reverse passing off—if indeed it does not implicitly adopt the
unanimous court-of-appeals jurisprudence on that subject.
Thus, as it comes to us, the gravamen of respondents’ claim is that, in marketing and
selling Campaigns as its own product without acknowledging its nearly wholesale
reliance on the Crusade television series, Dastar has made a “false designation of
origin, false or misleading description of fact, or false or misleading representation of
fact, which . . . is likely to cause confusion . . . as to the origin . . . of his or her goods.”
§ 43(a). That claim would undoubtedly be sustained if Dastar had bought some of
New Line’s Crusade videotapes and merely repackaged them as its own. Dastar’s
alleged wrongdoing, however, is vastly different: It took a creative work in the public
domain —the Crusade television series—copied it, made modifications (arguably
minor), and produced its very own series of videotapes. If “origin” refers only to the
manufacturer or producer of the physical “goods” that are made available to the
public (in this case the videotapes), Dastar was the origin. If, however, “origin”
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includes the creator of the underlying work that Dastar copied, then someone else
(perhaps Fox) was the origin of Dastar’s product. At bottom, we must decide what §
43(a)(1)(A) of the Lanham Act means by the “origin” of “goods.”
III
The dictionary definition of “origin” is “the fact or process of coming into being
from a source,” and “that from which anything primarily proceeds; source.”
Webster’s New International Dictionary 1720-1721 (2d ed. 1949). And the dictionary
definition of “goods” (as relevant here) is “wares; merchandise.” Id., at 1079. We
think the most natural understanding of the “origin” of “goods”—the source of
wares—is the producer of the tangible product sold in the marketplace, in this case
the physical Campaigns videotape sold by Dastar. The concept might be stretched
(as it was under the original version of § 43(a)) to include not only the actual
producer, but also the trademark owner who commissioned or assumed
responsibility for (“stood behind”) production of the physical product. But as used
in the Lanham Act, the phrase “origin of goods” is in our view incapable of
connoting the person or entity that originated the ideas or communications that
“goods” embody or contain. Such an extension would not only stretch the text, but
it would be out of accord with the history and purpose of the Lanham Act and
inconsistent with precedent.
Section 43(a) of the Lanham Act prohibits actions like trademark infringement that
deceive consumers and impair a producer’s goodwill. It forbids, for example, the
Coca-Cola Company’s passing off its product as Pepsi-Cola or reverse passing off
Pepsi-Cola as its product. But the brand-loyal consumer who prefers the drink that
the Coca-Cola Company or PepsiCo sells, while he believes that that company
produced (or at least stands behind the production of) that product, surely does not
necessarily believe that that company was the “origin” of the drink in the sense that
it was the very first to devise the formula. The consumer who buys a branded
product does not automatically assume that the brand-name company is the same
entity that came up with the idea for the product, or designed the product—and
typically does not care whether it is. The words of the Lanham Act should not be
stretched to cover matters that are typically of no consequence to purchasers.
It could be argued, perhaps, that the reality of purchaser concern is different for
what might be called a communicative product—one that is valued not primarily for
its physical qualities, such as a hammer, but for the intellectual content that it
conveys, such as a book or, as here, a video. The purchaser of a novel is interested
not merely, if at all, in the identity of the producer of the physical tome (the
publisher), but also, and indeed primarily, in the identity of the creator of the story it
conveys (the author). And the author, of course, has at least as much interest in
avoiding passing off (or reverse passing off) of his creation as does the publisher.
For such a communicative product (the argument goes) “origin of goods” in § 43(a)
must be deemed to include not merely the producer of the physical item (the
publishing house Farrar, Straus and Giroux, or the video producer Dastar) but also
the creator of the content that the physical item conveys (the author Tom Wolfe,
or—assertedly—respondents).

463

The problem with this argument according special treatment to communicative
products is that it causes the Lanham Act to conflict with the law of copyright,
which addresses that subject specifically. The right to copy, and to copy without
attribution, once a copyright has expired, like “the right to make [an article whose
patent has expired]—including the right to make it in precisely the shape it carried
when patented—passes to the public.” Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225,
230 (1964); see also Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 121-122 (1938).
“In general, unless an intellectual property right such as a patent or copyright
protects an item, it will be subject to copying.” TrafFix Devices, Inc. v. Marketing
Displays, Inc., 532 U.S. 23, 29 (2001). The rights of a patentee or copyright holder are
part of a “carefully crafted bargain,” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
U.S. 141, 150-151 (1989), under which, once the patent or copyright monopoly has
expired, the public may use the invention or work at will and without attribution.
Thus, in construing the Lanham Act, we have been “careful to caution against
misuse or over-extension” of trademark and related protections into areas
traditionally occupied by patent or copyright. TrafFix, 532 U.S., at 29. “The Lanham
Act,” we have said, “does not exist to reward manufacturers for their innovation in
creating a particular device; that is the purpose of the patent law and its period of
exclusivity.” Id., at 34. Federal trademark law “has no necessary relation to invention
or discovery,” Trade-Mark Cases, 100 U.S. 82, 94 (1879), but rather, by preventing
competitors from copying “a source-identifying mark,” “reduces the customer’s
costs of shopping and making purchasing decisions,” and “helps assure a producer
that it (and not an imitating competitor) will reap the financial, reputation-related
rewards associated with a desirable product,” Qualitex Co. v. Jacobson Products Co., 514
U.S. 159, 163-164 (1995). Assuming for the sake of argument that Dastar’s
representation of itself as the “Producer” of its videos amounted to a representation
that it originated the creative work conveyed by the videos, allowing a cause of
action under § 43(a) for that representation would create a species of mutant
copyright law that limits the public’s “federal right to copy and to use” expired
copyrights, Bonito Boats, supra, at 165.
When Congress has wished to create such an addition to the law of copyright, it has
done so with much more specificity than the Lanham Act’s ambiguous use of
“origin.” The Visual Artists Rights Act of 1990, provides that the author of an
artistic work “shall have the right. . . to claim authorship of that work.” 17 U.S.C. §
106A(a)(1)(A). That express right of attribution is carefully limited and focused: It
attaches only to specified “works of visual art,” is personal to the artist, and endures
only for “the life of the author.” Recognizing in § 43(a) a cause of action for
misrepresentation of authorship of noncopyrighted works (visual or otherwise)
would render these limitations superfluous. A statutory interpretation that renders
another statute superfluous is of course to be avoided.
Reading “origin” in § 43(a) to require attribution of uncopyrighted materials would
pose serious practical problems. Without a copyrighted work as the basepoint, the
word “origin” has no discernable limits. A video of the MGM film Carmen Jones,
after its copyright has expired, would presumably require attribution not just to
MGM, but to Oscar Hammerstein II (who wrote the musical on which the film was
based), to Georges Bizet (who wrote the opera on which the musical was based), and
to Prosper Mérimée (who wrote the novel on which the opera was based). In many
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cases, figuring out who is in the line of “origin” would be no simple task. Indeed, in
the present case it is far from clear that respondents have that status. Neither SFM
nor New Line had anything to do with the production of the Crusade television
series—they merely were licensed to distribute the video version. While Fox might
have a claim to being in the line of origin, its involvement with the creation of the
television series was limited at best. Time, Inc., was the principal, if not the exclusive,
creator, albeit under arrangement with Fox. And of course it was neither Fox nor
Time, Inc., that shot the film used in the Crusade television series. Rather, that
footage came from the United States Army, Navy, and Coast Guard, the British
Ministry of Information and War Office, the National Film Board of Canada, and
unidentified “Newsreel Pool Cameramen.” If anyone has a claim to being the
original creator of the material used in both the Crusade television series and the
Campaigns videotapes, it would be those groups, rather than Fox. We do not think
the Lanham Act requires this search for the source of the Nile and all its tributaries.
Another practical difficulty of adopting a special definition of “origin” for
communicative products is that it places the manufacturers of those products in a
difficult position. On the one hand, they would face Lanham Act liability for failing
to credit the creator of a work on which their lawful copies are based; and on the
other hand they could face Lanham Act liability for crediting the creator if that
should be regarded as implying the creator’s “sponsorship or approval” of the copy,
15 U.S.C. § 1125(a)(1)(A). In this case, for example, if Dastar had simply copied the
television series as Crusade in Europe and sold it as Crusade in Europe, without
changing the title or packaging (including the original credits to Fox), it is hard to
have confidence in respondents’ assurance [at oral argument] that they would not be
here on a Lanham Act cause of action.
Finally, reading § 43(a) of the Lanham Act as creating a cause of action for, in effect,
plagiarism—the use of otherwise unprotected works and inventions without
attribution —would be hard to reconcile with our previous decisions. For example,
in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), we considered
whether product-design trade dress can ever be inherently distinctive. WalMart
produced “knockoffs” of children’s clothes designed and manufactured by Samara
Brothers, containing only minor modifications of the original designs. We concluded
that the designs could not be protected under § 43(a) without a showing that they
had acquired “secondary meaning,” so that they “identify the source of the product
rather than the product itself.” This carefully considered limitation would be entirely
pointless if the “original” producer could turn around and pursue a reverse-passingoff claim under exactly the same provision of the Lanham Act. Samara would merely
have had to argue that it was the “origin” of the designs that Wal-Mart was selling as
its own line. It was not, because “origin of goods” in the Lanham Act referred to the
producer of the clothes, and not the producer of the (potentially) copyrightable or
patentable designs that the clothes embodied.
Similarly under respondents’ theory, the “origin of goods” provision of § 43(a)
would have supported the suit that we rejected in Bonito Boats, 489 U.S. 141, where
the defendants had used molds to duplicate the plaintiff’s unpatented boat hulls
(apparently without crediting the plaintiff). And it would have supported the suit we
rejected in TrafFix: The plaintiff, whose patents on flexible road signs had expired,

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and who could not prevail on a trade-dress claim under § 43(a) because the features
of the signs were functional, would have had a reverse-passing-off claim for
unattributed copying of his design.
In sum, reading the phrase “origin of goods” in the Lanham Act in accordance with
the Act’s common-law foundations (which were not designed to protect originality
or creativity), and in light of the copyright and patent laws (which were), we conclude
that the phrase refers to the producer of the tangible goods that are offered for sale,
and not to the author of any idea, concept, or communication embodied in those
goods. Cf. 17 U.S.C. § 202 (distinguishing between a copyrighted work and “any
material object in which the work is embodied”). To hold otherwise would be akin to
finding that § 43(a) created a species of perpetual patent and copyright, which
Congress may not do. See Eldred v. Ashcroft, 537 U.S. 186, 208 (2003).
The creative talent of the sort that lay behind the Campaigns videos is not left
without protection. The original film footage used in the Crusade television series
could have been copyrighted, see 17 U.S.C. § 102(a)(6), as was copyrighted (as a
compilation) the Crusade television series, even though it included material from the
public domain. Had Fox renewed the copyright in the Crusade television series, it
would have had an easy claim of copyright infringement. And respondents’
contention that Campaigns infringes Doubleday’s copyright in General Eisenhower’s
book is still a live question on remand. If, moreover, the producer of a video that
substantially copied the Crusade series were, in advertising or promotion, to give
purchasers the impression that the video was quite different from that series, then
one or more of the respondents might have a cause of action—not for reverse
passing off under the “confusion . . . as to the origin” provision of § 43(a)(1)(A), but
for misrepresentation under the “misrepresents the nature, characteristics [or]
qualities” provision of § 43(a)(1)(B). For merely saying it is the producer of the video,
however, no Lanham Act liability attaches to Dastar.
The judgment of the Court of Appeals for the Ninth Circuit is reversed, and the case
is remanded for further proceedings consistent with this opinion.
Notes and questions:
(1) In Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003), a television producer brought a
Lanham Act claim against a competitor based on the competitor’s release of a video set
made from tapes produced by the television producer. Summarizing his reasoning (at 37),
Justice Scalia wrote, for a unanimous Court, that:
reading the phrase “origin of goods” in the Lanham Act in accordance with the
Act’s common-law foundations (which were not designed to protect originality or
creativity), and in light of the copyright and patent laws (which were), … the phrase
refers to the producer of the tangible goods that are offered for sale, and not to the
author of any idea, concept, or communication embodied in those goods.

Because the defendant in Dastar was the originator of the video set it sold, as it created the
video set in dispute, the court found for the defendant and held that there was no Lanham
Act claim, even though the plaintiff had created the underlying television series. The Court
held that reissuing a public domain television series without attribution to the original author
does not violate Section 43(a)’s prohibition on false designation of origin.
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(2) Many courts and commentators have read Dastar as precluding almost any use of the
Lanham Act to vindicate an author’s interest in attribution or integrity. See e.g. Narrative Ark
Entertainment v. Archie Comic Publications, Inc., 2017 WL 3917040, at *12 (S.D.N.Y. Sept. 5,
2017) (“Dastar’s holding barring Lanham Act claims premised on the false designation of the
origin of ideas, concepts, or communications embodied in tangible goods, does not turn on
whether the work is still under copyright protection or in the public domain.”); Contractual
Obligation Products, LLC v. AMC Networks, Inc., 546 F. Supp. 2d 120, 130 (S.D.N.Y. 2008)
(noting “district court cases following Dastar have expressly rejected the argument that
Dastar does not apply where, as here, the work in issue is copyrighted” and collecting cases);
Zyla v. Wadsworth, 360 F.3d 243, 251–52 (1st Cir. 2004) (concluding that Dastar was
controlling barred the plaintiff’s Lanham Act claim.) However, others have taken a narrower
reading.
Defined Space, Inc. v. Lakeshore East, LLC 797 F.Supp.2d 896 (N.D. Ill. 2011)
District Judge Joan B. Gottschall
Defined Space, Inc. (hereinafter, “DSI”) is the firm through which professional
photographer David B. Seide conducts his business. In 2005, DSI entered into a
series of agreements with the defendants (Lakeshore East, LLC, Magellan
Development Group, LLC, and NNP Residential, LLC) to produce color
photographs of the defendants’ properties. The defendants planned to use these
photographs as part of their marketing campaign to rent and sell their properties.
The parties entered into a licensing agreement, in which the defendants agreed not to
display DSI’s works without attribution. Although the defendants occasionally
credited DSI’s work to DSI, sometimes they omitted this notice in their uses of
DSI’s work. DSI called this lack of attribution to the defendants’ attention from time
to time, but on occasion these omissions of attribution were not corrected.
[DSI sued under various legal theories including a cause of action under the Lanham
Act. Defendants filed a motion to dismiss.]
The defendants argue that the Lanham Act claim is preempted by the Court’s
holding in Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003). The defendants also cite
to Natkin v. Winfrey, 111 F.Supp.2d 1003 (N.D.Ill.2000), and Cyber Websmith v.
American Dental Ass’n, No. 09-CV-6198, 2010 WL 3075726 (N.D.Ill. Aug. 4, 2010). In
response, DSI cites to Cable v. Agence France Presse, 728 F.Supp.2d 977 (N.D.Ill. 2010).
In Dastar, … the Supreme Court held that the Copyright Act precluded Fox’s claims
under the Lanham Act. The Court began by noting that:
The Lanham Act was intended to make “actionable the deceptive and misleading
use of marks,” and “to protect persons engaged in ... commerce against unfair
competition.” While much of the Lanham Act addresses the registration, use and
infringement of trademarks and related marks, § 43(a), 15 U.S.C. § 1125(a) is one of
the few provisions that goes beyond trademark protection. As originally enacted §
43(a) created a federal remedy against a person who used in commerce either “a
false designation of origin, or any false description or representation” in connection
with “any goods or services.”

Id. at 28-29. The Court reasoned that if “origin” were read to mean the person or
entity that authored the material, such a reading would effectively create a system of
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perpetual copyright as it would force those wishing to use uncopyrighted works in
the public domain to credit the original authors or face liability under the Lanham
Act. See id. at 36-37. Accordingly, this could cause serious practical problems for
individuals who sought to use materials in the public domain in as much as
discerning the original author of many such materials would require a “search for the
source of the Nile and all its tributaries.” Id. at 35-36. The Court held that as used in
the Lanham Act, “origin of goods” refers only to the producer of the tangible
product sold in the marketplace — not the person or entity that originated the ideas.
Id. at 31. Because Dastar was the producer of the tangible product sold on the
marketplace, having edited the documentary, there was no “false designation of
origin” and the Court dismissed Fox’s Lanham Act claim. The Court noted, however,
that Fox’s claim alleging false designation of origin would have been sustained if
Dastar had bought the Crusade videotapes and merely repackaged them as its own.
Id.
In Cyber Websmith, Cyber Websmith alleged that the defendants were operating
websites for dental practices comprised of photographs copied directly from Cyber
Websmith’s copyrighted website templates. These copies by the defendants were
used in direct competition with Cyber Websmith’s business of providing website
design and marketing services to dental practices. The court held that the Copyright
Act preempted Cyber Websmith’s Lanham Act claim.
After finding that the works in question were within the subject matter of the
copyright statute, the court asked whether the claims asserted by the plaintiff were
merely duplicative of its copyright claims. The court noted that to avoid preemption,
an extra element must be incorporated in the claim that changes the nature of the
action so that it is qualitatively different from a copyright infringement claim.
Although the plaintiffs argued that they had alleged extra elements beyond those
required for copyright infringement, the court held that “the assertion of consumer
confusion and deception, without more,” did not allow the plaintiff to sidestep
preemption. Furthermore, the court held that the plaintiff’s allegations derived from
nothing more than the “inherent misrepresentation that accompanies the
unauthorized copying and distribution of another’s copyrighted work.” For these
reasons, the court dismissed the Lanham Act claim from the plaintiff’s complaint.
In Cable, Cable was an experienced real estate photographer who sold his
photographs to a real estate firm, Garrison. Garrison agreed to limit the use of
Cable’s works to marketing and to include a credit line prominently and clearly
identifying Cable as the creator of the photos. Cable alleged that Agence France
Presse (“AFP”) caused his images to be copied from Garrison’s website and used
without his permission in an online photograph database. Additionally, Cable alleged
that AFP had deliberately removed Cable’s photo credit and copyright notice. Cable
alleged a violation of § 43(a) of the Lanham Act based partially upon the theory that
by removing the copyright notice and information, AFP had used a false designation
of origin and created the danger that the works at issue would be associated with
AFP instead of Cable.
The court rejected AFP’s argument that Dastar precluded a claim under the Lanham
Act. It noted that “the Dastar court limited its ruling in one important way — it
stated that a claim under § 43(a) ‘would undoubtedly be sustained if Dastar had
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bought some of New Line’s Crusade videotapes and merely repackaged them as its
own.’” Id. at 981 (quoting Dastar, 539 U.S. at 31). The court stated, “This is what the
plaintiff has alleged — that AFP took the plaintiff’s photos and repackaged them as
their own without revision.” Id. Because Cable’s Lanham Act claim fit the
description of the caveat in Dastar, the court declined to dismiss the claim.2
Footnote 2: But see Agence France Presse v. Morel, 769 F.Supp.2d 295, 308 (S.D.N.Y.2011) (holding that
the import of Dastar is that an author’s sole recourse in copyright for unauthorized use cannot be
avoided by shoe-horning the claim into the Lanham Act).

Here, the defendants assert that in the wake of Dastar, the Lanham Act claim alleged
by DSI is preempted by the Copyright Act and should be dismissed. DSI responds
by distinguishing Dastar as being primarily motivated by the public work nature of
the film in question. Additionally, DSI points out that Dastar explicitly left open a
claim under § 43(a)(1)(B) under the Lanham Act. Dastar, 539 U.S. at 38; see 15 U.S.C.
§ 1125 (allowing a party to bring a claim alleging false designation of origin in
commercial advertising or promotion). This, DSI suggests, makes Dastar wholly
distinguishable from the case at hand and therefore it should not preclude DSI’s
Lanham Act claim.
As illustrated above, courts in this district addressing this issue post-Dastar are split.
Dastar rested heavily on the fact that the materials at issue were in the public domain
and had been edited by Dastar prior to redistribution. In contrast, DSI alleges that
the defendants appropriated and used its copyrighted works without DSI’s
permission and without alteration. Thus, the Supreme Court’s admonition that the
Lanham Act claim “would undoubtedly be sustained if Dastar had bought some of
New Line’s Crusade videotapes and merely repackaged them as its own” is directly
on point. Dastar, 539 U.S. at 31.
Here, as in Cable, DSI alleges that the defendants took DSI’s photographs and passed
them off as their own photographs without revision or proper accreditation. This
case does not involve works in the public domain, or the fear of a perpetual
copyright regime such as the Supreme Court faced in Dastar. Id. at 37. Nor does it
involve an instance where the defendants are alleged to have made modifications to
the plaintiff’s works before displaying the works. This court agrees with the analysis
in Cable and finds that the facts here cleanly fit within the exception enunciated by
Dastar. See Cable, 728 F.Supp.2d at 981. Accordingly, this court denies the motion to
dismiss the Lanham Act claim.
Notes and questions:
(1) In Defined Space, Inc. v. Lakeshore East, LLC 797 F.Supp.2d 896 (N.D. Ill. 2011), the
Northern District of Illinois held that a real estate developer’s use of plaintiff photographer’s
works without attribution had the potential to violate the Lanham Act.
(2) The district court in Defined Space argues that there is a difference between unattributed
copying of works that are themselves the goods (i.e., the photos in Defined Space) and works
embodied in separate, tangible goods (i.e., the video cassettes in Dastar). The court argues
that Dastar was a case about the “repackaging” of works into tangible goods and should be
limited to that context. Is that a fair reading of Dastar?

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(3) The court in Defined Space put some weight on the distinction between works under
copyright and those in the public domain. Is there anything in Dastar to justify that? Should
passing off and reverse passing off claims still be viable under Section 43(a) for works that
are still under copyright protection?
(4) Other courts have also narrowed the scope of Dastar by arguing that it precludes only
claims for non-attribution or “reverse passing off,” but leaves available claims for
misattribution or “passing off.” Finally, others rely on the fact that Dastar expressly left
open claims under section 43(a)(1)(B), which prohibits “misrepresenting the nature,
characteristics, [or] qualities” of goods or services in advertising. Are any of these readings of
Dastar good policy in your view?
(5) In its 2019 report on moral rights, the Copyright Office concluded (at 58) that it found
some of the decisions offering a narrower interpretation of the Supreme Court’s holding in
Dastar persuasive, but noted that “case law on this issue will likely continue to develop.” The
report offers a tentative suggestion (at 58–59) that
Congress may consider adopting an amendment to section 43(a) that would expand
the unfair competition protections to include false representations regarding
authorship of communicative works. … any such an amendment should be
narrowly crafted to focus on the purpose of the Lanham Act, and thus protect only
against consumer confusion or mistake as to authorship or attribution, and not to
provide expanded copyright protection, or afford the author any additional control
over permissible uses of the underlying work. Such a limitation would mitigate
against the Dastar court’s policy concerns about overlapping IP doctrines generally,
and limitations on public domain uses specifically.

Should Congress amend the Lanham Act to bring false representations regarding authorship
of communicative works within the ambit of Section 43(a)?

Moral rights in the United States under VARA
The United States recognizes moral rights for a limited class of “works of visual art” under
the Visual Artists Rights Act of 1990 (VARA). The rights provided under VARA are a pale
shadow of the French concept of “droit moral,” in terms of their application, scope, and
duration. VARA is codified at Section 106A of the Copyright Act.
Section 106A(a) gives the author of a work of visual art certain rights of attribution and
integrity that stay with the author independent of any disposition of the exclusive rights
provided in Section 106.

VARA rights are personal to the author or authors of the work.
Under VARA, moral rights are personal to the author and can only be exercised by the
author. If there is more than one author, those joint authors are initially co-owners of the
work and are also co-owners of the moral rights provided for in Section 106A.
The author’s rights under VARA are nontransferable, but they can be waived by a written
instrument signed by the author. The rights in VARA are not affected by the author’s
transfer of copyright, or by the sale of the physical embodiment of the work. Any rule to the

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contrary would negate the entire rationale of maintaining separate economic and noneconomic rights.
VARA rights are also personal in the sense that they are mostly limited to the life of the
author, although for works created before VARA came into effect and whose copyright term
is calculated under the 1909 Act, those rights expire with the copyright. See Section 106A(d)
and the discussion of duration below.
VARA rights can only be waived with specificity. Note that under section 106A(e)(1) this
agreement must specify the work and the particular uses of the work to which the waiver
applies. If the work is joint work, any one author can waive VARA rights for all co-authors,
with one exception. If a work was co-authored by A and B, A can’t waive B’s VARA rights
and claim sole credit for their joint work. It follows therefore that an artist’s display of
copyrighted photographs with a claim of sole authorship did not amount to a waiver of the
alleged co-author’s right of attribution under VARA. See Grauer v. Deutsch, 2002 WL
31288937 (S.D.N.Y. Oct. 11, 2002).
In its 2019 report on moral rights, the Copyright Office argued (at 83) that allowing one
author to waive the rights of another joint author “contradicts the purpose of VARA to
protect personal rights and is inconsistent with the statutory prohibition against the transfer of
those rights.” On the contrary, if one joint author were not allowed to waive moral rights on
behalf of all the authors of a work, that joint author’s economic rights would be held hostage
to the other joint authors where VARA rights were implicated. Not allowing one joint
author to waive for all would be inconsistent with the American rule that any joint author
may grant a license to the work without the approval of the other joint authors.
17 U.S. Code § 106A(b) Scope and Exercise of Rights.—
Only the author of a work of visual art has the rights conferred by subsection (a) in
that work, whether or not the author is the copyright owner. The authors of a joint
work of visual art are co-owners of the rights conferred by subsection (a) in that
work.
17 U.S. Code § 106A (e) Transfer and Waiver.—
(1) The rights conferred by subsection (a) may not be transferred, but those rights
may be waived if the author expressly agrees to such waiver in a written instrument
signed by the author. Such instrument shall specifically identify the work, and uses
of that work, to which the waiver applies, and the waiver shall apply only to the
work and uses so identified. In the case of a joint work prepared by two or more
authors, a waiver of rights under this paragraph made by one such author waives
such rights for all such authors.
(2) Ownership of the rights conferred by subsection (a) with respect to a work of
visual art is distinct from ownership of any copy of that work, or of a copyright or
any exclusive right under a copyright in that work. Transfer of ownership of any
copy of a work of visual art, or of a copyright or any exclusive right under a
copyright, shall not constitute a waiver of the rights conferred by subsection (a).
Except as may otherwise be agreed by the author in a written instrument signed by
the author, a waiver of the rights conferred by subsection (a) with respect to a work
of visual art shall not constitute a transfer of ownership of any copy of that work, or
of ownership of a copyright or of any exclusive right under a copyright in that work.

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VARA is limited to “works of visual art”
The rights in Section 106A(a) apply only to “the author of a work of visual art.” A ‘work of
visual art’ is limited to paintings, drawings, prints, and sculptures that are either single copies
or limited editions of 200 or fewer. Also, works made for hire and many separate classes of
work are expressly excluded from the definition of a work of visual art.
17 US Code § 101 (Definitions)
A “work of visual art” is—
(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited
edition of 200 copies or fewer that are signed and consecutively numbered by the
author, or, in the case of a sculpture, in multiple cast, carved, or fabricated
sculptures of 200 or fewer that are consecutively numbered by the author and bear
the signature or other identifying mark of the author; or
(2) a still photographic image produced for exhibition purposes only, existing in a
single copy that is signed by the author, or in a limited edition of 200 copies or
fewer that are signed and consecutively numbered by the author.
A work of visual art does not include—
(A)(i) any poster, map, globe, chart, technical drawing, diagram, model, applied art,
motion picture or other audiovisual work, book, magazine, newspaper, periodical,
data base, electronic information service, electronic publication, or similar
publication;(ii) any merchandising item or advertising, promotional, descriptive,
covering, or packaging material or container; (iii) any portion or part of any item
described in clause (i) or (ii);
(B) any work made for hire; or
(C) any work not subject to copyright protection under this title.

VARA is not a general moral rights statute: it has no application to literary works, musical
works, sound recordings, or any other non-visual class of copyright subject matter. Even
within the category of visual works, section 106A has no application to works made for hire,
commercial 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
below. Furthermore, VARA does not protect non-copyrightable art. See e.g. Kelley v. Chicago
Park Dist., 635 F.3d 290, 306 (7th Cir. 2011).
Works made for hire:
Relatively few otherwise eligible works are excluded on the basis that they are works for hire
because the kinds of single- or limited-edition visual art covered by VARA are not usually
made as works for hire, but there are exceptions. See Carter v. Helmsley-Spear, Inc. (“Carter II”),
71 F.3d 77, 87–88 (2d Cir. 1995).
Commercial art:
The Section 101 definition of a “work of visual art” also excludes what can be loosely
termed commercial art, specifically, “any merchandising item or advertising, promotional,
descriptive, covering, or packaging material or container.” For example, in Pollara v. Seymour,
344 F.3d 265, 269–71 (2d Cir. 2003), the majority of the Second Circuit found that the

472

“objective and evident purpose” of a banner created as part of a lobbying effort to promote
a specific message rendered the banner as promotional and advertising material and not an
eligible work of visual art, despite the artistic ability and creativity inherent in the work. The
hand painted banner had been installed at public plaza without a permit and employees of
New York’s Office of General Services had removed the banner. During removal, it was
torn vertically into three pieces.
Figure 30 Banner in Pollara v. Seymour

The Copyright Office makes the following observations about the exclusion of commercial
art from VARA in its 2019 report on moral rights (at 67):
The Office does not believe that Congress excluded commercial and promotional
works from the definition of “work of visual art” because it believed such images to
be somehow artistically less worthy than so-called “fine art.” Instead, it appears
more likely that, … Congress wanted to avoid interfering with works of art that
were controlled or influenced by an entity other than the artist—and hence
presumably are less attached to the artist’s reputation—as well as avoid interfering
with contractual freedoms. The Office accepts this apparent reasoning, but does
believe that the commercial/“fine art” distinction can be drawn more narrowly than
the current statute has it.

In its report, the Office recommended that Congress consider an amendment to the
definition of a “work of visual art” along the lines of the definition of an eligible work
similar to that used by the California Art Preservation Act. It suggested (at 68) adding the
phrase “prepared under contract for commercial use by its purchaser” to the definition in
Section 101 such that the proposed Section 101 would read:
a work of visual art does not include – (A) . . . (ii) any merchandising item or
advertising, promotional, descriptive, covering, or packaging material or container,
any of which are prepared under contract for commercial use by its purchaser.

Applied art:
VARA’s standard for a “work of visual art” also specifically excludes “applied art,” which
the statute does not define. What then is a work of applied art? The case of Cheffins v. Stewart,
825 F.3d 588 (9th Cir. 2016) concerned a mobile replica of 16th-century Spanish galleon,
built from used school bus that featured at the Burning Man festival. In Cheffins, the majority
of the Ninth Circuit elaborated the concept of “applied art” as follows (at 594):
We therefore hold that an object constitutes a piece of “applied art” — as opposed
to a “work of visual art” — where the object initially served a utilitarian function

473

and the object continues to serve such a function after the artist made
embellishments or alterations to it. This test embraces the circumstances both where
a functional object incorporates a decorative design in its initial formulation, and
where a functional object is decorated after manufacture but continues to serve a
practical purpose. Conversely, “applied art” would not include a piece of art whose
function is purely aesthetic or a utilitarian object which is so transformed through
the addition of artistic elements that its utilitarian functions cease.

Applying this definition the majority said (at 595):
The La Contessa began as a simple school bus — an object which unquestionably
served the utilitarian function of transportation. To transform the bus into the La
Contessa, Cheffins and Jones adorned it with the visual trappings of a 16th-century
Spanish galleon. While the La Contessa’s elaborate decorative elements may have had
many artistic qualities, the La Contessa retained a largely practical function even after
it had been completed. At Burning Man, the La Contessa was used for transportation,
providing rides to festival-goers, hosting musical performances and weddings, and
serving as a stage for poetry and acrobatics shows. Indeed, the La Contessa often was
driven about the Festival grounds and was banned from the Festival in 2004 because
“its unsafe driving practices far exceeded community tolerance and out-weighed the
visual contribution” it made.
Under the definition we adopt today, the La Contessa plainly was “applied art.” It
began as a rudimentary utilitarian object, and despite being visually transformed
through elaborate artistry, it continued to serve a significant utilitarian function
upon its completion. As “applied art,” the La Contessa was not a work of visual art
under the VARA and therefore not eligible for its protection. Therefore, the trial
court properly granted summary judgment to Stewart on Cheffins and Jones’s
VARA claim.
Figure 31 La Contessa (Cheffins v. Stewart)

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In her concurring opinion in Cheffins v. Stewart, Judge McKeown expressed concern that the
majority’s focus on whether an object has or retains a utilitarian function ran “the risk of
unduly narrowing the protections of artists under the Visual Artist Right’s Act of 1990 and
not focusing on the work as a whole.” Judge McKeown argued that the right question to ask
in determining whether a work is “applied art,” was “whether the primary purpose of the
work as a whole is to serve a practical, useful function, and whether the aesthetic elements
are subservient to that utilitarian purpose.” However, she found that even under this more
flexible test the bus/Spanish galleon, La Contessa, was applied art outside the scope of
Section 106A of the Copyright Act.
Preparatory works:
Courts have sometimes held that preparatory works do not qualify as works of visual art
because the fall under the exclusion of “model[s]” in the Section 101 definition. In
NASCAR v. Scharle, 184 Fed. App’x. 270 (3d Cir. 2006), the Third Circuit held that drawings
for the two-dimensional design of a trophy were not works of visual art, but merely models
created to “arrive at the optimal design for the trophy,” the final product. In contrast, in
Flack v. Friends of Queen Catherine, Inc., 139 F. Supp. 2d 526 (S.D.N.Y. 2001) the district court
held that a clay head used to cast a bronze statue was not excluded from the protection of
VARA. The court relied on the art community’s acceptance and exhibition of clay sculptures
as works of art in their own right to distinguish the work from the kinds of models excluded
from the definition of works of visual art.
Site-specific works:
VARA does not specifically mention “site-specific works;” however, the First Circuit in
Phillips v. Pembroke Real Estate, 459 F.3d 128 (1st Cir. 2006) found that VARA did not apply to
a multi-element sculpture designed for a specific park. The First Circuit’s reading of the
statute is difficult to square with the building exception in Section 113(d) of the Copyright
Act which acknowledges potential protection for site-specific art. See Kelley v. Chicago Park
Dist. 635 F.3d 290, 306–07 (7th Cir. 2011). See also Cohen v. G&M Realty LP, 320 F.Supp.3d
421 (E.D. N.Y. 2018) extracted below.
Figure 32 Phillips v. Pembroke Real Estate

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The rights of attribution and integrity and their limits
VARA provides rights of attribution and integrity, but no rights of disclosure, withdrawal, or
any right to resale royalties.
17 U.S. Code § 106A(a)
(a) Rights of Attribution and Integrity.— Subject to section 107 and independent of
the exclusive rights provided in section 106, the author of a work of visual art—
(1) shall have the right—(A) to claim authorship of that work, and (B) to prevent
the use of his or her name as the author of any work of visual art which he or she
did not create;
(2) shall have the 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, mutilation, or other modification of
the work which would be prejudicial to his or her honor or reputation; and
(3) subject to the limitations set forth in section 113 (d), shall have the right—(A) to
prevent any intentional distortion, mutilation, or other modification of that work
which would be prejudicial to his or her honor or reputation, and any intentional
distortion, mutilation, or modification of that work is a violation of that right, and
(B) to prevent any destruction of a work of recognized stature, and any intentional
or grossly negligent destruction of that work is a violation of that right.

Section 106A(a)(1) and (2) protect some limited reputational interests of the author of a
work of visual art. Under Section 106A(a)(1), the author of a work of visual art has the right
to claim authorship of that work and to prevent being held out as the author of any work of
visual art she did not create. Under Section 106A(a)(2), the author also has the right to
prevent the use of her name as the author of the work of visual art if that work has been
distorted, mutilated, or modified in some other way that “would be prejudicial to his or her
honor or reputation.”
Section 106A(a)(3) goes beyond issues of attribution and actually vests the author of a work
of visual art with two important rights in relation to the work itself. Subsection (A) gives the
author the right to prevent any intentional distortion, mutilation, or other prejudicial modification
of that work. This excludes any change to the work resulting from the passage of time or the
inherent nature of the materials used, see Section 106A(c)(1). It also excludes any
modification resulting from conservation or public presentation (including lighting and
placement), unless the modification is caused by gross negligence, see Section 106A(c)(1)(2).
Section 106A(a)(3), subsection (B) gives the author the right to “prevent any destruction of a
work of recognized stature, and any intentional or grossly negligent destruction of that work
is a violation of that right.” The right to prevent intentional distortion, mutilation, or
prejudicial modification and the right to prevent the destruction of the work of recognized
stature are both subject to limitations in Section 113(d) if the work has been incorporated in
or made part of a building. These provisions are discussed in the 5Points case, below.
The right of attribution does not apply in relation to reproductions in a significant set of
situations.
17 U.S. Code § 106A(c)(3)
The rights described in paragraphs (1) and (2) of subsection (a) shall not apply to
any reproduction, depiction, portrayal, or other use of a work in, upon, or in any
connection with any item described in subparagraph (A) or (B) of the definition of

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“work of visual art” in section 101, and any such reproduction, depiction, portrayal,
or other use of a work is not a destruction, distortion, mutilation, or other
modification described in paragraph (3) of subsection (a).

Section 106A(c)(3) provides that the rights relating to attribution do not apply to “any
reproduction, depiction, portrayal, or other use of a work” in various contexts, including
maps, technical drawings, motion pictures, books, magazines, electronic publications, or
advertising, to name just a few. Likewise, the reproduction of a work of visual art, or its
depiction or portrayal is not considered “a destruction, distortion, mutilation, or
modification” for the purposes of § 106A(a)(3). As the Copyright Office report on moral
rights explains (at 75):
Under this exception, a reproduction of an artist’s visual work on a poster or in a
magazine need not be accompanied by the artist’s name. Many of the attribution
claims brought under VARA focus on a reproduction, not the original, work of
visual art. Courts have consistently dismissed these claims under this exception.123

The duration rights under VARA
There are three different possibilities for the duration of rights under VARA, only one of
which really makes sense. If moral rights protect the artist’s reputation and special personal
connection with the work, it should follow that those rights exist while the artist is alive and
die with the artist. This is the rule for works made after the effective date of VARA (June 1,
1991).
However, for works created but not transferred before the effective date of VARA, the
artist’s rights endure for the duration of her other copyright rights, i.e., a term of life plus 70
years. Conversely, artists who transferred title to their works before June 1, 1991 have no
rights under VARA. As the Copyright Office notes in its 2019 report on moral rights (at 81):
This particular provision has created certain inconsistencies regarding duration of
rights. If an artist created a painting in 1985 (for which he did not transfer title
before 1991) and dies in 2005, then the copyright term and the artist’s rights of
integrity and attribution for that painting will last until 2075. However, if the artist
created a painting in 1995 and died in 2005, then the copyright term will last until
2075 but the rights of integrity and attribution would have lasted for a shorter time,
until 2005.

123 The report cites, Wilson v. New Palace Casino, L.L.C., No. 1:11cv447, 2013 WL 870350, at *3–4 (S.D. Miss.

Mar. 7, 2013) (dismissing the artist’s attribution claim in relation to reproductions of a feature of his original
painting); Martin v. Walt Disney Internet Grp., No. 09CV1601, 2010 WL 2634695, at *5 (S.D. Cal. June 30, 2010)
(dismissing the plaintiff’s attribution claim regarding reproductions of her photograph); Silberman v. Innovation
Luggage, Inc., No. 01 Civ. 7109, 2003 WL 1787123, at *4–5 (S.D.N.Y. Apr. 3, 2003) (holding that the artist could
not assert an attribution claim under VARA in relation to unsigned reproductions of the artist’s original
photograph).

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A case study of VARA in action
Cohen v. G&M Realty LP, 320 F.Supp.3d 421 (EDNY 2018) (February 12, 2018)
Five 5 Points Pointz in LIC Queens Graffiti
Credit: Jakub Redziniak (2010) CC BY-NC-ND 2.0 license

Senior District Judge Block
This marks the latest chapter in the ongoing saga of what has commonly become
known as the 5Pointz litigation. Plaintiffs, 21 aerosol artists, initiated this lawsuit
over four years ago by seeking a preliminary injunction under the Visual Artists
Rights Act of 1990 (“VARA”), 17 U.S.C. § 106A, against defendants Gerald Wolkoff
(“Wolkoff”) and four of his real estate entities to prevent the planned demolition by
Wolkoff of his warehouse buildings in Long Island City and consequent destruction
of plaintiffs’ paintings on the walls of the buildings.
I
On November 12, 2013, after a hearing, the Court issued an order denying
preliminary injunctive relief and stating that “a written opinion would soon be issued.”
Rather than wait for the Court’s opinion, which was issued just eight days later on
November 20th, Wolkoff destroyed almost all of the plaintiffs’ paintings by
whitewashing them during that eight-day interim.
In its extensive opinion the Court initially noted that Wolkoff’s buildings “had
become the repository of the largest collection of exterior aerosol art . . . in the
United States” and that this litigation “marks the first occasion that a court has had
to determine whether the work of an exterior aerosol artist—given its general

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ephemeral nature—is worthy of any protection under the law.” Cohen v. G & M
Realty L.P., 988 F. Supp. 2d 212, 214 (E.D.N.Y. 2013) (“Cohen I”).
In denying the plaintiffs’ application for preliminary injunctive relief, the Court
recognized that the rights created by VARA were at tension with conventional
notions of property rights and tried to balance these rights. It did so by not
interfering with Wolkoff’s desire to tear down the warehouses to make way for highrise luxury condos, but cautioned that “defendants are exposed to potentially
significant monetary damages if it is ultimately determined after trial that the
plaintiffs’ works were of ‘recognized stature’” under VARA.
The trial has now happened. It lasted three weeks. At plaintiffs’ insistence, it was
tried before a jury, but just prior to summations, plaintiffs—with defendants’
consent—waived their jury rights. Rather than summarily dismiss the jury after it had
sat through the entire trial, the Court converted it to an advisory jury. During its
charge, the Court carefully explained the parties’ rights and obligations under VARA,
including the plaintiffs’ entitlement to substantial statutory damages if the jury
determined that Wolkoff had violated plaintiffs’ VARA rights and that he had acted
willfully. On a 98-page verdict sheet, the jury found liability and made various
damage awards in respect to 36 of plaintiffs’ 49 works of art that were the subject of
the lawsuit. In every case they found that Wolkoff had acted willfully.
Although the Court does not agree with all of the jurors’ findings, it does agree that
Wolkoff willfully violated plaintiffs’ VARA rights in respect to those 36 paintings.
The Court further finds that liability and willfulness should attach to an additional
nine works.
Given the abject nature of Wolkoff’s willful conduct, the Court awards the
maximum statutory damages under VARA for each of the 45 works of art
wrongfully and willfully destroyed in the combined sum of $6,750,000.
II
A. The Relevant Statutory Framework
As the Court explained in Cohen I, “VARA amended existing copyright law to add
protections for two ‘moral rights’ of artists: the rights of attribution and integrity.”
Cohen I, 988 F. Supp. 2d at 215. VARA has codified the right to integrity to provide
“the author of a work of visual art” the right
(A) to prevent any intentional destruction, mutilation, or other modification of that
work which would be prejudicial to his or her honor or reputation, and any
intentional distortion, mutilation, or modification of that work is a violation of that
right, and
(B) to prevent any destruction of a work of recognized stature, and any intentional
or grossly negligent destruction of that work is a violation of that right.

17 U.S.C. § 106A(a)(3).
Thus, in Cohen I, the Court held that plaintiffs’ aerosol art comes under VARA’s
protection as works of “visual art”, and that, under § 106A(a)(3)(B), VARA gives the
‘author of a work of visual art’ the right to sue to prevent the destruction of the work
if it is one of “recognized stature.” VARA also permits the artist to seek monetary

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damages under § 106A(a)(3)(A) if the work was distorted, mutilated, or otherwise
modified to the prejudice of the artist’s honor or reputation.
Section 113(d)(1) of VARA provides that
In a case in which —
(A) a work of visual art has been incorporated in or made part of a building in such
a way that removing the work from the building will cause the destruction,
distortion, mutilation, or other modification of the work as described in section
106A(a)(3), and
(B) the author consented to the installation of the work in the building either before
the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990,
or in a written instrument executed on or after such effective date that is signed by
the owner of the building and the author and that specifies that installation of the
work may subject the work to destruction, distortion, mutilation, or other
modification, by reason of its removal, then the rights conferred by paragraphs (2)
and (3) of section 106A(a) shall not apply.2
Footnote 2: Paragraph (2) — not applicable in this case — protects the right of attribution by
affording the artist “the 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, mutilation, or other modification of the work which would be
prejudicial to his or her honor or reputation.”

Section 113(d)(2) provides, in part, that
If the owner of a building wishes to remove a work of visual art which is a part of
such building and which can be removed from the building without the destruction,
mutilation, or other modification of the work as described in section 106A(a)(3), the
author’s rights under paragraphs (2) and (3) of section 106A(a) shall apply unless—
(A) the owner has made a diligent, good faith attempt without success to notify the
author of the owner’s intended action affecting the work of visual art, or
(B) the owner did provide such notice in writing and the person so notified failed,
within 90 days after receiving such notice, either to remove the work or to pay for
its removal.

Thus, § 113(d) provides for two possibilities when a protected work of art has been
integrated into a building subsequent to June 1, 1991, VARA’s effective date. Section
113(d)(1) deals with works of visual art that cannot be removed without causing
destruction, mutilation, or other modifications to the work. Section 113(d)(2) deals
with works of visual art that can be removed without causing such harm.
Under § 113(d)(1), if a work is not removable without destroying, mutilating,
distorting, or otherwise modifying the work, the artist’s VARA right of integrity
under § 106A(3) attach, and the artist may sue to prevent the destruction of the work
unless the right is waived “in a written instrument . . . that is signed by the owner of the
building and the author and that specifies that installation of the work may subject the
work to destruction, distortion, mutilation, or other modification, by reason of its
removal.” § 113(d)(1)(B) (emphasis added).
Under § 113(d)(2), if a work is removable without destroying, mutilating, distorting,
or otherwise modifying it, VARA gives the artist the opportunity to salvage the work
upon receipt of a 90 days’ written notice from the building owner of the owner’s

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“intended action affecting the work of visual art.” 17 U.S.C. §§ 113(d)(2)(A)-(B). If
the artist fails to remove or pay for the removal of the works within the 90 days —or
if the owner could not notify the artist after making a “good faith effort,” 17 U.S.C. §
113(d)(2)(A)—the artist’s VARA rights are deemed waived for the removable work,
and the owner may destroy them without consequences.
Damages that may be awarded for the violation of the artist’s rights of attribution
and integrity under § 106A(a)(3) are the same that apply for copyright infringement,
namely actual (including profits) and statutory. 17 U.S.C. § 504(a). As the House
Judiciary Committee Report explained:
Section 6(a) of the bill simply amends section 501(a) of title 17 to add those authors
covered by new section 106A . . . . It thereby makes all title 17 remedies [except
criminal sanctions] available to those authors. . . . [VARA] thereby provides for
monetary damages, and for injunctive relief to prevent future harm. The same
standards that the courts presently use to determine whether such relief is appropriate for violations
of section 106 rights will apply to violations of section 106A rights as well.

House Report at 21-22 (1990) (emphasis added).
There is no limit to the amount of actual damages for each work, but statutory
damages for each may be “not less than $750 or more than $30,000 as the court
considers just.” 17 U.S.C. § 504(c)(1). If, however, the plaintiff “sustains the burden
of proving, and the court finds, that infringement was committed willfully, the court
in its discretion may increase the award of statutory damages” for each work “to a
sum of not more than $150,000.” 17 U.S.C. § 504(c)(2). The plaintiff is not entitled
to both actual and statutory damages but must elect one or the other “before final
judgment is rendered[.]” 17 U.S.C. § 504(c)(1).
B. The Advisory Jury
… The Court would be remiss if it did not pause to acknowledge the extraordinary
work of the eight jurors. Rarely were they late during the course of the extensive trial,
and the Court was impressed with their rapt attention to the difficult task that
awaited them in having to assess the defendants’ liability in respect to each of the 49
works of art. Since the jurors had spent the better part of a month in anticipation of
deliberating, the Court was disinclined to summarily dismiss them when, at the
veritable 11th hour, the plaintiffs suddenly decided to convert the case to a bench
trial. Moreover, since 5Pointz had achieved worldwide community recognition, the
Court was keen to learn whether the jurors, as members of the community, would
view the works as having achieved recognized stature under VARA. To enhance the
integrity of their verdicts, the Court decided it best not to tell the jurors that their
findings would only be advisory.
The complexity of the litigation did not deter the jurors from making individualized
findings in respect to each of the 21 artists and their 49 works on the 98-page verdict
sheet. They were tasked with having to determine whether each destroyed work was
of recognized stature and/or was mutilated, distorted, or otherwise modified to the
prejudice of the artist’s honor or reputation by the whitewashing. They found that 28
of the 49 destroyed works had achieved recognized stature, and eight more had been
mutilated, distorted, or otherwise modified to the prejudice of the artists’ honor or
reputation. Each of the 21 plaintiffs were adversely affected in one way or the other,
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and the jury had to individually assess whether actual and statutory damages were
warranted in regard to each work. It awarded a total of $545,750 in actual damages
and $651,750 in statutory damages.
C. The Witnesses and Evidentiary Landscape
Each of the 21 plaintiffs/artists testified; they were respectful, articulate and credible.
Folios for each were admitted into evidence collectively containing their professional
achievements and recognition in the form of an impressive array of fellowships,
residences, public and private commissions, teaching positions, media coverage, and
social media presence. Not surprisingly, each of the 21 Folios contained beautiful
color prints of the artists’ respective aerosol works of art which are the subject of the
lawsuit. They are appended to this opinion. It is apparent that they reflect striking
technical and artistic mastery and vision worthy of display in prominent museums if
not on the walls of 5Pointz. The Folios also contain photos showing how almost all
of these works of art were partially or wholly whitewashed by Wolkoff.
5Pointz was an egalitarian place. The artists came from many backgrounds. Some of
the plaintiffs testified via Skype from international residences. Many who live in New
York had immigrated from other countries to join the 5Pointz community. One
artist flew from London to testify; another came of age in rural West Virginia. Some
artists came from highly prestigious art schools; others were selftaught. Some were
fixtures in elite, traditional art circles; others were simply dedicated to street and
community art. The Court was impressed with the breadth of the artists’ works and
how many of the works spoke to the social issues of our times.
The principal testimony about the advent, evolution and demolition of 5Pointz came
from plaintiff Jonathan Cohen, one of the world’s most accomplished aerosol artists.
Wolkoff had designated Cohen as 5Pointz’s de facto curator, appointing him to run
the site and pick the works he thought were of merit: “I gave him permission, plain,
Jonathan, you are in charge, bring whoever you think is right to come and display
their work on my building.” Tr. at 2025:4-8.
In addition to the artists, three experts testified for the plaintiffs. Renee Vara, a
certified art appraiser, former head fine art expert at Chubb Insurance and art
professor at New York University, testified to the quality and recognized stature of
the works; Elizabeth Littlejohn, an art appraiser certified through the Appraisers
Association of America, testified to their appraisal value; and Harriet Irgang Alden,
the chief paintings conservator at Art Care NYC, testified as to the removability of
each of the artworks from the 5 Pointz walls.
Plaintiffs also called two fact witnesses. Angelo Madrigale, Vice President and
Director of Contemporary Art at Doyle New York, an auction house, wrote a letter
upon which Vara relied in formulating her report. He testified to the artistic
importance of the works. Lois Stavsky developed a 5Pointz exhibit for Google Arts
and Culture and testified to the creation of that exhibit and why Google believed that
5Pointz was a culturally significant site.
Wolkoff was the defendants’ principal witness. He testified to his rise from a poor
childhood to become a successful real estate developer and explained his role in the
advent and success of 5 Pointz. He was adamant that the artists knew that the day

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would come when the warehouse buildings bearing their works of art would come
down and be replaced by high-rise residential condos.
Although the Court believes that Wolkoff in the main testified truthfully, he was a
difficult witness. He frequently ignored or challenged instructions by the Court. He
was argumentative and prone to tangents and non-responsive answers. Eliciting
coherent testimony was a chore and was only achieved after the Court threatened to
hold him in contempt.
In addition to Wolkoff, two experts testified for the defendants. Erin Thompson, a
professor of art history at the City University of New York and practicing art lawyer,
testified as to the issue of recognized stature, and Christopher Gaillard, a fine art
appraiser with the art appraisal and acquisition firm Gurr Johns, testified as to the
works’ appraisal value.
The story of 5Pointz that follows comes primarily from the lips of Cohen and
Wolkoff.
III
A. The Advent and Evolution of 5Pointz
What became 5Pointz originated as Phun Phactory in the early 1990s. The
warehouses were largely dilapidated and the neighborhood was crime infested. There
was no control over the artists who painted on the walls of the buildings or the
quality of their work, which was largely viewed by the public as nothing more than
graffiti. This started to change in 2002 when Wolkoff put Cohen in charge. Cohen
and several other artists also rented studio space in the warehouse buildings.
Collectively, they worked to improve conditions. As Cohen explained:
We took it upon ourselves to clean the loading dock. . . . The dumpsters were
overflowing. We took it upon ourselves, we hired his employees, we paid for the
lighting. We put motion sensors up so that when you came to the loading dock it
was inviting. It actually drew you in as opposed to scaring you away.

Wolkoff recognized the merit of the art. As he acknowledged: “I liked it and they did
more and more and I thought it was terrific. They were expressing themselves.” And
he approved of the job Cohen did in curating the art: “I have no feelings even today
against Jonathan Cohen. I thought he was terrific handling my building. . . . Anything
to do with art I left up to Jonathan. He had good taste in the artists that came there.”
Until Wolkoff decided over a decade later that the economic climate was ripe to
convert the site into luxury condos, he and Cohen had a copacetic relationship.
But nothing was ever reduced to writing and Wolkoff only verbally laid out three
rules for what could be put on the walls: no pornography, no religious content, and
nothing political. In his role, Cohen established a system of rules for both the
creation and curation of the art, spending seven days a week without pay to bring
5Pointz to fruition.
Cohen oversaw the site, kept it clean and safe, allotted wall space, and explained the
site’s rules and norms to new artists. Over time, crime in the neighborhood dropped
and the site became a major attraction drawing thousands of daily visitors, including
busloads of tourists, school trips, and weddings. Movie, television, and music video
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producers came; it was used for the 2013 motion picture Now You See Me, starring
Jesse Eisenberg and Mark Ruffalo, and was the site of a notable tour for R&B singer
Usher.
As the plaintiff Castillo explained, “street art became a new form,” which “now has
become an industry.” And 5Pointz became “this outdoor museum where kids can
touch the wall, and . . you can’t do that at a museum. You can’t go and touch a Van
Gogh or like a Mona Lisa.”
Wolkoff had nothing to do with day-to-day operations. Under Cohen’s control, he
witnessed his buildings emerge as a mecca for the world’s largest collection of quality
outdoor aerosol art.
B. The Walls
1. Covering
5Pointz was a site of creative destruction; most artworks had short lifespans and
were repeatedly painted over by successive artists. The rules behind covering were
important; as virtually every artist testified, “going over” someone else’s piece
without permission was a sign of disrespect that could cause conflicts. Going over
another piece partially or sloppily was another insult. As Cohen explained:
You respect your wall, you clean up when you’re done, you cover what you go over
completely. If you do not cover what you went over, you do not last. That was rule
number one. Respect in our game is everything, and if you don’t have respect then
you don’t get respect.

As a result, Cohen established an elaborate system of rules and norms governing
how long pieces would remain and when a piece could be covered by a new artwork.
As he testified:
THE COURT: Let me ask you a question. Can anybody paint over your paintings
without your permission, aside from vandalism?
A: No. Everything was done with permission and there was a system that grew over
the period of time I was there. You know, we perfect as we go along.

2. Short-Term Rotating Walls vs. Long-Standing Walls
5Pointz was organized into short-term rotating walls and long-standing walls. The
short-term walls would change on a daily or weekly basis. As Cohen explained:
“There were allocated spaces that were for straight beginners that had no idea how
to paint. And those, I would say you could utilize the space, but it more than likely
will be gone tomorrow or the next day or whatever.” “Short-term rotating walls, it
was communicated up front so they’d know you could have several weeks or
whatever.”
On the other hand, pieces on long-standing walls were more permanent, although a
high-quality piece could achieve permanence even if not initially placed on a longstanding wall; but an artist’s reputation was not sufficient to secure longstanding
status. As Cohen further explained:
The prime real estate that faces the train were the most sought after spots to paint
and those went to more advanced writers. You’ve got to understand, as well,
because you are an advanced writer doesn’t mean that you are going to perform on

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an advanced level. You may just want to blow off steam one afternoon, but that
doesn’t mean your piece should last a long time. And you could be a beginner and
do the performance of your lifetime and produce a piece that is so amazing that it’s
decided it will stay.

While Cohen had the final say as to the duration of the pieces, he always spoke with
the artists about their planned lifespan and eventual replacement. As he testified:
“For long term productions, where people invested time and money, I would
communicate with them. I would reach out to them. In some instances, I would tell
them to come back and actually egg them on to do something real better. As the bar
got raised, everybody performed better.”
In other words, 5Pointz operated not just as a creative space, but a competitive place.
Artists would compete to outdo one another and earn prominent placement on a
long-standing wall. In addition to the walls facing the passing 7 train, which were
seen by millions of commuters, the artists prized the walls near the loading docks,
which had the most foot traffic, and the walls inside the buildings, which were
generally long-standing. While as many as 10,000 works were destroyed while Cohen
was in charge, it was not anarchy. Most of the best works by the best artists achieved
permanent or semi-permanent placements on the long-standing walls.
C. The Planned Demolition
Starting in 2011, rumors that Wolkoff had plans to shut down 5Pointz and turn it
into luxury condos began to concern the artists. In May 2013, the rumors became
reality: Cohen learned that Wolkoff had started to seek the requisite municipal
approvals for his condos.
Hoping to save 5Pointz, Cohen filed an application with the City Landmark
Preservation Commission to preserve the site as one of cultural significance. It was
denied because the artistic work was of too recent origin. See Letter from NYC
Landmarks Preservation Commission, August 20, 2013.
Cohen also sought funding to buy the property, which had been valued at $40
million. However, this fell through in October 2013 when Wolkoff obtained a
necessary variance, instantly raising the property value to more than $200 million.
The higher price was out of reach of Cohen’s potential investors. Plaintiffs then
initiated this litigation to enjoin Wolkoff from destroying 5Pointz.
D. The Whitewashing
As soon as the Court denied the plaintiffs’ application for preliminary injunction,
Wolkoff directed the whitewashing of virtually all the artwork on the 5Pointz site
with rollers, spray machines, and buckets of white paint.
The whitewashing was inconsistent. Some works were completely covered in white
paint. Others were only partially covered. Some were fully covered, but by such a
thin layer of paint that the artwork was easily visible beneath the paint. What was
consistent was that none of the covered works was salvageable. And plaintiffs were
no longer allowed on the site, even to recover the scattered remnants of their ruined
creations.

485

Since their works were effectively destroyed, plaintiffs were relegated to seeking
monetary relief under VARA.
IV
A. Temporary Works of Art
Defendants’ overarching contention is that plaintiffs knew that the day would come
when the buildings would be torn down and that, regardless, the nature of the work
of an outdoor aerosol artist is ephemeral. They argue, therefore, that VARA should
not afford plaintiffs protection for their temporary works.
VARA does not directly address whether it protects temporary works. However, in
the context of works on buildings, it is clear from 17 U.S.C. § 113(d) that temporary
works are protected. Moreover, relevant case law conceptually supports this
conclusion. In short, there is no legal support for the proposition that temporary
works do not come within VARA’s embrace.
First, § 113(d)(1) specifies that an unremovable work incorporated in a building is
protected by VARA unless the artist waives his or her rights in a writing signed by
both the artist and the building owner. If the building owner could orally inform the
artist that the building is coming down someday, and thereby convert the work into
an unprotected temporary work, the written consent provision would be rendered
nugatory. As the House Judiciary Committee Report explains: “The purpose of [the
written waiver] is to ensure that the author is made fully aware of the circumstances
surrounding the installation and potential removal of the work and has nevertheless
knowingly subjected the work to possible modifications that would otherwise be
actionable under section106A.” House Report at 21. And as Patry adds: “In light of
this provision’s purpose of ensuring that artists be made aware fully of the
circumstances surrounding installation and potential destructive removal, it should
be strictly construed.” Patry on Copyright § 16:33.
Second, § 113(d)(2), specifying that artists are entitled to 90 days’ written notice to
allow them to salvage their removable works, contemplates that such works may be
temporarily on the side of a building. Thus, VARA resolves the tension between the
building owners’ rights and the artists’ rights through § 113(d), not by excluding
temporary works from protection.
Of the limited available case law, Board of Managers of Soho International Arts
Condominium v. City of New York, 2003 WL 21403333 (S.D.N.Y. June 17, 2003)
perhaps best illustrates this point. There, an artist sought to prevent his work from
being permanently removed from the wall of a condo under VARA. There was
conflicting testimony as to whether the work was intended to be kept on the wall
permanently or temporarily. Nonetheless, the Court, in denying summary judgment,
held VARA only allowed the artist to remove the mural, not keep it in its place. The
court rejected the artist’s argument that removal was “tantamount to the Work’s
destruction” as “nowhere in the dictionary definition of ‘remove’ does the
temporality of the act of removal arise.” Therefore, it was “clear to the Court that
what Congress intended in bifurcating § 113(d)’s protections was to separate removal
situations based not on the temporality of the removal but on the consequences of
the removal.”

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Thus, VARA draws no distinction between temporary and nontemporary works on
the side of a building, particularly when all that makes a work temporary is the
building owner’s expressed intention to remove or destroy it. VARA protects such
works; how it protects them is governed by the carefully crafted provisions of §
113(d) based on the removability of the works, not their permanence.
Also supporting the conclusion that VARA applies to temporary works is 17 U.S.C.
§ 106A(c)(1), which provides that modifications that are “the result of the passage of
time or the inherent nature of the materials” are not violations of VARA. This
exception was applied in Flack v. Friends of Queen Catherine Inc., 139 F. Supp. 2d 526
(S.D.N.Y. 2001), where the court dismissed a VARA claim because the head of a
statue was exposed to the elements, causing the clay to deteriorate, but there was no
evidence that the defendant otherwise directly damaged the work. The exception is
not applicable here. The whitewashing was not caused by the “passage of time” or
the “inherent nature of the materials”; it was caused by Wolkoff throwing paint on
the works.
Thus, Congress chose to exclude protection for the passage of time and natural
deterioration but not for other types of temporary works. Under the principle of
statutory interpretation expressio unius est exclusio alterius (the expression of one thing
implies the exclusion of others), this choice lends support to the conclusion that
there is no categorical exception for temporary works.
Moreover, the First Circuit has held that VARA protects unfinished works. Mass.
Museum of Contemporary Art Found., Inc. v. Buchel, 593 F.3d 38, 65 (1st Cir. 2010). An
unfinished work is inherently in a temporary state since the ultimate goal is always to
finish the work; thus, VARA protects the interim, unfinished work even though it is
only temporarily in that form.
Analogy to traditional copyright law is also relevant. Under the Copyright Act —of
which VARA is a part—a work is “‘created’ when it is fixed in a copy or
phonorecord for the first time.” 17 U.S.C. § 101. And a work is “‘fixed’ in a tangible
medium of expression when its embodiment in a copy or phonorecord, by or under
the authority of the author, is sufficiently permanent or stable to permit it to be perceived . . .
for a period of more than transitory duration.” Id. (emphasis added). For copyright
protection, therefore, fixation for even a short period will suffice.
Thus, in Cartoon Network v. CSC Holdings, 536 F.3d 121 (2d Cir. 2008), the Second
Circuit held that copies of television programs were not capable of being perceived
“for a period of more than transitory duration” when they existed in the defendant’s
data buffers for only 1.2 seconds. However, the court suggested that a work would
exist for “more than transitory duration” if it was embodied in the data buffers for
“at least several minutes.” With no indication to the contrary, it is reasonable to
assume that Congress intended to apply the same minimal fixation requirement to
works of visual art under VARA. Cf. Buchel, 593 F.3d at 51 (applying § 101’s fixation
requirement to conclude that unfinished works are protected under VARA).
In sum, § 113(d) contemplates temporary works, § 106A(c) excludes only a narrow
category of temporary works unrelated to this case, and analogous case law is
consistent with the conclusion that temporary works are protected under VARA.14

487

Footnote 14: Common sense also supports this conclusion. Who would argue, for example, that if
Picasso had painted Guernica on the walls of 5Pointz with the building owner’s consent it would not
be worthy of VARA protection?

B. Works of Recognized Stature
As the Court stated in Cohen I, the district court’s decision in Carter v. Helmsley-Spear,
Inc., 861 F. Supp. 303 (S.D.N.Y. 1994) (“Carter I”), affirmed in part, vacated in part,
reversed in part, 71 F.3d 77 (2d Cir. 1995) (“Carter II”) remains the seminal case
interpreting the phrase “recognized stature”—which is not defined in VARA—to
require “a two-tiered showing: (1) that the visual art in question has ‘stature,’ i.e. is
viewed as meritorious, and (2) that this stature is ‘recognized’ by art experts, other
members of the artistic community, or by some cross-section of society.” 861 F.
Supp. at 325.
The Second Circuit on appeal never had occasion to address the correctness of this
formulation since, in reversing, it held that the work did not qualify for VARA
protection because it was made for hire. Carter II, 71 F.3d at 85-89. But one circuit
court did thereafter embrace and apply the district court’s standard for evaluating
whether a work of visual art is of “recognized stature.”
As explained in Cohen I, the Seventh Circuit in Martin v. City of Indianapolis, 192 F.3d
608, 612 (7th Cir. 1999), noted that the Carter I test “may be more rigorous than
Congress intended,” id. at 612, but nonetheless affirmed the district court’s grant of
summary judgment and its award of damages for a sculpture that had been destroyed,
under the Carter I test utilized by the district court. In doing so, it noted that
“plaintiff offered no evidence of experts or others by deposition, affidavit or
interrogatories,” but nonetheless established the work’s recognized stature via
“certain newspaper and magazine articles, and various letters, including a letter from
an art gallery director and a letter to the editor of The Indianapolis News, all in
support of the sculpture.” Id.
The circuit court’s decision in Martin appropriately recognizes, therefore, that expert
testimony is not the sine qua non for establishing that a work of visual art is of
recognized stature, and indeed the district court in Carter I cautioned that plaintiffs
need “not inevitably . . . call expert witnesses to testify before the trier of fact.” 861
F.Supp. at 325. This is in keeping with Congress’s expansive recognition of the moral
rights of attribution and integrity of the visual artist and the consequent need to
create “a climate of artistic worth and honor that encourages the author in the
arduous act of creation.” Carter II, 71 F.3d at 83 (quoting House Report at 5). As the
Second Circuit noted in Carter II, therefore, the courts “should use common sense
and generally accepted standards of the artistic community in determining whether a
particular work” is a work of visual art since “artists may work in a variety of media,
and use any number of materials in creating their works.” Id.
The same common sense should be utilized in assessing whether the visual work is
of recognized stature since “by setting the standard too high, courts risk the
destruction of the unrecognized masterwork; by setting it too low, courts risk
alienating those . . . whose legitimate property interests are curtailed.” Christopher J.
Robinson, The “Recognized Stature” Standard in the Visual Artists Rights Act, 68 Fordham
Law Review 1935, 1968 (2000). Thus, as one court has held, even inferred

488

recognition from a successful career can be considered in determining whether a
visual artist’s work has achieved recognized stature. See Lubner v. City of Los Angeles,
45 Cal. App. 4th 525, 531 (1996).
In the present case, the Court need not dwell on the nuances of the appropriate
evidentiary standard since the plaintiffs adduced such a plethora of exhibits and
credible testimony, including the testimony of a highly regarded expert, that even
under the most restrictive of evidentiary standards almost all of the plaintiffs’ works
easily qualify as works of recognized stature.
To begin, that Jonathan Cohen selected the handful of works from the thousands at
5Pointz for permanence and prominence on long-standing walls is powerful, and
arguably singular, testament to their recognized stature. They were walls that spanned
multiple stories, walls visible to millions on the passing trains; walls near the
entrances. Many of these works had survived for years. As 5Pointz’s curator, Cohen
considered them outstanding examples of the aerosol craft. And as Wolkoff himself
acknowledged, Cohen was qualified to assess the artistic merits of the works since
“he had good taste in the artists that came there.” They were 5Pointz’s jewels.
Wolkoff’s faith in Cohen was not unwarranted. The multitude of artists painting on
the walls marched to Cohen’s beat. He called the shots and had the respect of his
artistic community. That it was he who chose the works that are worthy of VARA
protection in this litigation speaks volumes to their recognized stature.
But there is so much more. All of the plaintiffs had also achieved artistic recognition
outside of 5Pointz. And in their Folios they collectively presented over a thousand
exhibits in support of their claims that their works at 5Pointz had achieved
recognized stature. The Folios covered the highlights of their careers, as well as
evidence of the placement of their works at 5Pointz in films, television, newspaper
articles, blogs, and online videos, in addition to social media buzz.
And plaintiffs’ highly qualified expert, Vara, provided detailed findings as to the skill
and craftsmanship of each of the 49 works, the importance of 5Pointz as a mecca for
aerosol art, the academic and professional interest of the art world in the works, and
her professional opinion that they were all of recognized stature. The Court finds
Vara highly credible and affords great weight to her testimony, although, as explained
infra, it finds that four of the 49 works do not qualify as having achieved recognized
stature.
Defendants’ expert Thompson’s testimony had two fatal flaws: First, she used an
unduly restrictive interpretation of recognized stature that was more akin to a
masterpiece standard. Second, she relied heavily on her inability to find the works on
social media or in academic databases; but, as effectively drawn out by plaintiffs’
counsel on cross-examination, her search methodology was unduly restrictive and
almost designed to avoid finding results. Tellingly, her searches did not even uncover
many of plaintiffs’ social media exhibits, demonstrating the weakness of her
approach. Her final conclusion that none of the works had achieved recognized
stature defies credibility. If not a single one of these works meet the recognized
stature standard, it is hard to imagine works that would, short of a Caravaggio or
Rembrandt.

489

1. Recognized Stature of Individual Artworks
The Court now turns to making the requisite individualized findings as to each of the
49 works:
a. The Long-Standing Works
The Court finds that 37 works on long-standing walls all achieved recognized stature
by virtue of their selection by Cohen for these highly coveted spaces, as reinforced
by the supportive evidence in the plaintiffs’ Folios and Vara’s compelling expert
testimony as to their artistic merit and embrace by the artistic community. They are:
•

Jonathan Cohen’s Eleanor RIP, 7-Angle Time Lapse, Patience, Character,
Clown with Bulbs, Meres Outdoor Wildstyle, and Inside Wildstyle

•

Sandra Fabara’s Green Mother Earth

•

Luis Lamboy’s Blue Jay Wall, Inside 4th Floor, World Traveler, Logo for
Clothing Brand aka Monopoly Man, and Electric Fish

•

Esteban Del Valle’s Beauty and the Beast

•

Christian Cortes’s Skulls Cluster, Jackson Avenue Skulls, Up High Blue
Skulls, and Up High Orange Skulls

•

Carlos Game’s Geisha, Marilyn, Red, Denim Girl, and Black and White
5Pointz Girl

•

James Rocco’s Bull Face, Lord Paz, and Face on Jackson

•

Steven Lew’s Crazy Monsters

•

Nicholai Khan’s Dos Equis Man

•

James Cochran’s Subway Rider

•

Luis Gomez’s Inside King Kong

•

Richard Miller’s Monster I

•

Jonathan Cohen and Maria Castillo’s Love Girl and Burner

•

Jonathan Cohen and Akiko Miyakami’s Underwater Fantasy

•

William Tramontozzi, Jr. and James Rocco’s Jimi Hendrix Tribute

•

Akiko Miyakami and Carlos Game’s Japanese Fantasy

•

Bienbenido Guerra and Carlo Nieva’s Return of New York

•

Jonathan Cohen, Luis Lamboy, and Thomas Lucero’s Angry Orchard

b. Other Works
Ten works on the walls were of recent origin; two were not on walls at all. For these
12 works, the … jury found recognized stature for Rodrigo Henter de Rezende’s
Fighting Tree, Thomas Lucero’s Black Creature, Akiko Miyakami’s Manga Koi,
Francisco Fernandez’s Dream of Oil, Nicholai Khan’s Orange Clockwork, Kenji
490

Takabayashi’s Starry Night, Richard Miller’s Monster II, and Jonathan Cohen and
Akiko Miyakami’s Save 5Pointz. These eight works garnered third party attention,
social media presence, and/or promises from Cohen that they would be longstanding.
The jury did not find recognized stature for Jonathan Cohen’s Drunken Bulbs,
Akiko Miyakami’s Japanese Irish Girl, Carlos Game’s Faces on Hut, and Jonathan
Cohen and Rodrigo Henter de Rezende’s Halloween Pumpkins.
Drunken Bulbs and Japanese Irish Girl were gifts to the Shannon Pot Bar. They
were not part of the curated 5Pointz collection. Furthermore, neither attracted
significant third-party attention or social media buzz during their short life spans.
Faces on Hut was not on a 5Pointz wall; it was on a tin shack near the loading dock.
As its creator, Carlos Game testified: “Nobody wanted to paint on it because it was a
tin shack, you know, and it was rusted out . . . .” Game also did not adduce any social
media coverage or commentary regarding the work.
Halloween Pumpkins was created in very late October —, less than a month before
the whitewash, and did not achieve any third party recognition. Moreover, because it
was Halloween-themed, it was unlikely to have survived the holiday season.
In sum, the Court finds 45 of the 49 works achieved recognized stature. Drunken
Bulbs, Japanese Irish Girl, Faces on Hut, and Halloween Pumpkins did not.
C. Mutilation and Prejudice to Honor or Reputation
As noted, even if a work is not of “recognized stature,” VARA also protects works
from “intentional distortion, mutilation, or other modification . . . [that] would be
prejudicial to [the artist’s] honor or reputation.” 17 U.S.C. § 106A(a)(3)(A). “In
determining whether ‘intentional distortion, mutilation, or modification’ of [a] Work
would be ‘prejudicial to [plaintiffs’] honor or reputation,’ [a court should] consider
whether such alteration would cause injury or damage to plaintiffs’ good name,
public esteem, or reputation in the artistic community.” Carter I, 861 F. Supp. at 323.
This concept is inherently murky. Carter I held that an artist’s honor or reputation
may be harmed if the artwork presented to viewers an artistic vision materially
different from that intended by the artist. In Massachusetts Museum of Contemporary Art
Foundation, Inc. v. Buchel, 593 F.3d 38 (1st Cir. 2010), the circuit court held that
changes made to an unfinished art installation by a museum against the artist’s
wishes were sufficient to raise a question of fact as to whether the artist’s honor or
reputation were injured. The court focused on evidence that newspapers covering
the exhibit after the changes had a negative opinion of the altered work.
Here, the question is academic in respect to the 45 works of recognized stature since
the Court is not awarding any actual damages, as explained infra, and only one
statutory damages award may be awarded per artwork “for all infringements involved
in the action.” 17 U.S.C. § 504(c)(1). Thus, whether defendants are additionally liable
under this second prong is not of any practical consequence.
Of the remaining four, Japanese Irish Girl was destroyed and therefore not
“distorted, mutilated, or otherwise modified.” Faces on Hut was not destroyed until

491

the demolition of the building and apparently survived the whitewash. Therefore, it
too was not “distorted, mutilated, or otherwise modified.”
Drunken Bulbs was only partially whitewashed; the outlines of the bulbs are dimly
visible underneath the white paint. However, these vague outlines are unrecognizable
as Cohen’s original work. Nobody looking at the work would know that it was his.
Therefore, the Court holds this distortion did not prejudice his honor or reputation.
Halloween Pumpkins was almost entirely covered in black paint, but Cohen’s “wild
style” contribution to the painting was apparently left untouched. However, Cohen
testified that he was able to recover this portion of the work, and once the piece was
removed, the final result was a black wall; the original artwork was not visible at all
under the black paint, except for one purple cloud at the top of the wall, a minor
detail in the painting. Therefore, the Court holds this distortion also did not
prejudice the artists’ honor or reputation.
Having determined that the defendants have violated plaintiffs’ rights by
intentionally destroying their works of “recognized stature,” the Court now turns to
damages.
V
A. Actual Damages
As for actual damages, the parties presented dueling experts as to the valuation of
the destroyed works. Plaintiffs’ expert, Elizabeth Littlejohn, testified that the works
were worth from $50,000 to $80,000 per artwork. She arrived at this number through
a complicated formula that began with the sale price of a Banksy piece and awarded
each artwork a percentage of that value based on the artist’s reputation, the merit of
the work, and other factors.
The Court finds this methodology flawed. First, it does not account for the removal
costs of the works, which plaintiffs’ own removal expert, Alden, testified could run
in the hundreds of thousands of dollars. Second, there is no evidence that these
artists have ever achieved a fraction of Banksy’s sales history; most testified that they
had never sold a work for more than a few thousand dollars. Third, Littlejohn’s
method did not account for the unique problems in selling artwork that is the size of
a wall of a building.
The Court finds defendants’ appraisal expert, Christopher Gaillard, credible. Gaillard
testified that because of the unique challenges and costs of selling those artworks at
5Pointz which were the size of a building wall, they did not have a provable market
value. The Court agrees and holds that plaintiffs failed to establish a reliable market
value for their works.
Therefore, the Court does not award actual damages.
B. Statutory Damages
The Copyright Act affords the trial court “wide discretion . . . in setting the amount
of statutory damages.” Fitzgerald Pub. Co., Inc. v. Baylor Pub. Co., Inc., 807 F.2d 1110,
1116 (2d Cir. 1986). … There need not be a correlation between statutory damages
and actual damages. Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 127 (2d Cir. —).
As such, statutory damages are particularly appropriate “when no actual damages are
492

proven or they are difficult to calculate.” Warner Bros. Inc. v. Dae Rim Trading, Inc., 877
F.2d 1120, 1126 (2d Cir. 1989). They are “not meant to be merely compensatory or
restitutionary. The statutory award is also meant ‘to discourage wrongful conduct.’”
Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 113 (2d Cir. 2001) (rejecting
defendant’s argument that statutory damages award should be overturned because it
“bears little relationship” to actual damages) (citation omitted).
As previously explained, the factfinder may award between $750 and $30,000 per
work, unless the infringement was committed willfully; if so, the award may be as
high as $150,000 per work.
1. Willfulness
“A copyright holder seeking to prove that a copier’s infringement was willful must
show that the infringer ‘had knowledge that its conduct represented infringement
or . . . recklessly disregarded the possibility.’” Bryant v. Media Right Prods., 603 F.3d
135, 143 (2d Cir. 2010) (quoting Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., 996
F.2d 1366, 1382 (2d Cir. 1993)). “This knowledge may be ‘actual or constructive.’”
N.A.S. Import, Corp. v. Chenson Enters., Inc., 968 F.2d 250, 252 (2d Cir. 1992). “In
other words, it need not be proven directly but may be inferred from the defendant’s
conduct.” Id.
The jury found that in each case Wolkoff acted willfully. The Court could not agree
more. Wolkoff knew from the moment the lawsuit was initiated that the artists were
pressing their VARA claims. He admitted as much at trial:
Q: And you were aware that the artists were trying to apply under the Visual Artists
Rights Act?
A: Yes.
...
THE COURT: You heard about VARA at that time?
A: Yes.
THE COURT: You have a generalized view—
A: At that time, yes.
...
Q: And you had hired Mr. Ebert’s law firm at the time; correct?
A: Yes.
Q: You had a general counsel—an in-house lawyer advising you on legal matters;
correct?
A: Yes.

As previously explained, under VARA, Wolkoff could have given the plaintiffs 90
days’ notice to allow them the opportunity to salvage their works. And indeed,
plaintiffs’ expert conservator, Alden, convincingly testified that curation techniques
had evolved to the point where removal of works of art from the wall of a building
was feasible and had been done. As an example, she referenced the Berlin Wall, from
which hundreds of works of graffiti on the wall have been preserved and sold,

493

auctioned, or given as gifts, including five works which were successfully transported
to New York City. Alden also testified that she had personally successfully removed
a mural from a building.
And in respect to the plaintiffs’ works at 5Pointz, Alden explained that many could
have been totally or partially removed by the artists, at little cost, because the works
were on “siding or plywood or sheetrock” or they “incorporated doors or windows
from the building [which] could have been easily removed,” Tr. at 1971:23-1972:4;
and many others could be removed by a conservator and contractors. See Exhibit
1270 (identifying 12 “Works for Which Artists’ Removal Was Possible”; 9 “Works
Which Artists Were Able to Partially Remove,” and 28 “Works Which Could Only
Have Been Removed by Conservator and Contractors”).
But Wolkoff could care less. As he callously testified:
I decided—I alone decided to hire people to whitewash it in one shot instead of
waiting for three months and them going to do something irrational again and getting
arrested. I will go and end it and whitewash it. I decided to do that. It was pretty
much a spur-of-the-moment thing.

(Emphasis added).
Wolkoff’s reference to the artists doing “something irrational again and getting
arrested” is fanciful and unfounded. Plainly, the evidence does not support the
notion that he cared much for what was best for the artists. After the whitewash, he
refused to let them onto his property to recover what had survived and even
attempted to have them arrested when they tried to do so.
And his claim that he was worried that the plaintiffs may do something reckless and
illegal is also belied by the evidence. The plaintiffs operated within the law in
attempting to protect their works: They sought legal advice, filed a claim with the
Landmark Preservation Commission, sought to generate public pressure to preserve
the site, raised money, and filed this lawsuit. Wolkoff’s only justification for his
concern that the plaintiffs may attempt to break the law to preserve their work is that
he heard nonspecific “rumblings.” Id. at 2042:5. But he could not identify any
particular source of the rumblings, nor had he ever personally had a problem with
the artists:
Q: So this information that you received that the artists could be emotional is from
someone you cannot identify; correct?
A: Yes.
Q: The artists were never violent; correct?
A: Correct.
Q: They always followed the law when then were on your property; correct?
A: Yes.
Q: You have never had any problems with the artists; right?
A: Absolutely correct.

As Cohen confirmed: “I followed the rules from day one. I went by my lawyer and
he did not.”
494

Wolkoff’s recalcitrant behavior was consistent with the manner by which he testified
in court. He was bent on doing it his way, and just as he ignored the artists’ rights he
also ignored the many efforts the Court painstakingly made to try to have him
responsively answer the questions posed to him.
From his testimony, the only logical inference that the Court could draw from
Wolkoff’s precipitous conduct as soon as the Court denied the artists’ preliminary
injunction application was that it was an act of pure pique and revenge for the nerve
of the plaintiffs to sue to attempt to prevent the destruction of their art. This was the
epitome of willfulness.
It remains for the Court to fix the amount of statutory damages.
2. The Statutory Factors
“When determining the amount of statutory damages to award for copyright
infringement, courts consider: (1) the infringer’s state of mind; (2) the expenses
saved, and profits earned, by the infringer; (3) the revenue lost by the copyright
holder; (4) the deterrent effect on the infringer and third parties; (5) the infringer’s
cooperation in providing evidence concerning the value of the infringing material;
and (6) the conduct and attitude of the parties.” Bryant, 603 F.3d at 144.
Wolkoff rings the bell on each relevant factor.
a. The Infringer’s State of Mind
Because Wolkoff acted willfully in destroying the works of art, this factor weighs in
favor of a high statutory damages award. As noted, Wolkoff’s two alleged
justifications for the whitewash—that it would be better for the plaintiffs to lose
their works quickly, and that he was concerned the plaintiffs might do something
reckless and illegal in an attempt to save the works—are implausible.
The whitewash did not end the conflict in one go; the effects lingered for almost a
year. The sloppy, half-hearted nature of the whitewashing left the works easily visible
under thin layers of cheap, white paint, reminding the plaintiffs on a daily basis what
had happened. The mutilated works were visible by millions of people on the passing
7 train. One plaintiff, Miyakami, said that upon seeing her characters mutilated in
that manner, it “felt like [she] was raped.” Tr. at 1306:24-25. It is simply untenable
that a rational person could view the whitewashing as being in the best interest of the
artists.
b. The Expenses Saved, and Profits Earned, by the Infringer
This factor is not a clean fit for VARA since, unlike a traditional copyright
infringement case, Wolkoff did not sell the plaintiffs’ art; hence, there were no direct
profits. However, he indirectly profited when the value of the site increased from
$40 million to $200 million as soon as the variance was obtained. Destroying 5Pointz
allowed Wolkoff to realize this gain. He also charged licensing fees to film at the site
that netted him hundreds of thousands of dollars. Because Wolkoff realized
significant profits by violating VARA, this factor cuts in favor of a high statutory
damages award.
c. Revenue Lost by the Copyright Holder

495

While the plaintiffs were never able to place a dollar figure on how the whitewash of
5Pointz impacted their careers, it often had a negative effect. As plaintiff
Takabayashi testified: “I would actually have clients . . . come by and observe the
work to get an idea of what they would be getting if I was going to execute a mural
on their property . . . . There were possibilities—there was business that I probably
lost because of the fact that the artwork was eliminated.” Tr. at 315:23-316:4. And
plaintiff Del Valle testified: “It definitely took away a lot of opportunities that I
would have had. I was consistently getting contacted about opportunities . . . all
coming from me building my career from [5Pointz].” Id. at 131:15-22.
Furthermore, as Cohen testified, the salvageable artwork at 5Pointz “could have
adorned a museum, a full wing of a museum. . . . I don’t think you guys really get a
full idea of the picture of this building and its property . . . . It was eight stories tall.
We could have filled a wing, if not more, of a museum.” Id. at 1466:18-23.
The value of 5Pointz to the artists’ careers was significant, and its loss, though
difficult to quantify, precluded future opportunities and acclaim. Therefore, this
factor also supports a significant statutory damages award.
d. The Deterrent Effect on the Infringer and Third Parties
This is perhaps the most important factor in this case. Without a significant statutory
damages award, the preservative goals of VARA cannot be met. If potential
infringers believe that they can violate VARA at will and escape liability because
plaintiffs are not able to provide a reliable financial valuation for their works, VARA
will have no teeth. It will simply be cost-effective for infringers to violate the statute.
This would not further its preservative goals.
Wolkoff has been singularly unrepentant. He was given multiple opportunities to
admit the whitewashing was a mistake, show remorse, or suggest he would do things
differently if he had another chance. He denied them all:
Q: Let me ask you a hypothetical question. Let’s go back in time.
A: Yes.
Q: Would you have done it again?
A: Yes.
A: But that was the decision I made. I would make the same decision today if that
happened today.

Thus, Wolkoff remains undeterred, and unrepentant that his thoughtless act violated
the law and had a devastating impact on people he claims he was trying to help. This
factor could not cut more strongly in favor of a high statutory damages award.
e. The Conduct and Attitude of the Parties
The Court has discussed at length the problematic conduct of Wolkoff during the
whitewashing and on the witness stand. Needless to say, he has not helped his case.
On the other hand, the plaintiffs have conducted themselves with dignity, maturity,
respect, and at all times within the law. Therefore, this factor also cuts heavily in
favor of a high statutory damages award.
3. The Statutory Damages Award
496

Collectively, all five relevant factors support the maximum award of statutory
damages. Therefore, the Court awards $150,000 for each of the 45 works, for a total
statutory damages award of $6,750,000.
If not for Wolkoff’s insolence, these damages would not have been assessed. If he
did not destroy 5Pointz until he received his permits and demolished it 10 months
later, the Court would not have found that he had acted willfully. Given the degree
of difficulty in proving actual damages, a modest amount of statutory damages would
probably have been more in order.
The shame of it all is that since 5Pointz was a prominent tourist attraction the public
would undoubtedly have thronged to say its goodbyes during those 10 months and
gaze at the formidable works of aerosol art for the last time. It would have been a
wonderful tribute for the artists that they richly deserved.
CONCLUSION
Judgment will be entered for each individual plaintiff in the following amounts:
Artist

Total Award

Jonathan Cohen

$1,325,000.00

Sandra Fabara

$150,000.00

Luis Lamboy

$800,000.00

Estaban Del Valle

$150,000.00

Rodrigo Henter de Rezende

$150,000.00

Thomas Lucero

$200,000.00

Akiko Miyakami

$375,000.00

Christian Cortes

$600,000.00

Carlos Game

$825,000.00

James Rocco

$525,000.00

Steven Lew

$150,000.00

Francisco Fernandez

$150,000.00

Nicholai Khan

$300,000.00

James Cochran

$150,000.00

Luis Gomez

$150,000.00

Richard Miller

$300,000.00

Kenji Takabayashi

$150,000.00

Maria Castillo

$75,000.00

William Tramontozzi

$75,000.00

Carlo Nieva

$75,000.00

Bienbenido Guerra

$75,000.00
497

Total

$6,750,000.00

SO ORDERED.
Notes and Questions
(1) Who “owned” the graffiti murals in this case? In what sense did they own them?
(2) One of many interesting issues in the 5Pointz case is what makes something a work of
recognized stature. The district court in Carter v. Helmsley-Spear, Inc. held that the art must
be(1) meritorious and (2) recognized by art experts and other members of the artistic
community as such. Other courts have accepted letters, articles, and awards as evidence of
recognized stature. See Martin v. City of Indianapolis 982 F. Supp. 625, 630–31 (S.D. Ind. 1997).
In the 5Pointz case, the district court agreed with the jury’s finding that 45 out of 49 graffiti
works were works of recognized stature based on the artistic recognition of the works
outside of the graffiti site, the art world’s academic and professional interest in the works,
and the skill and craftsmanship inherent in the works. The court noted that to be a work of
recognized stature, a work need not be a masterpiece. The 5Pointz court was careful to
consider the graffiti works at issue within the appropriate community and context for that
particular medium.
(3) VARA is addressed to works of recognized stature, not artists of recognized stature.
Thus a work that has never been publicly displayed will usually struggle to achieve that status,
regardless of the fame of the artist.

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14. FORMALITIES AND DURATION
International context—the Berne Convention prohibition on formalities
Berne Convention reflects the view that copyright protection should not depend on
formalities, such as notice and registration. However, what the Berne Convention actually
says about formalities is a little more complicated. Article 5(1) of the Berne Convention
espouses a principle of national treatment. It requires member countries to grant foreign
authors all the rights they grant to their own citizens with respect to works covered by the
Berne Convention, and, in addition, “the rights specially granted by this convention.”
A careful reading of this section reveals that while individual countries must accord foreign
nationals all of the rights covered by the Berne Convention, they are not—by virtue of this
provision at least—required to extend those rights to their own citizens.
You may wonder why any country would want to give foreigners more rights than domestic
authors. Read on.
Berne Convention (Paris 1971) Article 5
(1) Authors shall enjoy, in respect of works for which they are protected under this
Convention, in countries of the Union other than the country of origin, the rights
which their respective laws do now or may hereafter grant to their nationals, as well
as the rights specially granted by this Convention.
(2) The enjoyment and the exercise of these rights shall not be subject to any
formality; such enjoyment and such exercise shall be independent of the existence of
protection in the country of origin of the work. Consequently, apart from the
provisions of this Convention, the extent of protection, as well as the means of
redress afforded to the author to protect his rights, shall be governed exclusively by
the laws of the country where protection is claimed. (emphasis added)

Article 5(2) of the Berne Convention is often described as a ‘prohibition against formalities’,
but that is something of an oversimplification. Article 5(2) provides that “the enjoyment and
the exercise of these rights shall not be subject to any formality…” The expression “these
rights” refers back to the rights in the previous subsection—it thus refers to rights of foreign
authors, not domestic ones.
As a result, the Berne Convention does not in fact prohibit a member nation from subjecting
the exercise of copyright to formalities in the case of that country’s own authors. This leads
to the curious situation in the United States where Americans are required to register their
copyrights in order to bring a cause of action in federal court, but foreign nationals are not.
To see exactly where to draw the line between domestic and foreign works, work through
the definition of “United States work” in Section 101 of the Act.
17 U.S. Code § 101. Definitions
For purposes of section 411, a work is a “United States work” only if—
(1) in the case of a published work, the work is first published—
(A) in the United States;

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(B) simultaneously in the United States and another treaty party or parties, whose
law grants a term of copyright protection that is the same as or longer than the term
provided in the United States;
(C) simultaneously in the United States and a foreign nation that is not a treaty
party; or
(D) in a foreign nation that is not a treaty party, and all of the authors of the work
are nationals, domiciliaries, or habitual residents of, or in the case of an audiovisual
work legal entities with headquarters in, the United States;
(2) in the case of an unpublished work, all the authors of the work are nationals,
domiciliaries, or habitual residents of the United States, or, in the case of an
unpublished audiovisual work, all the authors are legal entities with headquarters in
the United States; or
(3) in the case of a pictorial, graphic, or sculptural work incorporated in a building
or structure, the building or structure is located in the United States.

The United States did not enter into the Berne Convention until 1989, in part because of its
opposition to the Conventions prohibition against formalities.124 The other stumbling block
for the United States was the requirement for the protection of moral rights. The English
Statute of Anne, which provided the model for the first United States copyright act, limited
its protection to works complying with various formalities, including registration and deposit.
Although the United Kingdom abandoned these formalities long ago, they continue to play
an important role in United States copyright law.

The significance of formalities in the United States
The distinction between published and unpublished works is vitally important in United
States copyright law. Until the 1976 Act came into effect, the duration of copyright
protection was determined with reference to the date of first publication. Moreover, again
until relatively recently, voluntary publication of a work without complying with the
formalities of notice, registration, and deposit would place the work in the public domain.

Notice
Copyright notice is the familiar © that you have no doubt seen thousands of times.
Technically, a copyright notice must contain the word copyright or some abbreviation
thereof, the name of the copyright owner and the date of first publication.
The failure to include copyright notice has no effect on works published after March 1, 1989,
however the inclusion of copyright notices is still commonplace and it has some significance
in relation to statutory damages for copyright infringement. Publication without proper
notice from January 1, 1978, to February 28, 1989 could have resulted in copyright
ineligibility, if corrective steps were not taken within a certain amount of time.

124 Until 1891, foreign works were categorically excluded from Copyright Act protection. Throughout most of

the 20th century, the only eligible foreign authors were those whose countries granted reciprocal rights to U.S.
authors and whose works were printed in the United States.

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In contrast, publication without the appropriate copyright notice prior to January 1, 1978—
the date at which the copyright act of 1976 became effective—makes a work in eligible for
copyright protection.
Works published between 1978 and 1989 were still subject to the notice requirement,
however the 1976 copyright act included provisions excusing the emission of notice where
only a few copies like notice or the mission was due to a publisher’s error. The 1976 act also
provided a mechanism to cure defective notice within five years of publication provided that
the copyright owner undertook reasonable efforts to add notice to all domestically
distributed copies after becoming aware of the omission.

Registration & deposit
United States law still provides that two copies of the best edition of a work must be
deposited in the copyright office within three months of first publication in the United
States. However, deposit is not a condition of copyright protection. Nonetheless, deposit is
required as part of the registration process.
The current Copyright Act does not require registration for a valid copyright to exist.
However, registration is a prerequisite for bringing an action for copyright infringement for
United States works. In compliance with the Berne Convention, the owners of foreign works
are entitled to bring a suit without registration. What exactly makes a work a foreign work
depends on the nationality and residence and the place of first publication of the work. See
the definition of “United States work” in Section 101 for details.
Copyright registration is strongly encouraged by the fact that a certificate of registration is
prima facie evidence of ownership and validity. More importantly, the powerful remedies of
statutory damages and attorney’s fees do not generally apply to infringements that took place
prior to registration, unless the author registered within three months up to first publication.
The prior statement is subject to an important qualification brought about by the Copyright
Alternative in Small-Claims Enforcement Act of 2020 (the CASE Act). The CASE Act
establishes a Copyright Claims Board within the Copyright Office that is intended to
function as a copyright small claims court. Of particular relevance here, infringement claims
that took place prior to registration may still be subject to statutory damage in this new
forum, but only up to a maximum of $7,500 per work and a maximum total award of
$15,000. These amounts are half of what is available for works that were registered at the
relevant time.
The Copyright Claims Board is not up and running yet, but is expected to begin operation by
December 2021 or early 2022.

What is publication?
With so much riding on the question of publication, it should not be surprising that the very
concept publication itself has become somewhat tortured under United States law.
Estate of Martin Luther King v. CBS, INC., 194 F. 3d 1211 (11th Cir. 1999)
Chief Judge Anderson
The Estate of Martin Luther King, Jr., Inc. brought this copyright infringement
action against CBS, Inc. after CBS produced a video documentary that used, without
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authorization, portions of civil rights leader Dr. Martin Luther King’s famous “I
Have a Dream” speech at the March on Washington on August 28, 1963. The
district court granted summary judgment to CBS on the ground that Dr. King had
engaged in a general publication of the speech, placing it into the public domain. We
now reverse.
I. FACTS
The facts underlying this case form part of our national heritage and are well-known
to many Americans. On the afternoon of August 28, 1963, the Southern Christian
Leadership Conference (“SCLC”) held the March on Washington (“March”) to
promote the growing civil rights movement. The events of the day were seen and
heard by some 200,000 people gathered at the March, and were broadcast live via
radio and television to a nationwide audience of millions of viewers. The highlight of
the March was a rousing speech that Dr. Martin Luther King, Jr., the SCLC’s
founder and president, gave in front of the Lincoln Memorial (“Speech”). The
Speech contained the famous utterance, “I have a dream . . .,” which became
symbolic of the civil rights movement. The SCLC had sought out wide press
coverage of the March and the Speech, and these efforts were successful; the Speech
was reported in daily newspapers across the country, was broadcast live on radio and
television, and was extensively covered on television and radio subsequent to the live
broadcast.
On September 30, 1963, approximately one month after the delivery of the Speech,
Dr. King took steps to secure federal copyright protection for the Speech under the
Copyright Act of 1909, and a certificate of registration of his claim to copyright was
issued by the Copyright Office on October 2, 1963. Almost immediately thereafter,
Dr. King filed suit in the Southern District of New York to enjoin the unauthorized
sale of recordings of the Speech and won a preliminary injunction on December 13,
1963. See King v. Mister Maestro, Inc., 224 F. Supp. 101 (S.D.N.Y. 1963).
For the next twenty years, Dr. King and the Estate enjoyed copyright protection in
the Speech and licensed it for a variety of uses, and renewed the copyright when
necessary. In 1994, CBS entered into a contract with the Arts & Entertainment
Network to produce a historical documentary series entitled “The 20th Century with
Mike Wallace.” One segment was devoted to “Martin Luther King, Jr. and The
March on Washington.” That episode contained material filmed by CBS during the
March and extensive footage of the Speech (amounting to about 60% of its total
content). CBS, however, did not seek the Estate’s permission to use the Speech in
this manner and refused to pay royalties to the Estate. The instant litigation ensued.
On summary judgment, the district court framed the issue as “whether the public
delivery of Dr. King’s speech constituted a general publication of the speech so as to
place it in the public domain.” After discussing the relevant case law, the district
court held that Dr. King’s “performance coupled with such wide and unlimited
reproduction and dissemination as occurred concomitant to Dr. King’s speech
during the March on Washington can be seen only as a general publication which
thrust the speech into the public domain.” Thus, the district court granted CBS’s
motion for summary judgment. The Estate now appeals to this Court.
II. DISCUSSION
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We review the district court’s grant of summary judgment de novo, with all facts and
reasonable inferences therefrom reviewed in the light most favorable to the
nonmoving party. Summary judgment was due to be granted only if the forecast of
evidence before the district court showed that there was no genuine issue as to any
material fact and that the moving party, i.e., CBS, was entitled to judgment as a
matter of law.
Because of the dates of the critical events, the determinative issues in this case are
properly analyzed under the Copyright Act of 1909 (“1909 Act”), rather than the
Copyright Act of 1976 (“1976 Act”) that is currently in effect. The question is
whether Dr. King’s attempt to obtain statutory copyright protection on September
30, 1963 was effective, or whether it was a nullity because the Speech had already
been forfeited to the public domain via a general publication.
Under the regime created by the 1909 Act, an author received state common law
protection automatically at the time of creation of a work. This state common law
protection persisted until the moment of a general publication. When a general
publication occurred, the author either forfeited his work to the public domain, or, if
he had therebefore complied with federal statutory requirements, converted his
common law copyright into a federal statutory copyright.
In order to soften the hardship of the rule that publication destroys common law
rights, courts developed a distinction between a “general publication” and a “limited
publication.” Only a general publication divested a common law copyright. A general
publication occurred when a work was made available to members of the public at
large without regard to their identity or what they intended to do with the work.
Conversely, a non-divesting limited publication was one that communicated the
contents of a work to a select group and for a limited purpose, and without the right
of diffusion, reproduction, distribution or sale. The issue before us is whether Dr.
King’s delivery of the Speech was a general publication.
Numerous cases stand for the proposition that the performance of a work is not a
general publication. See, e.g., Ferris v. Frohman, 223 U.S. 424, 433 (1912) (“The public
representation of a dramatic composition, not printed and published, does not
deprive the owner of his common-law right. The public performance of the play is
not an abandonment of it to the public use.
It appears from the case law that a general publication occurs only in two situations.
First, a general publication occurs if tangible copies of the work are distributed to the
general public in such a manner as allows the public to exercise dominion and
control over the work. Second, a general publication may occur if the work is
exhibited or displayed in such a manner as to permit unrestricted copying by the
general public. However, the case law indicates that restrictions on copying may be
implied, and that express limitations in that regard are deemed unnecessary.
The case law indicates that distribution to the news media, as opposed to the general
public, for the purpose of enabling the reporting of a contemporary newsworthy
event, is only a limited publication. This rule comports with common sense; it does
not force an author whose message happens to be newsworthy to choose between
obtaining news coverage for his work and preserving his common-law copyright.

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With the above principles in mind, in the summary judgment posture of this case and
on the current state of this record, we are unable to conclude that CBS has
demonstrated beyond any genuine issue of material fact that Dr. King, simply
through his oral delivery of the Speech, engaged in a general publication making the
Speech “available to members of the public at large without regard to their identity
or what they intended to do with the work.” Brown v. Tabb, 714 F.2d 1088, 1091
(11th Cir.1983). A performance, no matter how broad the audience, is not a
publication; to hold otherwise would be to upset a long line of precedent. This
conclusion is not altered by the fact that the Speech was broadcast live to a broad
radio and television audience and was the subject of extensive contemporaneous
news coverage. We follow the above cited case law [omitted from this extract]
indicating that release to the news media for contemporary coverage of a
newsworthy event is only a limited publication.
The district court held that “the circumstances in this case take the work in question
outside the parameters of the ‘performance is not a publication’ doctrine.” These
circumstances included “the overwhelmingly public nature of the speech and the
fervent intentions of the March organizers to draw press attention.” Certainly, the
Speech was one of a kind—a unique event in history. However, the features that
make the Speech unique—e.g., the huge audience and the Speech’s significance in
terms of newsworthiness and history—are features that, according to the case law,
are not significant in the general versus limited publication analysis. With respect to
the huge audience, the case law indicates that the general publication issue depends,
not on the number of people involved, but rather on the fact that the work is made
available to the public without regard to who they are or what they propose to do
with it. See Brown v. Tabb, 714 F.2d 1088, 1091-92 (11th Cir. 1983). For this
proposition, Brown cited Burke, 598 F.2d at 691 (“General publication depends on the
author making the work available to those interested, and not on the number of
people who actually express an interest.”). In the instant case, the district court
acknowledged that “the size of the audience before which a work is performed
cannot be the basis for a court’s finding that a general publication has occurred.”
With respect to the significance of the Speech in terms of newsworthiness and
history, the case law again suggests that this feature should not play a substantial role
in the analysis. As noted above, the D.C. Circuit in Rickover indicated that the wide
press distribution of the speeches at issue there would not alone have constituted a
general publication. Indeed, Mister Maestro so held with respect to the very Speech at
issue before us. Also supporting this proposition is the case law above cited to the
effect that size of the audience is not significant.
The district court cited Letter Edged in Black Press, Inc. v. Public Bldg. Comm’n of Chicago,
320 F.Supp. 1303 (N.D.Ill. 1970), CBS’s best case, in support of its reasoning, see 13
F.Supp.2d at 1353-54, and that case warrants some exploration. In Letter Edged in
Black, the question was whether the city had dedicated a Picasso sculpture (located in
front of the Chicago Civic Center) to the public domain by general publication. The
city had done the following: it carried out a massive campaign to publicize the
monumental sculpture; it placed a maquette (portable model of the sculpture) on
exhibition at a local museum; it gave photographs to the public upon request; it
arranged for pictures of the sculpture to appear in several magazines of large national

504

circulation; it sold a postcard featuring the sculpture; and it distributed numerous
publications and reports containing photographs of the sculpture. After stating the
controlling legal principles with regard to general and limited publication, the Letter
Edged in Black court stated its view that the cumulation of these various acts by the
city equated to general publication. The court then distinguished American Tobacco,
207 U.S. 284, the primary authority that the city cited to support its theory of mere
limited publication. In American Tobacco, the Supreme Court held that the display of a
painting in a gallery did not constitute general publication putting the painting into
the public domain. According to the Letter Edged in Black court, a cornerstone of
American Tobacco was the fact that copying of the painting was strictly forbidden and
the gallery strictly enforced the anti-copying rules. See Letter Edged in Black, 320
F.Supp. at 1310. The court held that the facts in Letter Edged in Black were
distinguishable:
In the case at bar there were no restrictions on copying and no guards preventing
copying. Rather every citizen was free to copy the maquette for his own pleasure
and camera permits were available to members of the public. At its first public
display the press was freely allowed to photograph the maquette and publish these
photographs in major newspapers and magazines. Further, officials at this first
public showing of the maquette made uncopyrighted pictures of the maquette
available on request. Were this activity strictly classified as limited publication, there
would no longer be any meaningful distinction between limited and general
publication.

Id. at 1311 (footnotes omitted).
The district court likened the instant case to Letter Edged in Black on the ground that
there was a lack of restriction on copying and free allowance of reproduction by the
press. However, we do not believe the analogy fits—at least not at this summary
judgment stage. Significantly, in Letter Edged in Black there were manifestations of the
city’s intent to distribute generally among the public at large that have no parallels in
the evidence we can consider in the instant summary judgment posture. The city
gave photographs of the sculpture to the public, not merely the press, upon request.
The city commercially sold a postcard featuring the sculpture. Copying was
apparently widespread at an exhibit of the sculpture, and the city took no action to
curtail copying and photographing by the public. See Letter Edged in Black, 320
F.Supp. at 1306-07, 1311. At trial, CBS may well produce evidence that brings the
instant case on all fours with Letter Edged in Black, but the present state of the record
does not support the analogy; to the contrary, the performance of the Speech in the
instant case is more like the exhibition of the painting in the gallery in American
Tobacco.
Because there exist genuine issues of material fact as to whether a general publication
occurred, we must reverse the district court’s grant of summary judgment for CBS. It
would be inappropriate for us to address CBS’s other arguments, e.g., fair use and
the First Amendment, because the district court did not address them, and because
the relevant facts may not yet be fully developed. Of course, we express no opinion
on the eventual merits of this litigation. The judgment of the district court is reversed
and remanded for further proceedings not inconsistent with this opinion.
REVERSED AND REMANDED.
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Senior District Judge Cook, concurring in part and dissenting in part:
I concur in the result that was reached by my distinguished colleague, Chief Judge
Anderson. Nevertheless, I write separately to express my own thoughts about this
very complicated area of the law. To summarize, I agree with the proposition that
this case is controlled by the 1909 Copyright Act, under which Dr. King did not lose
copyright protection over his “I Have A Dream Speech” by placing it into the public
domain based on the factors considered below. However, my reading of the law
leads me to believe that a distinction between works that are performed and those
that are not is crucial to a proper resolution of this dispute. I will attempt to explain
my rationale, as well as the ramifications that flow from it.
The district court held that a general publication had occurred on the basis of the
combined presence of three factors; namely, (1) the performance of the speech by
Dr. King during the March on Washington, (2) its contemporaneous wide
dissemination by the press, through the broadcasting and print media, which resulted
from the concerted efforts of the March organizers to gain media attention, and (3)
the lack of restrictions, explicit, implicit, or in practice, on the copying or
reproduction of the speech by the press or public. While agreeing with Chief Judge
Anderson that the speech was not placed into the public domain on the basis of
these factors, I do not reach this conclusion because of the limited publication rule.
Rather, I rely upon the more fundamental principle that, in the context of performed
works, none of these factors may be properly considered as having contributed to a
general or limited publication in the absence of an authorized dissemination of a
tangible copy of the work without copyright notice.
A.
In my opinion, the trial court erred by holding that Dr. King’s performance of the
speech was a factor which contributed to a general publication. The long-standing,
well-understood, and accepted rule in copyright law is that performance does not
constitute publication. See Ferris v. Frohman, 223 U.S. 424, 434-36 (1912). This was
the rule under state common law.
The public representation of a dramatic composition, not printed and published,
does not deprive the owner of his common-law right, save by operation of statute.
At common law, the public performance of the play is not an abandonment of it to
the public use.

Ferris, 223 U.S. at 435. This principle was also applied to the 1909 Act by the courts,
and was eventually codified in the 1976 Act.
Inasmuch as the 1976 Act simply adopts the performance rule that existed under
state common law and the 1909 Act, any reference to its provisions conclusively
establishes that Dr. King’s oration of his “I Have A Dream” speech should not be
construed as contributing to a divestive publication.
“Publication” is the distribution of copies or phonorecords of a work to the public
by sale or other transfer of ownership, or by rental, lease, or lending. The offering to
distribute copies or phonorecords to a group of persons for purposes of further

506

distribution, public performance, or public display, constitutes publication. A public
performance . . . of a work does not of itself constitute publication.

17 U.S.C. § 101 (emphasis added). Further,
[t]o perform . . . a work “publicly” means—
(1) to perform . . . it at a place open to the public or at any place where a substantial
number of persons outside of a normal circle of a family and its social acquaintances
is gathered; or
(2) to transmit or otherwise communicate a performance . . . of the work to a place
specified by clause (1) or to the public, by means of any device or process, whether
the members of the public capable of receiving the performance or display receive it
in the same place or in separate places and at the same time or at different times.

Id. Dr. King’s performance of the speech in the presence of over 200,000 individuals
who had assembled for a demonstration at the Lincoln Memorial falls squarely
within subclause (1) above, while the transmission of his speech by radio and
television meets the criteria in subclause (2).
Moreover, consistent with the rationale behind the rule that performance is not a
publication, I would hold that, for those controversies that are governed by the 1909
Act, neither a general nor a limited publication can ever occur merely from
performance in the absence of an authorized distribution of a tangible copy of the
work without a copyright notice or reservation of rights. Under the 1909 Act, a
statutory copyright over a performed work could be obtained by two methods, each
of which required the existence of a tangible copy. Section 9 of the 1909 Act
provided that a copyright claim could be secured by affixing a notice to the tangible
copies that were published or offered for sale. On the other hand, if a performed
work, such as a speech or musical or dramatic composition, had not been
“reproduced in copies for sale,” § 11 of the 1909 Act permitted an author to gain
statutory copyright protection only by depositing a tangible copy with the Copyright
Office. Due to their peculiar nature, there were too many cases in which the
requirement under the 1909 Act (to wit, that a tangible copy must exist before
statutory copyright protection could be obtained) was unrealistically onerous for
performed works because of the common necessity to make last minute revisions to
plays, or, as this case exemplifies, speeches. The 1909 Act appears to have
recognized this problem, as § 2 (emphasis added) specified that “Nothing in this title
shall be construed to annul or limit the right of the author or proprietor of an
unpublished work, at common law or equity, to prevent the copying, publication, or
use of such unpublished work without his consent, and to obtain damages therefor.”
Thus, § 2 recognized an absolute need for the strict adherence to a rule that, in the
absence of a published tangible copy, a performance alone would never constitute a
publication. Otherwise, an author could lose all copyright protection because of his
inability to comply with the tangible copy requirement prior to the performance that
was necessary to transform his common law copyright into a statutory copyright
under § 11 of the 1909 Act.
Therefore, it is my view that the trial court erred by failing to recognize the special
nature of performed works such as speeches which was recognized by the principle
under the common law and the 1909 Act that performance does not constitute

507

publication in the absence of an authorized distribution of tangible copies without a
copyright notice or a reservation of rights. Consequently, I would reverse because
the trial court relied upon Dr. King’s performance of the speech to conclude that a
general publication had occurred.
B.
The trial court ruled that the widespread dissemination of the speech, which was due
in large measure to the efforts of the March organizers, supported the conclusion
that it had been placed into the public domain. In my opinion, this reasoning is
incorrect because the size of the audience before whom a work is performed is
irrelevant to the issue of publication.
A conclusively established corollary to the rule, which prescribes that performance
does not constitute a general publication, is the principle that the size of an audience
before whom an unpublished work is performed is irrelevant to the issue of
publication. … The trial court appears to have relied upon the language in Burke,
which held that “[a] general publication is such dissemination of the work itself
among the public as justifies the belief that it has been dedicated to the public and
rendered common property.” Burke, 598 F.2d at 691.
Although the reasoning of the trial court may have been justified on the basis of
works that are manifested through a physical object, such as books or pieces of art, it
is inapplicable to performed works because of the axiom that performance is not a
publication, regardless of the size of the audience. This axiom negates any inference
that the amount of the dissemination is sufficient to justify a belief that a performed
work was dedicated to the public and thus entered into the public domain inasmuch
as an inherent tension exists between the two doctrines. If the size of an audience
has no effect on the rule that performance is not a publication, then no degree of
dissemination due to performance could result in a dedication to the public.
Importantly, the distinction that I seek to draw is consistent with the Ferris holding
that performance does not amount to an abandonment of title or to a dedication of
the work to the public at large. Ferris, 223 U.S. at 435-36.
The logical result of the rule that performance cannot constitute a publication
regardless of audience size is that an affirmative effort to obtain press coverage does
not constitute an exception because media coverage does nothing more than increase
the size of the audience, which is irrelevant to the issue of publication. Thus, I am of
the opinion that the trial court erroneously found that a general publication existed
in part because of the widespread dissemination of the speech that had been
implemented by the concerted efforts of the March organizers to maximize press
coverage.
C.
The trial court also determined that a failure to control copying or reproductions of
the speech supported a finding of a general publication. This principle appears to
originate from American Tobacco Co. v. Werckmeister, 207 U.S. 284, 300 (1907), which
stated in dicta that “we do not mean to say that the public exhibition of a painting or
statue, where all might see and freely copy it, might not amount to publication within
the statute, regardless of the artist’s purpose or notice of reservation of rights which

508

he takes no measure to protect.” In addition, the decision by the trial court
evidenced its reliance upon the principle from American Tobacco, 207 U.S. at 299, in
which the Supreme Court indicated that the test for a general publication is whether
an exhibition of the work to the public evinces a dedication without a reservation of
rights rather than merely the right to view and inspect.
I believe that the court below erred when it failed to recognize that these maxims
have no application in the context of performed works, as made clear by Ferris,
which was decided over four years after American Tobacco. In Ferris, the Supreme
Court, immediately after enunciating the rule that performance alone cannot
constitute publication, quoted favorably from a treatise by Justice Story.
Story states the rule as follows: “So, where a dramatic performance has been allowed
by the author to be acted at a theater, no person has a right to pirate such
performance, and to publish copies of it surreptitiously; or to act it at another
theater without the consent of the author or proprietor; for his permission to act it
at a public theater does not amount to an abandonment of his title to it, or to a
dedication of it to the public at large.” It has been said that the owner of a play
cannot complain if the piece is reproduced from memory. But the distinction is
without sound basis and has been repudiated.

Ferris, 223 U.S. at 435-36. The opportunity to copy or reproduce a performed work,
or the fact of performance in and of itself, has no relevance to the issue of whether it
has been placed into the public domain because the performance “does not amount
to an abandonment of the author’s title to it, or to a dedication of it to the public at
large.” Id. See also Nutt v. National Inst. Inc. for the Improvement of Memory, 31 F.2d 236,
238 (2d Cir.1929) (“Even where the hearers are allowed to make copies of what was
said for their personal use, they cannot later publish for profit that which they had
not obtained the right to sell.”). Moreover, given that Dr. King’s speech enjoyed the
automatic protection of common law copyright, it is significant that CBS did not
point to any authority in which forfeiture was found on the basis of the copying
activities or the reproduction of copyrighted work by a third party.
The trial court also cited Letter Edged in Black Press, Inc. v. Public Bldg. Comm’n of Chicago,
320 F.Supp. 1303 (N.D.Ill.1970), where a general publication of a sculpture had been
found to exist based upon the lack of restriction on the copying and successful
efforts to court press coverage, with no restrictions on press reproductions.
However, I believe that Letter Edged in Black Press is not applicable to this controversy
for several reasons.
First, that court had placed importance on the supplying of uncopyrighted tangible
copies, in the form of photographs of the work, which were made available upon
request. By contrast, no similar situation is presented in the decision below because
the trial court expressly disavowed any reliance on the only two tangible copies in
evidence.
Second, and more fundamentally, Letter Edged in Black Press is distinguishable, in that
the copyrightable work at issue was physical and thus the application of the American
Tobacco principles was justified. In contrast, the situation presented here involves a
copyrightable work that is manifested by performance. The American Tobacco
principles of unfettered copying and reproduction, or an exhibition which
demonstrates a dedication without reservation of rights, are inapposite to performed
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works in the absence of an authorized distribution of tangible copies. Otherwise, it
would be very difficult, if even possible, to explain the results in Silverman v. CBS, Inc.,
632 F.Supp. 1344, 1347, 1350 (S.D.N.Y.1986), aff’d in part, vacated in part on other
grounds by 870 F.2d 40 (2d Cir.1989) and CBS, Inc. v. Documentaries Unlimited, Inc., 42
Misc.2d 723, 248 N.Y.S.2d 809, 811 (Sup.Ct.1964), where Appellee was held by the
trial court to have a valid copyright over radio broadcasts whose performances were
ostensibly disseminated to thousands, or perhaps even millions, of people.
D.
For the reasons that have been explained above, I would hold that no publication,
general or limited, occurred because Dr. King’s delivery of his “I Have A Dream”
speech was a mere performance of that work, and performance simply cannot
constitute a publication regardless of (1) the size of the audience involved, or (2)
efforts to obtain widespread contemporary news coverage under circumstances that
may have allowed the copying of the work. It is my belief that this analysis (1) differs
significantly from one which is premised on a limited publication theory, and (2) also
avoids the legal fiction of declaring that Dr. King’s “I Have A Dream” speech, as a
limited publication, was communicated to a select group for a narrow purpose, a
holding that has been generally criticized by commentators.
[Senior Circuit Judge Roney, dissented]
Notes and questions
(1) The copyright law concept of publication is obviously strained and artificial. As Estate of
Martin Luther King Jr. v. CBS illustrates courts developed a distinction between “limited
publication” and “general publication.” to mitigate the extreme consequences of publication
without copyright notice. Under the 1909 Act, only a “general publication” made without
complying with copyright formalities would divest a work of its potential for federal
copyright and simultaneously end its common law copyright (the right of first publication).
(2) In 1963, Dr. King gave his famous “I Have a Dream” speech to an audience of 200,000
people outside the Lincoln Memorial in Washington, D.C. The speech was broadcast live via
radio and television to a nationwide audience of millions of viewers. Hundreds of copies of
the speech were also distributed to the media. About a month later, Dr. King took steps to
secure federal copyright protection for the speech. As the Estate of Martin Luther King Jr. v.
CBS illustrates, courts have fairly consistently held that distribution of a limited number of
copies of the work to a limited group of people for a limited purpose amounts to a limited
publication. Moreover, a public performance or public display of a work did not constitute a
publication either as long as there was an express or implied condition that the public could
not copy the work.
(3) In his concurring opinion, Senior District Judge Cook argued that rather than focusing
on the difference between general and limited publication, the court should have decided the
case according to the simple principle that performance alone cannot constitute a
publication under any circumstances.
(4) Common law copyright and copyright in unpublished works:
Historically, the common law recognized the right of an author to control the first
publication of an unpublished work. This doctrine grew out of early English cases involving
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unpublished letters and manuscripts, which held that the author of the letters rather than
their possessor had the right to authorize or prohibit their publication.125 The common law
did not, however, recognize any right to control subsequent publication of a work after a
first authorized publication had taken place. As the U.S. Supreme Court summarized in
Wheaton v Peters 33 U.S. 591 (1834)—after reviewing the important English cases, such as
Millar v Taylor, 98 Eng Rep 201, 257 [KB 1769] and Donaldson v Beckett 4 Burr 2408 [HL
1774]—
That an author, at common law, has a property in his manuscript, and may obtain
redress against any one who deprives him of it, or by improperly obtaining a copy
endeavours to realise a profit by its publication, cannot be doubted; but this is a very
different right from that which asserts a perpetual and exclusive property in the
future publication of the work, after the author shall have published it to the world.
The argument that a literary man is as much entitled to the product of his labour as
any other member of society, cannot be controverted. And the answer is, that he
realises this product by the transfer of his manuscripts, or in the sale of his works,
when first published.

(5) Until the Copyright Act of 1976, unpublished works enjoyed a common law right of first
publication that is sometimes referred to as “common law copyright”. So long as a work
remained unpublished it was eligible for statutory copyright protection from the moment of
general publication in compliance with copyright formalities.
It is often said that publication without compliance with formalities would “divest” common
law copyright. But this is only true in the sense there can be only one “first” publication. In
truth, publication without notice was not literally divesting, it is more accurate to say that it
was exhausting of one’s common law rights and represented the failure to take advantage of
a contingent statutory requirement. This right of first publication did not amount to the
broad concept of literary property advocated by Blackstone, and the right of first publication
should not be treated as the exclusive right to reproduce, distribute, publicly perform and
display the work that applies to statutory copyright.
The expression “common law copyright” is apt to cause confusion between the common
law right of first publication and broader concepts of a supposed common law right in
literary property that (a) was arguably never part of English law, the arguments of Blackstone
notwithstanding and (b) never became part of American common law. The term “common
law copyright” should be avoided, where possible.
(6) In Flo & Eddie, Inc. v. SIRIUS, 28 NY 3d 583 (NY Court of Appeals 2016), the New
York Court of Appeals held that the common law of New York does not recognize a right
of public performance for the creators of sound recordings fixed prior to February 15, 1972.
(7) The Copyright Act of 1976 vests copyright protection in a work from the moment it is
fixed in a tangible medium of expression, thus rendering the common law right of first
publication redundant. Accordingly, the 1976 Act expressly preempts common law copyright.
125 Pope v. Curl, 2 Atk. (3d ed.) 342, 26 Eng. Rep. 608 (Ch. 1741) is extracted in an earlier chapter of these

materials. See also, Duke of Queensbury v. Shebbeare, 2 Eden (2d ed.) 329, 28 Eng. Rep. 924 (Ch. 1758)
(unpublished manuscript of the Earl of Clarendon’s history of the reign of Charles II). See generally Howard B.
Abrams, The Historic Foundation of American Copyright Law: Exploding the Myth of Common Law Copyright, 29 WAYNE
L. REV. 1119 (1983).

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Note that special rules apply for determining the duration of copyright for works created
before 1978 but unpublished and unregistered as of January 1, 1978.

The effect of publication of derivative works
In Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 593 (2d Cir. 1999) the Second
Circuit held that the publication of a Motion Picture based on a screenplay had the effect of
publishing the screenplay “to the extent that the screenplay was thereby disclosed.” For
another complicated case on this issue, see TCA TV Corp. v. McCollum, 839 F.3d 168 (2d Cir.
2016) investigating, in part, whether the Abbott and Costello comedy routine “Who’s on
first” was merged into the film One Night in the Tropics and how this effected its copyright and
ownership.

Copyright duration
An abridged timeline of copyright duration follows:
1710: Statute of Anne establishes statutory copyright for the first time. 14 year term,
renewable for an additional 14 years.
1774: Donaldson vs. Beckett holds that there is no common law copyright that survives
first publication.
1790: United States Copyright Act follows the Statute of Anne and adopts 14 years,
renewable for 14.
1793: France—The revolutionary government establishes a copyright term of life
plus 10 posthumous years if the author has heirs.
1810: France—Napoleon establishes copyright for the life of the author and of the
surviving spouse (if there is one), plus 20 years if there are children.
1826: France—The Bourbon restoration proposes life plus 50 years
1831: The United States extends copyright to 28 years from publication, still
renewable for only 14 years.
1836: France—The July Monarchy proposes life plus 50 years.
1837: Prussia adopts copyright term of author’s life plus 30 posthumous years.
1845: The German Federation adopts term of author’s life plus 30 posthumous
years.
1854: France adopts life plus 30 years.
1856: Germany adds ten years for certain classic authors.
1866: France adopts life plus 50 years
1879: Spain adopts life plus 80 years
1891: The United States recognizes international copyright.
1909: United States extends copyright to 28 years from publication, renewable for
an additional 28 years.
1928: Berne Convention supports life plus 50 years, but leaves terms up to
individual countries.

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1934: Germany’s Nazi government adopts life plus 50 years.
1948: Life plus 50 years is made obligatory for Berne Convention members
1957: France passes a copyright act that keeps “material” rights at life plus 50 years,
but makes “immaterial” rights (including “moral” ones) perpetual/eternal.
1965: West Germany adopts life plus 70 years
1976: United States adopts life of the author plus 50 years
1985: France extends copyright to life plus 70 years.
1987: Spain reduces copyright to life plus 60 years (it had been 80)
1988: The United States joins the Berne Convention (effective March 1989)
1993: The European Union standardizes copyright at life plus 70 years.
1998: The United States extends copyright to life plus 70 years and adds 20 years to
all existing terms.

International norms and agreements concerning copyright duration
The Berne Formula: life of the author plus 50 years
Article 7 of the Berne Convention provides for a general minimum term of copyright
protection of the life of the author plus 50 years. The Berne Convention authorizes
countries to apply fixed terms of at least 50 years for cinematographic works, anonymous or
pseudonymous works. Presumably, because of the difficulties in determining the exact
identity of the author to use as a measuring life. The Berne Convention also allows that
photographic works and works of applied art protected as artistic works can be protected for
a term as little as 25 years.
Berne Convention (Paris 1971) Article 7.
(1) The term of protection granted by this Convention shall be the life of the author
and fifty years after his death.
(2) However, in the case of cinematographic works, the countries of the Union may
provide that the term of protection shall expire fifty years after the work has been
made available to the public with the consent of the author, or, failing such an event
within fifty years from the making of such a work, fifty years after the making.
(3) In the case of anonymous or pseudonymous works, the term of protection
granted by this Convention shall expire fifty years after the work has been lawfully
made available to the public. However, when the pseudonym adopted by the author
leaves no doubt as to his identity, the term of protection shall be that provided in
paragraph (1). If the author of an anonymous or pseudonymous work discloses his
identity during the above-mentioned period, the term of protection applicable shall
be that provided in paragraph (1). The countries of the Union shall not be required
to protect anonymous or pseudonymous works in respect of which it is reasonable
to presume that their author has been dead for fifty years.
(4) It shall be a matter for legislation in the countries of the Union to determine the
term of protection of photographic works and that of works of applied art in so far
as they are protected as artistic works; however, this term shall last at least until the
end of a period of twenty-five years from the making of such a work.

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(6) The countries of the Union may grant a term of protection in excess of those
provided by the preceding paragraphs.

Beyond Berne
The Berne Convention is a floor, not a ceiling: Article 7(6) expressly authorizes countries of
the Union to grant terms of protection in excess of the Berne Convention minimum
requirements. The United States and the European Union have done so by extending the
basic copyright term to the life of the author plus 70 years. Australia also agreed to extend its
copyright term as part of the Australian-US free trade agreement. In Mexico, copyright lasts
for the life of the author plus 100 years.
Note also that TRIPs Article 14(5) provides for a minimum term of 50 years for the rights of
performers and produces and a minimum term of 20 years for the rights of broadcasters.
The WIPO Performances and Phonograms Treaty Article 17 recognizes a minimum term of
50 years for performances.

Copyright duration in the United States
Overview
Like the English Statute of Anne in 1710, the first United States Copyright Act, enacted in
1790, provided a 14-year term of protection from the date of registration, renewable for an
additional 14 years upon application. In 1831 the initial term of protection was extended to
28 years, and in 1909 the renewal period was also extended to 28 years. Thus the potential
term of copyright protection for works under the 1909 Act was 56 years from the date of
publication.
In practice, however, very few copyright owners applied for the second term of protection.
Sometimes this failure was inadvertent, primarily it was because 28 years after publication the
vast majority of works had no obvious economic value.
The Copyright Act of 1976 changed the basic term from 28 plus 28 from the date of
registration to the life of the author plus 50 years in preemptive compliance with the Berne
Convention. In 1998 Congress passed the Copyright Term Extension Act adding an
additional 20 years of protection. Under the current law, copyright lasts for the life of the
author plus 70 years, or 95 years from the date of creation in the case of a work made for
hire or a work made anonymously or under a pseudonym (unless the identity of the
pseudonymous author is actually known).
17 U.S. Code § 302. Duration of copyright: Works created on or after January
1, 1978
(a) In General.—Copyright in a work created on or after January 1, 1978, subsists
from its creation and, except as provided by the following subsections, endures for a
term consisting of the life of the author and 70 years after the author’s death.
(b) Joint Works.—In the case of a joint work prepared by two or more authors who
did not work for hire, the copyright endures for a term consisting of the life of the
last surviving author and 70 years after such last surviving author’s death.
(c) Anonymous Works, and Works Made for Hire.—In the case of an anonymous
work, a pseudonymous work, or a work made for hire, the copyright endures for a

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term of 95 years from the year of its first publication, or a term of 120 years from
the year of its creation, whichever expires first. …

Complexity
Determining whether a work still is subject to copyright protection can actually be much
more complicated than the preceding summary indicates. The 1976 Act gave works that had
already been published before its effective date, but were still in force, an additional 19 years
of protection, for a total of 75 years. Works published prior to January 1, 1978 and still in
their first period of copyright protection still had to be renewed—however this requirement
was abolished in 1992—which means that works published or registered between 1964 and
1977 are automatically treated as having been renewed.
Figure 33 Arthur Conan Doyle, The Problem of Thor Bridge (1922), Illustration by Alfred Gilbert, in
The Strand Magazine

Arthur Conan Doyle’s “The Problem of Thor Bridge”, published in February and March
1922, had an initial term of protection lasting until 1950. Thor Bridge was renewed, and was
due to expire in 1978, however, under the 1976 Act the renewal term was extended by 19
years. So the renewal term expired in 1997.

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Figure 34 Arthur Conan Doyle, The Adventure of the Creeping Man (1923), Illustration by Howard K.
Elcock

However, “The Adventure of the Creeping Man”, published in 1923, was due to expire in
1998 and was thus ineligible to benefit from the 20 year extension in the Copyright Term
Extension Act of that year. Copyright in the Creeping Man expired at midnight on December
31, 2018.
For guidelines for calculating copyright term, see the Cornell University Library’s Copyright
Information Center, Copyright Term and the Public Domain in the United States at
https://copyright.cornell.edu/publicdomain.126

Copyright Duration for unpublished works
17 U.S. Code § 303. Duration of copyright: Works created but not published
or copyrighted before January 1, 1978
(a) Copyright in a work created before January 1, 1978, but not theretofore in the
public domain or copyrighted, subsists from January 1, 1978, and endures for the
term provided by section 302. In no case, however, shall the term of copyright in
such a work expire before December 31, 2002; and, if the work is published on or
before December 31, 2002, the term of copyright shall not expire before December
31, 2047.
(b) The distribution before January 1, 1978, of a phonorecord shall not for any
purpose constitute a publication of any musical work, dramatic work, or literary
work embodied therein.

The copyright term for a work that has never been published and was never registered for
federal copyright expires 70 years after the death of the author. So, the unpublished works of
authors who died before 1951 were in the public domain as of 2021. What if we don’t know
when the author died because we don’t know who the author was? Unpublished anonymous
and pseudonymous works are given 120 years of copyright protection under the Act,
126 Chart based on Peter B. Hirtle, “Recent Changes To The Copyright Law: Copyright Term Extension,”

Archival Outlook, January/February 1999 and updated on a regular basis, at least as of 2019.

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measured from the date of creation. So, unpublished anonymous and pseudonymous works
created before 1901 became part of the public domain in 2021. This is also true of
unpublished works made for hire. What if we know who the author was, but we don’t know
when the author died? In that case, the Copyright Act also provides that the work gets 120
years of copyright protection.127

Special rules apply to sound recordings
Although sound recordings have existed since the 19th century, they were only made the
subject of federal copyright in the United States in 1972. The 1972 law was forward looking
and did not grant retrospective protection to recordings prior to February 15, 1972. Many
sound recordings were protected by state laws prior to 1972, and some even argue (probably
incorrectly in this author’s view) that state common law provided copyright-like protection
to sound recordings.
This changed in 2018 when Congress passed the Music Modernization Act (or MMA). The
Music Modernization Act bundled together three different proposals: the Musical Works
Modernization Act (now Title I), the Classics Protection and Access Act (now Title II), and
the Allocation for Music Producers Act (now Title III). Other features of the Music
Modernization Act are discussed elsewhere in these materials.
The important thing to note for present purposes is that Title II of the MMA (originally
called the Classics Act) provides a new federal right for sound recordings fixed before
February 15, 1972. The Act includes a rolling timeline for these pre-72 sound recordings to
enter the public domain, with sound recordings receiving protection for a period of at least
95 years after publication.
17 U.S. Code § 1401. Unauthorized use of pre-1972 sound recordings
(a) In General.—
(1) Unauthorized acts.—
Anyone who, on or before the last day of the applicable transition period under
paragraph (2), and without the consent of the rights owner, engages in covered
activity with respect to a sound recording fixed before February 15, 1972, shall be
subject to the remedies provided in sections 502 through 505 and 1203 to the same
extent as an infringer of copyright or a person that engages in unauthorized activity
under chapter 12.
(2) Term of prohibition.—
(A) In general.—The prohibition under paragraph (1)—
(i) subject to clause (ii), shall apply to a sound recording described in that
paragraph—
(I) through December 31 of the year that is 95 years after the year of first
publication; and
(II) for a further transition period as prescribed under subparagraph (B) of
this paragraph; and
127 Note that a certification from the Copyright Office that it has no record to indicate whether the person is

living or died less than 70 years before is a complete defense to any action for infringement. See 17 U.S.C. §
302(e).

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(ii) shall not apply to any sound recording after February 15, 2067.
(B) Transition periods.—
(i) Pre-1923 recordings.—
In the case of a sound recording first published before January 1, 1923, the
transition period described in subparagraph (A)(i)(II) shall end on December 31 of
the year that is 3 years after the date of enactment of this section.
(ii) 1923–1946 recordings.—
In the case of a sound recording first published during the period beginning on
January 1, 1923, and ending on December 31, 1946, the transition period described
in subparagraph (A)(i)(II) shall end on the date that is 5 years after the last day of
the period described in subparagraph (A)(i)(I).
(iii) 1947–1956 recordings.—
In the case of a sound recording first published during the period beginning on
January 1, 1947, and ending on December 31, 1956, the transition period described
in subparagraph (A)(i)(II) shall end on the date that is 15 years after the last day of
the period described in subparagraph (A)(i)(I).
(iv) Post-1956 recordings.—
In the case of a sound recording fixed before February 15, 1972, that is not
described in clause (i), (ii), or (iii), the transition period described in subparagraph
(A)(i)(II) shall end on February 15, 2067.

The new Section 1401 also preempts certain claims that might have been made under state
common law or state statutes. See Section 1401(e). Like the rights in Section 106 of the Act,
the new Section 1401 rights are limited by sections 107, 108, 109, 110, and 112(f) of the Act
and subject to the Internet safe harbors in section 512. See Section 1401(f). Significantly,
Section 1401(g) specifies that the new rights in section 1401(a) “shall be considered to be a
‘law pertaining to intellectual property’” for purposes of section 230 of the Communications
Act. Thus, the broad immunity from state law causes of action that Internet platforms obtain
under section 230 of the CDA does not apply to claims of copyright infringement for pre1972 sound recordings, just as it doesn’t apply to other federal copyright infringement claims.
Notice that the new section 1401 doesn’t speak of “authors” or “copyright owners,” instead
it uses the term “rights owner.” For the purposes of section 1401, “rights owner” means
either “the person that ha[d] the exclusive right to reproduce a sound recording under the
laws of any State, as of the day before the date of enactment of this section.” Future cases
will need to determine who exactly had “had the exclusive right to reproduce a sound
recording under the laws of any State” on October 10, 2018. The MMA does not appear to
contemplate that the answer might have been different in different states, but the correct
interpretation of this awkward definition is probably that any person who “had the exclusive
right to reproduce a sound recording under the laws of any State” qualifies, even if they must
share that right with other people.
Section 1401(l) Definitions.
In this section: … (2) Rights owner.—The term “rights owner” means—(A) the
person that has the exclusive right to reproduce a sound recording under the laws of
any State, as of the day before the date of enactment of this section; or (B) any
person to which a right to enforce a violation of this section may be transferred, in

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whole or in part, after the date of enactment of this section, under—(i) subsections
(d) and (e) of section 201; and (ii) section 204.

The constitutionality and wisdom of copyright term extension
Thomas Macaulay, Speeches to House of Commons on Feb. 5, 1841.
[T]he evil effects of the monopoly are proportioned to the length of its duration.
But the good effects for the sake of which we bear with the evil effects are by no
means proportioned to the length of its duration. A monopoly of sixty years
produces twice as much evil as a monopoly of thirty years, and thrice as much evil
as a monopoly of twenty years. But it is by no means the fact that a posthumous
monopoly of sixty years gives to an author thrice as much pleasure and thrice as
strong a motive as a posthumous monopoly of twenty years. On the contrary, the
difference is so small as to be hardly perceptible. We all know how faintly we are
affected by the prospect of very distant advantages, even when they are advantages
which we may reasonably hope that we shall ourselves enjoy. But an advantage that
is to be enjoyed more than half a century after we are dead, by somebody, we know
not by whom, perhaps by somebody unborn, by somebody utterly unconnected
with us, is really no motive at all to action.

The Sonny Bono Copyright Term Extension Act of 1988 extended the term of copyright
protection by 20 years, both prospectively and retrospectively. This law was widely decried
as “a classic instance of almost pure rent-seeking legislation,” and a triumph of special
interest lobbying over a diffuse and unrepresented public interest.128
The political economy that led to the CTEA is neatly summarized in by Kristelia A. García
and Justin McCrary in their 2019 Alabama Law Review article, A Reconsideration Of Copyright’s
Term:
The Sonny Bono Act was introduced in 1995. Backed by the entertainment
industries that were led by the Disney Corporation, the bill sought an extension that
was both prospective and retrospective. Disney's Mickey Mouse copyright--worth
$8 billion in 1998--was set to expire in 2003, and the company had much to gain by
extending this revenue stream (among others). To that end, Disney's then-CEO
Michael Eisner met with then-Senate Majority Leader Trent Lott, who shortly
thereafter signed on as cosponsor of the bill. Of the thirteen sponsors of the House
bill, Disney financially contributed directly to ten of them. In the Senate, Disney
financially contributed to eight of the twelve sponsors. Three years after its
introduction, the Sonny Bono Act was signed into law by President Clinton on
October 27, 1998.
Beaten but not defeated, the coalition of librarians, scholars, and others who
opposed the CTEA focused their litigation efforts on the retrospective component
of the extension. Led by Harvard law professor Larry Lessig, the lawsuit, originally
titled Eldred v. Reno when filed at the District Court for the District of Columbia,
made it to the Supreme Court as Eldred v. Ashcroft in 2002.129
128 Robert P. Merges, One Hundred Years of Solicitude: Intellectual Property Law, 1900–2000, 88 CALIF. L. REV. 2187,

2236 (2000).

129 Kristelia A. García, Justin McCrary, A Reconsideration of Copyright's Term, 71 Ala. L. Rev. 351, 358–59

(2019)

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Eldred v. Ashcroft, 537 U.S. 186 (2003)
In 2003, the Supreme Court rejected a constitutional challenge to the copyright term
extension act in the case of Eldred v. Ashcroft. The challengers argued that the retrospective
extension of copyright protection was beyond Congressional power because it obviously did
nothing to “promote the progress of science and useful arts” and that extending existing
terms also defied the concept of “limited times”. The Supreme Court majority disagreed, for
reasons that say more about constitutional law than the merits of the extension as a matter
of public policy. Justices Breyer and Stevens dissented.
Golan v. Holder, 565 U.S. 302 (2012)
In 2012, the Supreme Court also rejected a constitutional challenge to copyright restoration
for a class of foreign works in the public domain. The challenge legislation restored
protection to works originating abroad that did not obtain, or at some point lost, American
copyright protection because (1) the author failed to comply with applicable American
copyright formalities (such as notice or renewal), or (2) the nation in which they were first
published then lacked copyright relations with the United States, or (3) they are sound
recordings fixed before February 15, 1972.
Petitioners challenged the constitutionality of the application of Section 514 of the Uruguay
Round Agreements Act. The Act restored copyright status to foreign works previously in the
public domain by virtue of their failure to comply with United States copyright formalities.
The United States no longer imposes such formalities, but at the relevant times, publication
without copyright notice and registration made a work ineligible for copyright protection in
the United States.
The law applied mainly to works first published abroad from 1923 to 1989 that had not been
eligible for copyright protection under American law. It was unclear how many works might
be affected, but United States register of copyrights, said in 1996 that it was “probably
number in the millions.”
Works eligible for restoration under the law included: films by Alfred Hitchcock, books by
C.S. Lewis and Virginia Woolf, symphonies by Prokofiev and by Stravinsky, and paintings by
Picasso. The law was challenged by a variety of people who had relied on the free availability
of such works. One of the best examples of such reliance was a local community orchestra
that had invested in mastering works in the public domain, precisely because they were in the
public domain. The Petitioners’ primary arguments were that restoring copyright violates the
“limited time” language of the United States Constitution’s Copyright Clause, and that
restoring to copyright works that had passed into the public domain interferes with the
public’s First Amendment rights to use, copy, and otherwise exploit public domain works as
part of their freedom of expression.
The majority rejected all of the petitioners’ arguments and upheld the constitutionality of the
challenged law. As Justice Ginsburg, writing for the majority, explained, although the
purpose of copyright law is to promote the progress of science (meaning knowledge), its
review is quite deferential. Justice Ginsburg said (at 888):
In Eldred, we rejected an argument nearly identical to the one petitioners rehearse.
The Eldred petitioners urged that the CTEA’s extension of existing copyrights
categorically fails to “promote the Progress of Science,” because it does not

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stimulate the creation of new works. In response to this argument, we held that the
Copyright Clause does not demand that each copyright provision, examined
discretely, operate to induce new works. Rather, we explained, the Clause empowers
Congress to determine the intellectual property regimes that, overall, in that body’s
judgment, will serve the ends of the Clause. And those permissible ends, we held,
extended beyond the creation of new works.

Justices Breyer and Alito took a different view.
Justice Breyer, with whom Justice Alito joins, dissenting
In order “[t]o promote the Progress of Science” (by which term the Founders meant
“learning” or “knowledge”), the Constitution’s Copyright Clause grants Congress the
power to “secur[e] for limited Times to Authors ... the exclusive Right to their ...
Writings.” Art. I, § 8, cl. 8. This “exclusive Right” allows its holder to charge a fee to
those who wish to use a copyrighted work, and the ability to charge that fee
encourages the production of new material. In this sense, a copyright is, in
Macaulay’s words, a “tax on readers for the purpose of giving a bounty to writers”—
a bounty designed to encourage new production. As the Court said in Eldred, “the
economic philosophy behind the Copyright Clause is the conviction that
encouragement of individual effort by personal gain is the best way to advance
public welfare through the talents of authors and inventors.” Eldred v. Ashcroft, 537
U.S. 186, 212, n. 18 (2003).
The statute before us, however, does not encourage anyone to produce a single new
work. By definition, it bestows monetary rewards only on owners of old works—
works that have already been created and already are in the American public domain.
At the same time, the statute inhibits the dissemination of those works, foreign
works published abroad after 1923, of which there are many millions, including films,
works of art, innumerable photographs, and, of course, books—books that (in the
absence of the statute) would assume their rightful places in computer-accessible
databases, spreading knowledge throughout the world. See infra, at 904-906. In my
view, the Copyright Clause does not authorize Congress to enact this statute. And I
consequently dissent.
The possibility of eliciting new production is, and always has been, an essential
precondition for American copyright protection. The Constitution’s words,
“exclusive Right,” “limited Times,” “Progress of Science,” viewed through the lens
of history underscore the legal significance of what the Court in Eldred referred to as
the “economic philosophy behind the Copyright Clause.” That philosophy
understands copyright’s grants of limited monopoly privileges to authors as private
benefits that are conferred for a public reason—to elicit new creation.
Yet, as the Founders recognized, monopoly is a two-edged sword. On the one hand,
it can encourage production of new works. In the absence of copyright protection,
anyone might freely copy the products of an author’s creative labor, appropriating
the benefits without incurring the nonrepeatable costs of creation, thereby deterring
authors from exerting themselves in the first place. On the other hand, copyright
tends to restrict the dissemination (and use) of works once produced either because
the absence of competition translates directly into higher consumer prices or because
the need to secure copying permission sometimes imposes administrative costs that

521

make it difficult for potential users of a copyrighted work to find its owner and strike
a bargain. Consequently, the original British copyright statute, the Constitution’s
Framers, and our case law all have recognized copyright’s resulting and necessary call
for balance.
[Historical discussion omitted] The upshot is that text, history, and precedent
demonstrate that the Copyright Clause places great value on the power of copyright
to elicit new production. Congress in particular cases may determine that copyright’s
ability to do so outweighs any concomitant high prices, administrative costs, and
restrictions on dissemination. And when it does so, we must respect its judgment.
But does the Clause empower Congress to enact a statute that withdraws works from
the public domain, brings about higher prices and costs, and in doing so seriously
restricts dissemination, particularly to those who need it for scholarly, educational, or
cultural purposes—all without providing any additional incentive for the production
of new material? That is the question before us. And, as I have said, I believe the
answer is no. Congress in this statute has exceeded what are, under any plausible
reading of the Copyright Clause, its permissible limits.
The Act before us says that it “restores” American copyright to a set of works, which,
for the most part, did not previously enjoy American copyright protection. These
works had fallen into America’s public domain, but as of the “restoration” date, they
had not yet fallen into the public domain of the foreign country where they
originated.
The statute covers works originating almost anywhere outside the United States. See
17 U.S.C. § 104A(h)(3) (setting out eligibility criteria); U.S. Copyright Office, Circular
No. 38A: International Copyright Relations of the United States (2010). The relevant
set of works consists primarily of works originating abroad that did not obtain, or at
some point lost, American copyright protection because (1) the author failed to
comply with applicable American copyright formalities (such as notice or renewal),
or (2) the nation in which they were first published then lacked copyright relations
with the United States, or (3) they are sound recordings fixed before February 15,
1972. § 104A(h)(6)(C). A work must also satisfy other technical requirements: It must
have had a rightholder who was a national or resident of an eligible country on the
day it was created; and it cannot have been published in the United States within 30
days of its first publication. § 104A(h)(6)(D). The Act grants these works a copyright
that expires at the time it would have expired had the author obtained a full
American copyright term starting from the date on which the work was first
published (in the foreign country). § 104A(a)(1)(B).
The Act mainly applies to works first published abroad between 1923 and 1989. It
does not apply significantly to earlier works because any work published before 1921
would have fallen into the public domain before 1977 had it received a full American
copyright term, while works published between 1921 and 1923 obtained a “restored”
copyright that expired before the 1998 Sonny Bono Copyright Term Extension Act,
and so could have lasted two years at most. It has less impact on more recent works
because in 1989 the United States became a Berne member, abolished the copyright
notice requirement, and thenceforth provided prospective copyright protection
throughout the Berne Union.

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Despite these temporal limitations, the Act covers vast numbers of works. The first
category includes works published in countries that had copyright relations with the
United States during this time period, such as most of Western Europe and Latin
America, Australia, and Japan, whose authors did not satisfy American copyright
formalities, perhaps because the author, who may not have sought an American
copyright, published the book abroad without proper American notice, or perhaps
because the author obtained a valid American copyright but failed to renew it.
The second category (works that entered the public domain due to a lack of
copyright relations) includes, among others, all works published in Russia and other
countries of the former Soviet Union before May 1973 (when the U.S.S.R. joined the
Universal Copyright Convention (UCC)), all works published in the People’s
Republic of China before March 1992 (when bilateral copyright relations between
the People’s Republic and the United States were first established), all South Korean
works published before October 1987 (when South Korea joined the UCC), and all
Egyptian and Turkish works published before March 1989 (when the United States
joined Berne).
The third category covers all sound recordings from eligible foreign countries
published after February 15, 1972. The practical significance of federal copyright
restoration to this category of works is less clear, since these works received, and
continued to receive, copyright protection under state law. See 17 U.S.C. § 301(c).
Apparently there are no precise figures about the number of works the Act affects,
but in 1996 the then-Register of Copyrights, Marybeth Peters, thought that they
“probably number in the millions.”
The provision before us takes works from the public domain, at least as of January 1,
1996. See § 104A(h)(2)(A) (setting “restoration” dates). It then restricts the
dissemination of those works in two ways.
First, “restored copyright” holders can now charge fees for works that consumers
previously used for free. The price of a score of Shostakovich’s Preludes and Fugues
for example, has risen by a multiple of seven. And, as the Court recognizes, an
orchestra that once could perform “Peter and the Wolf. . . free of charge” will now
have to buy the “right to perform it . . . in the marketplace.” But for the case of
certain “derivative” works, § 104A(d)(3), the “restored copyright” holder, like other
copyright holders, can charge what the market will bear. If a school orchestra or
other nonprofit organization cannot afford the new charges, so be it. They will have
to do without—aggravating the already serious problem of cultural education in the
United States. See Brief for Conductors Guild et al. as Amici Curiae 4-5, 7-8
(describing the inability of many orchestras to pay for the rental of sheet music
covered by “restored copyright[s]”).
Second, and at least as important, the statute creates administrative costs, such as the
costs of determining whether a work is the subject of a “restored copyright,”
searching for a “restored copyright” holder, and negotiating a fee. Congress has tried
to ease the administrative burden of contacting copyright holders and negotiating
prices for those whom the statute calls “reliance part[ies],” namely those who
previously had used such works when they were freely available in the public domain.
§ 104A(h)(4). But Congress has done nothing to ease the administrative burden of
523

securing permission from copyright owners that is placed upon those who want to
use a work that they did not previously use, and this is a particular problem when it
comes to “orphan works”—older and more obscure works with minimal commercial
value that have copyright owners who are difficult or impossible to track down.
Unusually high administrative costs threaten to limit severely the distribution and use
of those works—works which, despite their characteristic lack of economic value,
can prove culturally invaluable.
There are millions of such works. For example, according to European Union
figures, there are 13 million orphan books in the European Union (13% of the total
number of books in-copyright there), 225,000 orphan films in European film
archives, and 17 million orphan photographs in United Kingdom museums. How is
a university, a film collector, a musician, a database compiler, or a scholar now to
obtain permission to use any such lesser known foreign work previously in the
American public domain? Consider the questions that any such individual, group, or
institution usually must answer: Is the work eligible for restoration under the statute?
If so, who now holds the copyright—the author? an heir? a publisher? an
association? a long-lost cousin? Whom must we contact? What is the address?
Suppose no one answers? How do we conduct a negotiation?
To find answers to these, and similar questions, costs money. The cost to the
University of Michigan and the Institute of Museum and Library Services, for
example, to determine the copyright status of books contained in the HathiTrust
Digital Library that were published in the United States from 1923 to 1963 will
exceed $1 million.
It is consequently not surprising to learn that the Los Angeles Public Library has
been unable to make its collection of Mexican folk music publicly available because
of problems locating copyright owners, that a Jewish cultural organization has
abandoned similar efforts to make available Jewish cultural music and other materials,
or that film preservers, museums, universities, scholars, database compilers, and
others report that the administrative costs associated with trying to locate foreign
copyright owners have forced them to curtail their cultural, scholarly, or other workpreserving efforts.
These high administrative costs can prove counterproductive in another way. They
will tempt some potential users to “steal” or “pirate” works rather than do without.
And piracy often begets piracy, breeding the destructive habit of taking copyrighted
works without paying for them, even where payment is possible. Such habits ignore
the critical role copyright plays in the creation of new works, while reflecting a false
belief that new creation appears by magic without thought or hope of compensation.
I recognize that ordinary copyright protection also comes accompanied with
dissemination-restricting royalty charges and administrative costs. But here the
restrictions work special harm. For one thing, the foreign location of restored works
means higher than ordinary administrative costs. For another, the statute’s technical
requirements make it very difficult to establish whether a work has had its copyright
restored by the statute.
Worst of all, “restored copyright” protection removes material from the public
domain. In doing so, it reverses the payment expectations of those who used, or
524

intended to use, works that they thought belonged to them. Were Congress to act
similarly with respect to well-established property rights, the problem would be
obvious. This statute analogously restricts, and thereby diminishes, Americans’
preexisting freedom to use formerly public domain material in their expressive
activities.
Thus, while the majority correctly observes that the dissemination-restricting harms
of copyright normally present problems appropriate for legislation to resolve, the
question is whether the Copyright Clause permits Congress seriously to exacerbate
such a problem by taking works out of the public domain without a countervailing
benefit. This question is appropriate for judicial resolution. Indeed, unlike Eldred
where the Court had to decide a complicated line-drawing question—when is a
copyright term too long?—here an easily administrable standard is available—a
standard that would require works that have already fallen into the public domain to
stay there.
The several, just mentioned features of the present statute are important, for they
distinguish it from other copyright laws. By removing material from the public
domain, the statute, in literal terms, “abridges” a preexisting freedom to speak. In
practical terms, members of the public might well have decided what to say, as well
as when and how to say it, in part by reviewing with a view to repeating, expression
that they reasonably believed was, or would be, freely available. Given these speech
implications, it is not surprising that Congress has long sought to protect public
domain material when revising the copyright laws. And this Court has assumed the
particular importance of public domain material in roughly analogous circumstances.
See Graham, 383 U.S., at 6, (“Congress may not authorize the issuance of patents
whose effects are to remove existent knowledge from the public domain”); Kewanee
Oil Co. v. Bicron Corp., 416 U.S. 470, 484 (1974) (trade secret protection is not
incompatible with “policy that matter once in the public domain must remain in the
public domain”); Cox Broadcasting Corp. v. Cohn, 420 U.S. 469, 496, (1975) (First
Amendment prohibits sanctioning press for publishing material disclosed in public
court documents); see also Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23,
33 (2003) (“The right to copy once a copyright has expired passes to the public”).
Moreover, whereas forward-looking copyright laws tend to benefit those whose
identities are not yet known (the writer who has not yet written a book, the musician
who has not yet composed a song), when a copyright law is primarily backward
looking the risk is greater that Congress is trying to help known beneficiaries at the
expense of badly organized unknown users who find it difficult to argue and present
their case to Congress. In Eldred, I thought this problem was severe. And in light of
the fact that Congress, with one minor exception, heard testimony only from the
representatives of existing copyright holders, who hoped that passage of the statute
would enable them to benefit from reciprocal treatment of American authors abroad,
I cannot say that even here the problem, while much diminished, was nonexistent.
I agree with the majority that, in doing so, this statute does not discriminate among
speakers based on their viewpoints or subject matter. But such considerations do not
exhaust potential First Amendment problems.

525

Taken together, these speech-related harms (e.g., restricting use of previously
available material; reversing payment expectations; rewarding rent-seekers at the
public’s expense) at least show the presence of a First Amendment interest. And that
is enough. For present purposes, I need not decide whether the harms to that
interest show a violation of the First Amendment. I need only point to the
importance of interpreting the Constitution as a single document—a document that
we should not read as setting the Copyright Clause and the First Amendment at
cross-purposes. Nor need I advocate the application here of strict or specially
heightened review. I need only find that the First Amendment interest is important
enough to require courts to scrutinize with some care the reasons claimed to justify
the Act in order to determine whether they constitute reasonable copyright-related
justifications for the serious harms, including speech-related harms, which the Act
seems likely to impose. …
This statute does not serve copyright’s traditional public ends, namely the creation of
monetary awards that “motivate the creative activity of authors,” Sony, 464 U.S., at
429, “encourage individual effort,” Mazer, 347 U.S., at 219, and thereby “serve the
cause of promoting broad public availability of literature, music, and the other arts,”
Twentieth Century Music, 422 U.S., at 156. The statute grants its “restored copyright[s]”
only to works already produced. It provides no monetary incentive to produce
anything new. Unlike other American copyright statutes from the time of the
Founders onwards, including the statute at issue in Eldred, it lacks any significant
copyright-related quid pro quo.
The majority seeks to avoid this awkward fact by referring to past congressional
practice that mostly suggests that Congress may provide new or increased protection
both to newly created and to previously created, works. I do not dispute that
copyright power. Insofar as such a statute does the former, i.e., extends protection to
newly created material, it embodies copyright’s traditional justification—eliciting new
production. And I do not doubt that Congress may then also include existing works
within the scope of, say, increased protection for equitable and administrative
reasons. See Eldred, 537 U.S. at 204, 214-215 (describing equitable reasons for
applying newly extended copyright terms to future and existing copyrights alike). The
statute before us, however, does not directly elicit any new production.
The other statutes to which the majority refers are private bills, statutes retroactively
granting protection in wartime, or the like. But special circumstances, like wars,
hurricanes, earthquakes, and other disasters, prevent the realization in practice of a
reasonable expectation of securing or maintaining a preexisting right. Private bills are
designed to provide special exceptions for comparable equitable reasons. To find in
these laws an important analogy to the present law, which for the most part covers
works that the author did not expect to protect in America (and often did not
particularly want to protect), seems somewhat farfetched.
In fact, Congressional practice shows the contrary. It consists of a virtually unbroken
string of legislation preventing the withdrawal of works from the public domain.
The majority makes several other arguments. First, it argues that the Clause does not
require the “creation of at least one new work,” but may instead “promote the
Progress of Science” in other ways. And it specifically mentions the “dissemination

526

of existing and future works” as determinative here. The industry experts to whom
the majority refers argue that copyright protection of already existing works can help,
say, music publishers or film distributers raise prices, produce extra profits and
consequently lead them to publish or distribute works they might otherwise have
ignored. But ordinarily a copyright—since it is a monopoly on copying—restricts
dissemination of a work once produced compared to a competitive market. And
simply making the industry richer does not mean that the industry, when it makes an
ordinary forward-looking economic calculus, will distribute works not previously
distributed. The industry experts might mean that temporary extra profits will lead
them to invest in the development of a market, say, by advertising. But this kind of
argument, which can be made by distributers of all sorts of goods, ranging from kiwi
fruit to Swedish furniture, has little if anything to do with the nonrepeatable costs of
initial creation, which is the special concern of copyright protection.
Moreover, the argument proves too much. It is the kind of argument that the
Stationers’ Company might well have made and which the British Parliament rejected.
Cf. Patterson 154-155 (describing failed booksellers’ bill seeking protection from
foreign competition through an extension of the copyright term). It is the kind of
argument that could justify a legislature’s withdrawing from the public domain the
works, say, of Hawthorne or of Swift or for that matter the King James Bible in
order to encourage further publication of those works; and, it could even more easily
justify similar action in the case of lesser known early works, perhaps those of the
Venerable Bede. The Court has not, to my knowledge, previously accepted such a
rationale—a rationale well removed from the special economic circumstances that
surround the nonrepeatable costs of the initial creation of a “Writing.” And I fear
that doing so would read the Copyright Clause as if it were a blank check made out
in favor of those who are not themselves creators.
It is not surprising that the copyright holders’ representatives who appeared before
Congress did not emphasize this argument. Rather, they focused on the Berne
Convention itself. By that time, Congress had already protected all new works of
Berne members. But it had not provided additional protection to preexisting foreign
works that were then in the American public domain. Industry witnesses testified
that withdrawing such works from the American public domain would permit
foreign copyright owners to charge American consumers more for their products;
and that, as a result, the United States would be able to persuade foreign countries to
allow American holders of preexisting copyrights to charge foreign customers more
money for their products.
This argument, whatever its intrinsic merits, is an argument that directly concerns a
private benefit: how to obtain more money from the sales of existing products. It is
not an argument about a public benefit, such as how to promote or to protect the
creative process.
Third, the majority points out that the statute “gives [authors] nothing more than the
benefit of their labors during whatever time remains before the normal copyright
term expires.” But insofar as it suggests that copyright should in general help authors
obtain greater monetary rewards than needed to elicit new works, it rests upon
primarily European, but not American, copyright concepts.

527

Fourth, the majority argues that this statutory provision is necessary to fulfill our
Berne Convention obligations. The Treaty, in Article 18, says that the “Convention
shall apply to all works which, at the moment of its coming into force [i.e., 1989 in
the case of the United States] have not yet fallen into the public domain in the
country of origin through the expiry of the term of protection.” Berne Convention
for the Protection of Literary and Artistic Works, Art. 18(1), Sept. 9, 1886, as revised
at Stockholm on July 14, 1967, 828 U.N.T.S. 221, 251. The majority and
Government say that this means we must protect the foreign works at issue here.
And since the Berne Convention, taken as a whole, provides incentives for the
creation of new works, I am willing to speculate, for argument’s sake, that the statute
might indirectly encourage production of new works by making the United States’
place in the international copyright regime more secure.
Still, I cannot find this argument sufficient to save the statute. For one thing, this is a
dilemma of the Government’s own making. The United States obtained the benefits
of Berne for many years despite its failure to enact a statute implementing Article 18.
But in 1994, the United States and other nations signed the Agreement on TradeRelated Aspects of Intellectual Property Rights, which enabled signatories to use
World Trade Organization dispute resolution mechanisms to complain about other
members’ Berne Convention violations. But at that time the Government, although
it successfully secured reservations protecting other special features of American
copyright law, made no effort to secure a reservation permitting the United States to
keep some or all restored works in the American public domain. And it made no
effort to do so despite the fact that Article 18 explicitly authorizes countries to
negotiate exceptions to the Article’s retroactivity principle. See Art. 18(3), ibid. (“The
application of [the retroactivity] principle shall be subject to any provisions contained
in special conventions to that effect existing or to be concluded between countries of
the Union” (emphasis added)).
For another thing, the Convention does not require Congress to enact a statute that
causes so much damage to public domain material. Article 18(3) also states that “the
respective countries shall determine, each in so far as it is concerned, the conditions
of application of this principle.” Congress could have alleviated many of the costs
that the statute imposes by, for example, creating forms of compulsory licensing,
requiring “restored copyright” holders to provide necessary administrative
information as a condition of protection, or insisting upon “reasonable royalties.”
To say this is not to criticize the Convention or our joining it. Rather, it is to argue
that the other branches of Government should have tried to follow the Convention
and in particular its provisions offering compliance flexibility. The fact that the
statute has significant First Amendment costs is relevant in this respect, for that
Amendment ordinarily requires courts to evaluate less restrictive, alternative
possibilities. Doing so here, reveals that neither Congress nor the Executive took
advantage of less-restrictive methods of compliance that the Convention itself
provides. And that fact means that the Convention cannot provide the statute with a
constitutionally sufficient justification that is otherwise lacking.
The fact that, by withdrawing material from the public domain, the statute inhibits an
important preexisting flow of information is sufficient, when combined with the
other features of the statute that I have discussed, to convince me that the Copyright
528

Clause, interpreted in the light of the First Amendment, does not authorize Congress
to enact this statute.
I respectfully dissent from the Court’s contrary conclusion.
Notes and questions
(1) In Golan v. Holder, 565 U.S. 302 (2012), the Supreme Court upheld the constitutionality of
Section 514 of the Uruguay Round Agreements Act which restored copyright status to
foreign works previously in the public domain in the United States. The majority held that
the “limited time” language of the Copyright Clause did not preclude the extension of
copyright protections to works previously in the public domain. It held further that restoring
to copyright works that had passed into the public domain did not violate the First
Amendment.
(2) Why does Justice Breyer conclude that “the Copyright Clause, interpreted in the light of
the First Amendment” should not allow for extending copyright protection to works
previously in the public domain? Are his objections grounded in copyright policy,
Constitutional theory, both, or neither?

Orphan works
The U.S. Copyright Office uses the term “orphan works” to describe the situation where the
owner of a copyrighted work cannot be identified and located by someone who wishes to
make use of the work in a manner that requires permission of the copyright owner.130
Determining whether a work is an “orphan work” requires some context. In any given
situation, opinions will vary as to how much effort a potential user should be expected to
exert to track down missing rightsholders and negotiate with them. The owners of some
copyrighted works will never be identifiable with reasonable certainty either because initial
authorship is ambiguous or because the copyright ownership has been passed along a chain
of title too complex to unravel. In contrast to these “pure orphans,” there are “contextual
orphans,” works for which the copyright owner could be found, but for which the expenses
of so doing is prohibitive or unjustifiable based on a cost-benefit analysis. Potential users of
both pure and contextual orphan works often choose not to use or display such works out of
concern that they may be subject to injunctions and statutory damages if the owner of an
orphan work subsequently comes into the picture and sues for infringement.
Tracing the ownership of copyright requires more than just tracking down the original
author—copyrights are transferred by the operation of certain statutory provisions, private
contracts, corporate mergers, divestitures and bankruptcies, and as part of estates. As the
Library Copyright Alliance notes:
A person seeking permission to use an older work needs to untangle the
complicated history of mergers and acquisitions of the original publisher to identify
the corporation that now might own the rights to the work. This corporation,
however, might not have adequate records concerning all the works to which it
See U.S. Copyright Office, Report on
http://www.copyright.gov/orphan/orphan-report.pdf.
130

529

Orphan

Works

15

(2006),

available

at

holds title. And since the person typically is seeking to use the work for at most
nominal compensation, the corporation has no incentive to invest adequate
resources in locating the records concerning the work.131

The orphan works problem is particularly acute for users who need to assemble large
collections of rights (library digitization and archive digitization are two good examples) and
the problem is exacerbated by:
•
•
•

the elimination of formalities such as notice and registration
copyright term extension
retroactive restoration of copyright in works previously in the public domain

By uniformly extending copyright far beyond the commercial lifespan of almost all
copyrighted works, we have increased the transaction costs of previously unforeseen uses for
no actual benefit in terms of the copyright’s incentive value.

Does the fair use doctrine justify the use of orphan works?
It seems unlikely that courts would accept that the use of orphan works is always fair use,
but there are definitely some circumstances in which the fact that a work was an orphan
work will be an essential element of a claim to fair use. Consider the following examples:
The Civil Rights Movement Veterans Website
Bruce Hartford, the webmaster of the Civil Rights Movement Veterans Website presented this
fascinating story to Berkeley Law School’s “Orphan works and Mass Digitization”
conference on April 12, 2012. The Civil Rights Movement Veterans Website recounts the
history of the civil rights movement:
This 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
we still see it. With a few minor exceptions, everything on this site was written,
created, or spoken by Movement activists who were direct participants in the events
they chronicle.132

Much of the material on the Civil Rights Movement Veterans website is used with
permission or requires no permission because it is in the public domain. However, according
to Bruce Hartford, that still leaves a significant proportion of material that he would classify
as orphan works. When Hartford uses the term orphan works he means (i) material that was
originally copyrighted by an organization which no longer exists and made no provision for
its copyrights upon dissolution; (ii) material where the copyright owner cannot be found; (iii)
or material where the identity of the copyright owner was always unknown.
The photo below of James Forman (October 4, 1928 – January 10, 2005), an American Civil
Rights leader active in the Student Nonviolent Coordinating Committee.

131 Miriam

M. Nisbet, Orphan Works Reply Comment, U.S. Copyright Office 2 (Mar. 25, 2005), http://
www.copyright.gov/orphan/comments/OW0658-LCA.pdf.
132 Civil Rights Movement Veterans Website, http://www.crmvet.org (last visited April 30, 2013.)

530

Figure 35 Orphan works example: image of civil rights leader James Forman available at the Civil
Rights Movement Veterans Website

As Hartford described it:
The camera was smuggled into the jail, given to an unknown prisoner who clicked
the button and took the picture. Under copyright law, as I am told, the copyright to
the picture is owned by the unknown prisoner who pressed the button on the
camera, who then gave it back to whoever smuggled the camera into the prison, to
smuggle it out of the prison.
Now I know this is off topic, but I am just going to say, some of us are a little
annoyed about this stupid rule that the person who presses the button totally owns
the rights and those of us who are risking our lives to do whatever it was that they
were taking the picture of have no say so in whatever happens to that and they can
make lots of money on it and we can look and weep.

Trove, The National Library of Australia’s Digital Archive
Trove is the National Library of Australia’s primary vehicle to assist users to access digital
content held by collecting institutions across Australia. Trove is used by tens of thousands of
Australians every day. In July 2008, Trove opened up Australian newspaper articles
published from the 1800s to 1955 to full-text searching and display.

531

Figure 36 Newspaper Image from Trove (The Sydney Morning Herald, Page 1, Thursday, February 1,
1951)

Trove goes beyond 1955 by agreement with newspaper publishers, but for anything prior to
1955 the National Library of Australia and the libraries in its network proceed on the
assumption that there is no requirement to obtain permission.133
The National Library of Australia does not embrace the term “orphan works”, but it clearly
has an implicit orphan works policy. In selecting 1955 as the cut-off date, the National
Library of Australia has adopted what they would call a sensible risk management policy and
others would recognize as an orphan works policy. Under Australian copyright law
(Australian Copyright Act 1968), the date on which the copyright in a literary work expires
depends on the date of publication and the date of the death of the author.
•
•
•

If a literary work was published in the lifetime of the author, and that author died before
January 1, 1957, the work is out of copyright.
Any literary work published in the lifetime of an author who died on or after January 1,
1957 and before 2005, will be out of copyright 50 years after that author’s death.
If a work was first published anonymously and the identity of the author cannot be
ascertained on reasonable inquiry, the period of copyright protection is measured from the
year of publication and not the year of the author’s death. (See Section 34 of the Australian
Copyright Act 1968).

133 See e.g., NLA, Selection Policy “The newspapers must not have copyright restrictions i.e. anything before

1955 is suitable”. http://www.nla.gov.au/content/selection-policy last visited May 2, 2013.

532

•

The law relating to photographs in Australia is a little easier: any photograph taken before
1955 is in the public domain. (See Section 33 of the Australian Copyright Act 1968).

Newspapers contain works by many different authors. For each individual article in a
newspaper, the period of copyright protection is measured from the death of the author,
even if the author assigned the copyright to the publisher.
When Trove made Australian newspapers from the early 1950s available online in 2008,
some of those individual articles were still protected by copyright, but no one knew
specifically which ones. For example, if a work was published in 1953 and the author died in
1973, then the copyright would not expire until 2023. This information is not unknowable in
most cases, but acquiring that knowledge would be time consuming and expensive.
Before he retired in 2011, Warwick Cathro was the Assistant Director-General of Resource
Sharing and Innovation at the National Library of Australia. Warwick was a pioneer in the
delivery of innovative network services to the Australian library community and is
considered the founder of Trove. I spoke to Warwick about the library’s approach to
newspaper digitization and he said:
The NLA thus took a “risk management” approach to copyright issues in its
newspaper digitization program.
We did this because of the manifest public benefit in digitising this content. We
never attempted to clear copyright in individual articles; how could we ever do this
for tens of millions of articles?
To my knowledge, in the five years since this content has been made available
online, not one copyright owner has objected. If any were to do so the NLA would
discuss the purpose of its digitization program and seek permission to include the
creator’s work in the newspaper database. If this could not be negotiated the NLA
would take down the item or article in question.134

Notes and questions
(1) Is displaying the photo of James Forman on the Civil Rights Movement Veterans
Website fair use? Is reproducing the photo of James Forman in these Extended Readings on
Copyright fair use? If the National Library of Australia’s policy was judged by American fair
use standards, would it pass muster?
(2) For a broader discussion of these issues, see Jennifer M. Urban, How Fair Use Can Help
Solve The Orphan Works Problem, 27 Berkeley Technology Law Journal 1379 (2012).

Legislative responses to the orphan works problem in the European Union
Directive 2012/28/EU of the European Parliament and the Council of 25 October 2012 on
certain permitted uses of orphan works, 2012 OJ (L 299)5. In addition, the Digital Single
Market Directive of 2019 now also addresses the issue of orphan works.135 The DSM
Directive focuses on the use of out-of-commerce works by cultural heritage institutions and
134 Email exchange between Matthew Sag and Warwick Cathro, April 22, 2013 to May 2, 2013.
135 The Directive on Copyright in the Digital Single Market (DSM Directive) was approved by the European

Parliament on 26 March 2019. The directive will become law in the European Union when it is approved by
the European Council (a vote scheduled for 9 April 2019).

533

it provides that all Member States must allow cultural heritage institutions to make available,
for non-commercial purposes, out-of-commerce works or other subject matter that are
permanently in their collections under certain conditions. The key provisions of the DSM
are extracted below.
Out-of-commerce works and other subject matter
Article 8
Use of out-of-commerce works and other subject matter by cultural heritage
institutions
1. Member States shall provide that a collective management organisation, in
accordance with its mandates from rightholders, may conclude a non-exclusive
licence for non-commercial purposes with a cultural heritage institution for the
reproduction, distribution, communication to the public or making available to the
public of out-of-commerce works or other subject matter that are permanently in
the collection of the institution, irrespective of whether all rightholders covered by
the licence have mandated the collective management organisation, on condition
that:
(a) the collective management organisation is, on the basis of its mandates,
sufficiently representative of rightholders in the relevant type of works or other
subject matter and of the rights that are the subject of the licence; and
(b) all rightholders are guaranteed equal treatment in relation to the terms of the
licence.
2. Member States shall provide for an exception or limitation to the rights provided
for in [various directives], in order to allow cultural heritage institutions to make
available, for non-commercial purposes, out-of-commerce works or other subject
matter that are permanently in their collections, on condition that:
(a) the name of the author or any other identifiable rightholder is indicated, unless
this turns out to be impossible; and
(b) such works or other subject matter are made available on non-commercial
websites.
3. Member States shall provide that the exception or limitation provided for in
paragraph 2 only applies to types of works or other subject matter for which no
collective management organisation that fulfils the condition set out in point (a) of
paragraph 1 exists.
4. Member States shall provide that all rightholders may, at any time, easily and
effectively, exclude their works or other subject matter from the licensing
mechanism set out in paragraph 1 or from the application of the exception or
limitation provided for in paragraph 2, either in general or in specific cases,
including after the conclusion of a licence or after the beginning of the use
concerned.
5. A work or other subject matter shall be deemed to be out-of-commerce when it
can be presumed in good faith that the whole work or other subject matter is not
available to the public through customary channels of commerce, after a reasonable
effort has been made to determine whether it is available to the public.
Member States may provide for specific requirements, such as a cut-off date, to
determine whether works and other subject matter can be licensed in accordance

534

with paragraph 1 or used under the exception or limitation provided for in
paragraph 2. Such requirements shall not extend beyond what is necessary and
reasonable, and shall not preclude being able to determine that a set of works or
other subject matter as a whole is out-of-commerce, when it is reasonable to
presume that all works or other subject matter are out-of-commerce.
6. Member States shall provide that the licences referred to in paragraph 1 are to be
sought from a collective management organisation that is representative for the
Member State where the cultural heritage institution is established.
7. This Article shall not apply to sets of out-of-commerce works or other subject
matter if, on the basis of the reasonable effort referred to in paragraph 5, there is
evidence that such sets predominantly consist of:
(a) works or other subject matter, other than cinematographic or audiovisual works,
first published or, in the absence of publication, first broadcast in a third country
(b) cinematographic or audiovisual works, of which the producers have their
headquarters or habitual residence in a third country; or
(c) works or other subject matter of third country nationals, where after a reasonable
effort no Member State or third country could be determined pursuant to points (a)
and (b).
By way of derogation from the first subparagraph, this Article shall apply where the
collective management organisation is sufficiently representative, within the meaning
of point (a) of paragraph 1, of rightholders of the relevant third country.
Article 9 Cross-border uses
1. Member States shall ensure that licences granted in accordance with Article 8 may
allow the use of out-of-commerce works or other subject matter by cultural heritage
institutions in any Member State.
2. The uses of works and other subject matter under the exception or limitation
provided for in Article 8(2) shall be deemed to occur solely in the Member State
where the cultural heritage institution undertaking that use is established.
Article 10 Publicity measures
1. Member States shall ensure that information from cultural heritage institutions,
collective management organisations or relevant public authorities, for the purposes
of the identification of the out-of-commerce works or other subject matter, covered
by a licence granted in accordance with Article 8 (1), or used under the exception or
limitation provided for in Article 8(2), as well as information about the options
available to rightholders as referred to in Article 8(4), and, as soon as it is available
and where relevant, information on the parties to the licence, the territories covered
and the uses, is made permanently, easily and effectively accessible on a public single
online portal from at least six months before the works or other subject matter are
distributed, communicated to the public or made available to the public in
accordance with the licence or under the exception or limitation.
The portal shall be established and managed by the European Union Intellectual
Property Office in accordance with Regulation (EU) No 386/2012.

535

2. Member States shall provide that, if necessary for the general awareness of
rightholders, additional appropriate publicity measures are taken regarding the ability
of collective management organisations to license works or other subject matter in
accordance with Article 8, the licences granted, the uses under the exception or
limitation provided for in Article 8(2) and the options available to rightholders as
referred to in Article 8(4).
The appropriate publicity measures referred to in the first subparagraph of this
paragraph shall be taken in the Member State where the licence is sought in
accordance with Article 8(1) or, for uses under the exception or limitation provided
for in Article 8(2), in the Member State where the cultural heritage institution is
established. If there is evidence, such as the origin of the works or other subject
matter, to suggest that the awareness of rightholders could be more efficiently raised
in other Member States or third countries, such publicity measures shall also cover
those Member States and third countries.
Article 11 Stakeholder dialogue
Member States shall consult rightholders, collective management organisations and
cultural heritage institutions in each sector before establishing specific requirements
pursuant to Article 8(5), and shall encourage regular dialogue between representative
users’ and rightholders’ organisations, including collective management
organisations, and any other relevant stakeholder organisations, on a sector-specific
basis, to foster the relevance and usability of the licensing mechanisms set out in
Article 8(1) and to ensure that the safeguards for rightholders referred to in this
Chapter are effective.

The effect of long copyright terms on the availability of older works
In Eldred v. Ashcroft, 537 U.S. 186, 207 (2003), the majority of the Supreme Court gave some
credence to “projections that longer terms would encourage copyright holders to invest in
the restoration and public distribution of their works.” The argument here is that the
absence of copyright protection might impair incentives to invest in maintaining and
exploiting these works that have fallen into the public domain.136
Paul Heald has empirically tested this under-exploitation thesis in a number of studies. In a
study of bestselling novels from 1913 to 1932, Heald found that that public-domain status
significantly increased the chance that a book would be in print and increased the number of
publishers of it. 137 Similarly, in a follow up study Heald and his coauthor Christopher
Buccafusco found the same effect for audio books: i.e., being in the public domain made a
modern audiobook release significantly more likely, not less.138 In a different study, Heald
took a random sample of 2,266 new books available on Amazon during the fall of 2012 and
136 See e.g. William M. Landes & Richard A. Posner, Indefinitely Renewable Copyright, 70 U. CHI. L. REV. 471, 475

(2003).

137 Paul

J. Heald, Property Rights and the Efficient Exploitation of Copyrighted Works: An Empirical Analysis of
Copyrighted and Public Domain Fiction Bestsellers, 92 MINN. L. REV. 1031 (2008).
138 Christopher

Buccafusco & Paul J. Heald, Do Bad Things Happen When Works Enter the Public Domain?:
Empirical Tests of Copyright Term Extension, 28 Berkeley Tech. L.J. 1, 10–12 (2013).

536

sorted them by the decade of the original publication date for the corresponding title. Heald
found that editions of books in the public domain (those published prior to 1923)
constituted 72 percent of the total, while editions of titles still under copyright constitute 28
percent. Adjusting the figures to account for the
fact
that one
public
title could841
be
How
Copyright
Keeps
Worksdomain
Disappeared
published by more than one publisher, Heald produced the following graph of titles on
Amazon
2012 by year
of firsttitles
publication:
Figure
2: inEstimated
Amazon
by percent per decade.

Note: Because Amazon only tracks the number of editions it sells (one per ISBN), it does not know the number of titles it
The figure
clearly shows
a sharp
drop
in availability
works
cross
the line
from requires
offers.
Books frequently
are published
in more
thanoff
one edition;
estimatingonce
the number
of titles
available
on Amazon
139
dividing
number to
of editions
in the random
sample
by the
number
editions
per title.
The estimate
given in
terms
public the
domain
in-copyright
(which
was
in average
1923 at
the of
time
Heald
collected
thisisdata.)
of the percentage of titles likely available on Amazon from each listed decade, with adjustments between decades based on the
ratio
of editions
to titles for books initially published within each decade.
As Heald
summarizes:

In a world without copyright, one would expect a fairly smoothly downward sloping
curve from the decade 2000–2010 to the decade of 1800–1810 based on the
that works
generally
become
less Out
popular
as they
age edition
(and therefore
are ISBN).
editionsassumption
and 401 ISBNs)
than
Lorimer’s
A Wife
of Egypt
(one
and one
less desirable
to market).of
If public-domain
age were the onlytofactor,
one would
expect
to see
fewer even
Nonetheless,
the distribution
copyrighted
titles
is quite
dramatic,
titles available
eachinflated
successively
older decade. Instead, the curve declines
after dividing
by four,from
a likely
figure.
sharply and quickly, and then rebounds significantly for books currently in the
Inpublic
a world
without
copyright,
one
would
expect
a fairly
smoothly
domain
initially
published
before
1923.
Since
age should
be a downward
factor that sloping
curve from
the
decade
2000–2010
to
the
decade
of
1800–1810
based
on
the
that
depresses availability, the most plausible conclusion from the data is assumption
that the
expiration become
of copyright
olderasworks
A corollary
hypothesis
also
works generally
lessmakes
popular
theyreappear.
age (and
therefore
are lessisdesirable
to
140
supported
by
the
data:
copyright
helps
make
books
disappear.
market). If age were the only factor, one would expect to see fewer titles available from each
successively
decade.
Instead,
the of
curve
declines
and100
quickly,
then
Heald foundolder
a similar
pattern
in the age
musical
workssharply
in the top
highestand
grossing
141
rebounds
for books currently in the public domain initially published before
films of allsignificantly
time.
1923. Since age should be a factor that depresses availability, the most plausible conclusion
Notes the
and questions:
from
data is that the expiration of copyright makes older works reappear. A corollary
hypothesis is also supported by the data: copyright helps make books disappear.
(1) It is very hard to think of a rational argument for the 95 year copyright term that applies
Age seems to be very relevant within both the subset of post-1923 books still under
to works made for hire or to the life of the author plus 70 years formula. If you were writing
copyright
subset
in the
public What
domain.
Note,
however, the
on a blank and
slate,the
what
term of
of pre-1923
copyright books
would you
propose?
theory
or perspective
on
steeper
decline
in
the
number
of
copyrighted
books
over
time:
2000–2010
(254 titles)
copyright law does your answer reflect?
to the 1990s (109 titles) to the 1980s (29 titles). This is not a gently sloping downward
curve! Publishers seem unwilling to sell their books on Amazon for more than a few
years after their initial publication. Section IV discusses business models, tax laws,
and case law that help explain why new editions of books disappear; copyright law
then deters their reappearance until the copyright expires. On the left side of Figure 2,
139 Paul J. Heald, How Copyright Keeps Works Disappeared, 11(4) Journal Of Empirical Legal Studies, 829 (2014).
before 1920, the decline presents a gentler time-sensitive downward sloping curve. The
140 Id. at 841.
difference
in the rate of decline between the public-domain subset and the copyrighted
141 Id.
subset demonstrates publishers’ preferences for marketing books that are less than 20
years old.
Figure 2 is, of course, somewhat misleading because it fails to account for the differ537 each year. Although the number of books
ence in the number of book titles published
published in each year for the last 200 years is not known, fewer books were undoubtedly
published in the 1800s, when type was set by hand, as compared with more efficient

15. COPYRIGHT AND INDUSTRIAL DESIGN

Different approaches to functional art
Figure 37 Screenshot of MoMA Website (March 8, 2018)

There is no question that copyright protects drawings, paintings, and sculptures. However,
when aesthetic and creative choices are embodied in utilitarian or useful articles, such as the
shape of a chair or the design of a piece of consumer electronics, the appropriate scope of
copyright protection is a point of contention.
Consider, for example, the Aeron office chair designed in 1992 by Don Chadwick and Bill
Stumpf. One of America’s best-selling and most recognizable chairs in the early late 1990’s
and 2000’s, the Aeron chair is also featured in the Museum of Modern Art’s permanent
collection. Is the chair a functional object, an artistic design, or both?
The European tradition of intellectual property protection draws a distinction between
“artistic and literary works of authorship” on the one hand and “industrial property” on the
other. Around the world, industrial designs are protected, variously, under sui generis design
right regimes, under as special types of patents, and/or under the umbrella of copyright.
Articles 25 and 26 of the TRIPs Agreement require the protection of industrial designs for a
minimum period of 10 years.
TRIPs Article 25(1)
Members shall provide for the protection of independently created industrial
designs that are new or original. Members may provide that designs are not new or
original if they do not significantly differ from known designs or combinations of
known design features. Members may provide that such protection shall not extend
to designs dictated essentially by technical or functional considerations.
TRIPs Article 26
(1) The owner of a protected industrial design shall have the right to prevent third
parties not having the owner’s consent from making, selling or importing articles

538

bearing or embodying a design which is a copy, or substantially a copy, of the
protected design, when such acts are undertaken for commercial purposes.
(3) The duration of protection available shall amount to at least 10 years.

The Berne Convention (Paris 1971) requires that member nations protect “every production
in the literary, scientific and artistic domain” as a literary work. However, Article 2(7) of the
Berne Convention leaves it up to member countries to determine the extent to which
copyright law should apply to “works of applied art and industrial designs and models, as
well as the conditions under which such works, designs and models shall be protected.” But
note that subsection 7 also provides that if a country has no special protection for designs
and models, they must be protected as artistic works.
Berne Convention (Paris 1971) Article 2
(1) The expression “literary and artistic works” shall include every production in the
literary, scientific and artistic domain, whatever may be the mode or form of its
expression …
(7) … it shall be a matter for legislation in the countries of the Union to determine
the extent of the application of their laws to works of applied art and industrial
designs and models, as well as the conditions under which such works, designs and
models shall be protected. Works protected in the country of origin solely as designs
and models shall be entitled in another country of the Union only to such special
protection as is granted in that country to designs and models; however, if no such
special protection is granted in that country, such works shall be protected as artistic
works.

Accordingly, the TRIPs Agreement and the Berne Convention require some type of
protection for applied art and industrial design, but they leave considerable discretion open
to member nations.

Design Patents in the United States
In the United States, the ornamental design of a functional item is eligible for a design patent
as long as it meets the threshold requirements of novelty and non-obviousness.
35 U.S. Code § 171 - Patents for designs
(a) Whoever invents any new, original and ornamental design for an article of
manufacture may obtain a patent therefor, subject to the conditions and
requirements of this title.
(b) The provisions of this title relating to patents for inventions shall apply to
patents for designs, except as otherwise provided.

Jewelry, furniture, the shapes of containers, and even computer icons have been patented as
designs. A design patent confers the exclusive right to make, use, and sell objects embodying
the design, regardless of whether the defendant’s product was copied or independently
conceived. However, design patents only last for 15 years from the date that they are issued.
There is obviously a great deal more to be said about design patents, but it will not be said
here.

539

Protecting industrial designs and other PGS works through copyright
PGS works
The subject matter of copyright as initially conceived, related to things written, not just
works of literature such as books, but also maps, charts, and tables. Over time, however, the
subject matter of copyright expanded to include works of authorship of a non-literary nature.
One important classification of copyright subject matter under the US Copyright Act of
1976 Act is “pictorial, graphic, and sculptural works,” usually abbreviated to PGS works.
This category includes maps and diagrams as well as drawings, paintings, and photographs. It
also includes three-dimensional objects, and “the design of a useful article,” but only in some
circumstances.
17 U.S. Code § 102(a)
Copyright protection subsists, in accordance with this title, in original works of
authorship fixed in any tangible medium of expression[.] Works of authorship
include the following categories: … (5) pictorial, graphic, and sculptural works;
17 U.S. Code § 101
“Pictorial, graphic, and sculptural works” include two-dimensional and threedimensional works of fine, graphic, and applied art, photographs, prints and art
reproductions, maps, globes, charts, diagrams, models, and technical drawings,
[including architectural plans]. … Such works shall include works of artistic
craftsmanship insofar as their form but not their mechanical or utilitarian aspects are
concerned; the design of a useful article, as defined in this section, shall be considered a
pictorial, graphic, or sculptural work only if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural features that can be identified separately
from, and are capable of existing independently of, the utilitarian aspects of the article.
(emphasis added)

Useful Articles and Conceptual Severability
The expression “useful article” is a term of art in copyright law with some profound
implications. Section 101 of the Copyright Act provides that PGS works include “works of
artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are
concerned.” It also provides that the design of a work that constitutes a “useful article” is
protectable as a PGS work “only if and only to the extent that, such design incorporates
pictorial, graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of, the utilitarian aspects of the article.”
The upshot of these provisions and the case law interpreting them is that a work of design is
protectable under copyright where its expressive “pictorial, graphic, or sculptural features”
are separable from its “utilitarian aspects.”
Where does this concept of useful articles and conceptual severability come from? A useful
place to start is with the Supreme Court’s opinion in Mazer v. Stein in 1954.
Mazer v. Stein, 347 U.S. 201 (1954)
Mr. Justice Reed delivered the opinion of the Court.

540

This case involves the validity of copyrights obtained by respondents for statuettes
of male and female dancing figures made of semivitreous china. The controversy
centers around the fact that although copyrighted as “works of art,” the statuettes
were intended for use and used as bases for table lamps, with electric wiring, sockets
and lamp shades attached.
Respondents are partners in the manufacture and sale of electric lamps. One of the
respondents created original works of sculpture in the form of human figures by
traditional clay-model technique. From this model, a production mold for casting
copies was made. The resulting statuettes, without any lamp components added,
were submitted by the respondents to the Copyright Office for registration as
“works of art” or reproductions thereof and certificates of registration issued.
Thereafter, the statuettes were sold in quantity throughout the country both as lamp
bases and as statuettes. The sales in lamp form accounted for all but an insignificant
portion of respondents’ sales.
Petitioners are partners and, like respondents, make and sell lamps. Without
authorization, they copied the statuettes, embodied them in lamps and sold them.
Petitioners, charged by the present complaint with infringement of respondents’
copyrights of reproductions of their works of art, seek here a reversal of the Court of
Appeals decree upholding the copyrights.
The case requires an answer, not as to a manufacturer’s right to register a lamp base
but as to an artist’s right to copyright a work of art intended to be reproduced for
lamp bases. Petitioners question the validity of a copyright of a work of art for “mass”
production. Their position is that a copyright does not cover industrial reproduction
of the protected article. Thus their reply brief states:
When an artist becomes a manufacturer or a designer for a manufacturer he is
subject to the limitations of design patents and deserves no more consideration than
any other manufacturer or designer.

It is not the right to copyright an article that could have utility under §§ 5 (g) and (h)
that petitioners oppose. … It is publication as a lamp and registration as a statue to
gain a monopoly in manufacture that they assert is such a misuse of copyright as to
make the registration invalid.
The successive acts, the legislative history of the 1909 Act and the practice of the
Copyright Office unite to show that “works of art” and “reproductions of works of
art” are terms that were intended by Congress to include the authority to copyright
these statuettes. Individual perception of the beautiful is too varied a power to
permit a narrow or rigid concept of art. As a standard we can hardly do better than
the words of the present Regulation, § 202.8, naming the things that appertain to the
arts. They must be original, that is, the author’s tangible expression of his ideas.142
But petitioners assert that congressional enactment of the design patent laws should
be interpreted as denying protection to artistic articles embodied or reproduced in
142 The Court is referring to the then applicable 37 CFR, 1949, § 202.8: “Works of art (Class G)—(a) In

General. This class includes works of artistic craftsmanship, in so far as their form but not their mechanical or
utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works
belonging to the fine arts, such as paintings, drawings and sculpture. . . .”

541

manufactured articles. … Their argument is that design patents require the critical
examination given patents to protect the public against monopoly. … Petitioner
urges that overlapping of patent and copyright legislation so as to give an author or
inventor a choice between patents and copyrights should not be permitted. We
assume petitioner takes the position that protection for a statuette for industrial use
can only be obtained by patent, if any protection can be given.
As we have held the statuettes here involved copyrightable, we need not decide the
question of their patentability. Though other courts have passed upon the issue as to
whether allowance by the election of the author or patentee of one bars a grant of
the other, we do not. We do hold that the patentability of the statuettes, fitted as
lamps or unfitted, does not bar copyright as works of art. Neither the Copyright
Statute nor any other says that because a thing is patentable it may not be
copyrighted. We should not so hold.
Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is
given only to the expression of the idea—not the idea itself. The copyright protects
originality rather than novelty or invention—conferring only “the sole right of
multiplying copies.” Absent copying there can be no infringement of copyright. Thus,
respondents may not exclude others from using statuettes of human figures in table
lamps; they may only prevent use of copies of their statuettes as such or as
incorporated in some other article. Regulation § 202.8 makes clear that artistic
articles are protected in “form but not their mechanical or utilitarian aspects.” The
dichotomy of protection for the aesthetic is not beauty and utility but art for the
copyright and the invention of original and ornamental design for design patents. We
find nothing in the copyright statute to support the argument that the intended use
or use in industry of an article eligible for copyright bars or invalidates its registration.
We do not read such a limitation into the copyright law.
… Nor do we think the subsequent registration of a work of art published as an
element in a manufactured article, is a misuse of the copyright. This is not different
from the registration of a statuette and its later embodiment in an industrial article.
Notes and questions
(1) Although the lamp base in Mazer v. Stein had features that might have made it more
appropriate for either utility patent or design patent protection, the Court held as a matter of
statutory interpretation that independent works of art may be copyrighted even if they are
incorporated into useful articles. Under the regulations in force at the time, copyright
extended to “works of artistic craftsmanship, in so far as their form but not their mechanical
or utilitarian aspects are concerned.” Mazer is usually read as authority for this distinction.
Although the term “conceptual separability” does not appear in Mazer, the idea is embedded
in the Court’s recognition that to be copyrightable, the statuettes “must be original, that is,
the author’s tangible expression of his ideas” even though they appeared on an otherwise
mundane utilitarian object.

542

The definition of “pictorial, graphic, and sculptural works” in the Copyright Act of
1976
The Supreme Court’s ruling in Mazer v. Stein led directly to the definition of “pictorial,
graphic, and sculptural works”in the Copyright Act of 1976. As noted above, Section 101
defines pictorial graphic and sculptural works to include two-dimensional and threedimensional works of fine, graphic and applied art, and more. The definition distinguishes
between the form and the “mechanical or utilitarian aspects” of works of artistic
craftsmanship and provides that the design of a useful article shall be considered a PGS
work “only if, and only to the extent that, such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are capable of existing independently of,
the utilitarian aspects of the article.”

Distinguishing Between Useful and Useless Articles
For a pictorial, graphical, or sculptural work to qualify as copyright subject matter it must
meet the thresholds of originality and the requirement of fixation like any other work of
authorship, but if it is a “useful article” it must also satisfy the requirement of “conceptual
separability.” However, not every PGS work is a useful article.
Section 101 also contains a definition of “useful article.”
17 U.S. Code § 101.
A “useful article” is an article having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey information. An article
that is normally a part of a useful article is considered a “useful article”.

Christopher Buccafusco and Mark Lemley, provide a nice summary of this issue.
Christopher Buccafusco & Mark Lemley Functionality Screens, 103 Virginia
Law Review, 1293, 1329–31 (2017)
Many PGS works will have no intrinsic utilitarian function. Although a painting may
serve to cover a hole in the wall or a sculpture may offer shade from the sun, we
would not treat them as being intrinsically utilitarian. These works are not useful
articles, are protectable to the extent that they are original, and, yet, any residual
functional aspects of the works will not receive protection. If, however, the work
does have an intrinsic utilitarian function, then it constitutes a useful article. For
example, clothing garments, automobiles, personal electronics, and furniture all have
some significant usefulness.
[If a work] constitutes a useful article, the next step of the analysis has been to apply
the separability criterion. As noted above, this requires the court to determine
whether pictorial, graphic, or sculptural features of the work can be identified
separately from, and are capable of existing independently of, the utilitarian aspects
of the article. Thus, the court must determine which parts of the work are purely
aesthetic features, which parts are purely utilitarian aspects, and which parts are
dual-nature, those that simultaneously exhibit aesthetics and functionality. Although
the nature of this inquiry is not entirely clear, the best reading of the statute treats as
“utilitarian aspects” any components of the work that do not “merely ... portray the
appearance of the article or ... convey information.”
Having analyzed the components of the work, the court can now apply the
separability criterion by asking whether the aesthetic features can be identified

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separately from, and are capable of existing independently of, the utilitarian aspects
of the article. That is, the court will ask whether the useful article exhibits any purely
aesthetic features. These features, and only these features, can receive copyright
protection. In some cases, this inquiry is easy, because the aesthetic features can be
physically removed from the useful article. For example, the sculpted hood
ornament on a Jaguar automobile can simply be removed from the car leaving both
a sculpture and a car. Here, the aesthetic features are said to be “physically
separable.”
In other cases, however, the aesthetic features cannot be removed from an article.
Nonetheless, courts typically hold that the aesthetic features of useful articles may
still be copyrightable if they are “conceptually separable.” Here, in particular, courts
and scholars have struggled to understand how to make this determination.
Although different formulations for the conceptual separability criterion exist, they
all tend to ask a similar question: is the work (or its separable features) primarily
aesthetic or utilitarian?

What is “conceptual separability” after Star Athletica v. Varsity Brands?
Before Star Athletica
In 2017, the Supreme Court announced its decision in a case involving the copyrightability
of designs for cheerleading uniforms, Star Athletica v. Varsity Brands; a case that squarely
presented the question of how the concept of conceptual separability should be understood
and applied. Since the 1976 Act came into effect, lower courts and the Copyright Office had
proposed a variety of tests for conceptual separability, including:
•
•
•
•

whether the aesthetic features and utilitarian aspects could exist side by side and be perceived
as fully realized, separate works;
whether the aesthetic features are primary to a subsidiary utilitarian function;
whether the aesthetic features can be identified as reflecting the designer’s artistic judgment
exercised independently of functional influences; and
whether there is a substantial likelihood that the aesthetic features would still be marketable
to a significant segment of the community if the work had no utilitarian function.143

The different formulations all appear to converge on a central question: how important are
the aesthetic features relative to the utilitarian aspects of the article?
It is helpful to consider how copyright has historically dealt with fashion before getting into
the details of the Supreme Court’s decision in Star Athletica. Two propositions with respect
to copyright in fashion design had been well settled prior to Star Athletica. First, printed
designs on clothes are copyrightable because the ornamentation is separable from the useful
aspects of the article. Second, items of clothing as such are generally not eligible for
copyright protection because they are considered useful articles in which any artistic element
is hopelessly merged with the items utilitarian function.
Compendium III of U.S. Copyright Office Practices, § 924.3(A)(1).
Clothing Designs

143 See 1-2 Nimmer on Copyright, § 2.08.

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Clothing such as shirts, dresses, pants, coats, shoes, and outerwear are not eligible
for copyright protection because they are considered useful articles. This is because
clothing provides utilitarian functions, such as warmth, protection, and modesty. As
a result, the U.S. Copyright Office will not register a claim in clothing or clothing
designs.

The plaintiff in the Star Athletica case, Varsity Brands, did not attempt to register the design
of a cheerleading uniform per se, it registered five different sets of two-dimensional artwork
to be embodied in a uniform. This is tricky move. A drawing of dress is not the dress, nor
even necessarily the design of the dress. A drawing that features on a dress could be a
pleasing visual image in its own right. However, applying Section 113(b), copyright in the
drawing should not extend protection to the creation of a three-dimensional dress that itself
would be a useful article.
17 U.S. Code § 113(b)
This title does not afford, to the owner of copyright in a work that portrays a useful
article as such, any greater or lesser rights with respect to the making, distribution,
or display of the useful article so portrayed than those afforded to such works under
[copyright law].

Pursuant to this section, an artist would be entitled to copyright in a drawing of a mousetrap,
but would have no claim against anyone who made an actual mousetrap based on her
drawing. In Star Athletica, Justice Breyer (in dissent) makes the same point with respect to a
drawing of shoes, Justice Ginsburg (concurring) on the other hand insists that the “designs
here in controversy are standalone pictorial and graphic works” and treats the fact that
designs were meant be reproduced on (arguably as) cheerleading uniforms as a mere curiosity.
Star Athletica LLC v. Varsity Brands Inc. 137 S.Ct. 1002 (2017)144
Justice Thomas delivered the opinion of the Court.
Congress has provided copyright protection for original works of art, but not for
industrial designs. The line between art and industrial design, however, is often
difficult to draw. This is particularly true when an industrial design incorporates
artistic elements. Congress has afforded limited protection for these artistic elements
by providing that “pictorial, graphic, or sculptural features” of the “design of a useful
article” are eligible for copyright protection as artistic works if those features “can be
identified separately from, and are capable of existing independently of, the utilitarian
aspects of the article.” 17 U.S.C. §101.
We granted certiorari to resolve widespread disagreement over the proper test for
implementing §101’s separate-identification and independent-existence requirements.
We hold that a feature incorporated into the design of a useful article is eligible for
copyright 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
protectable pictorial, graphic, or sculptural work—either on its own or fixed in some
other tangible medium of expression—if it were imagined separately from the useful
article into which it is incorporated. Because that test is satisfied in this case, we
affirm.
144 This edited version of the case is based on Eric E Johnson’s edit.

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Respondents Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit
Fashions & Supplies, Inc., design, make, and sell cheerleading uniforms.
Respondents have obtained or acquired more than 200 U.S. copyright registrations
for two-dimensional designs appearing on the surface of their uniforms and other
garments. These designs are primarily “combinations, positionings, and
arrangements of elements” that include “chevrons . . . , lines, curves, stripes, angles,
diagonals, inverted [chevrons], coloring, and shapes.” At issue in this case are
Designs 299A, 299B, 074, 078, and 0815. See infra.
Figure 38 Varsity’s Claimed Designs

Petitioner Star Athletica, L.L.C., also markets and sells cheerleading uniforms.
Respondents sued petitioner for infringing their copyrights in the five designs.
The Copyright Act establishes a special rule for copyrighting a pictorial, graphic, or
sculptural work incorporated into a “useful article,” which is defined as “an article
having an intrinsic utilitarian function that is not merely to portray the appearance of
the article or to convey information.” The statute does not protect useful articles as
such. Rather, “the design of a useful article” is “considered a pictorial, graphical, or
sculptural work only if, and only to the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified separately from, and are capable
of existing independently of, the utilitarian aspects of the article.” In this case, our
task is to determine whether the arrangements of lines, chevrons, and colorful shapes
546

appearing on the surface of respondents’ cheerleading uniforms are eligible for
copyright protection as separable features of the design of those cheerleading
uniforms.
We must decide when a feature incorporated into a useful article “can be identified
separately from” and is “capable of existing independently of” “the utilitarian aspects”
of the article. This is not a free-ranging search for the best copyright policy, but
rather “depends solely on statutory interpretation.” “The controlling principle in this
case is the basic and unexceptional rule that courts must give effect to the clear
meaning of statutes as written.” We thus begin and end our inquiry with the text,
giving each word its “ordinary, contemporary, common meaning.”
The statute provides that a pictorial, graphic, or sculptural feature incorporated into
the design of a useful article is eligible for copyright protection if it (1) “can be
identified separately from,” and (2) is “capable of existing independently of, the
utilitarian aspects of the article.” §101. The first requirement—separate
identification—is not onerous. The decisionmaker need only be able to look at the
useful article and spot some two- or three-dimensional element that appears to have
pictorial, graphic, or sculptural qualities.
The independent-existence requirement is ordinarily more difficult to satisfy. The
decisionmaker must determine that the separately identified feature has the capacity
to exist apart from the utilitarian aspects of the article. In other words, the feature
must be able to exist as its own pictorial, graphic, or sculptural work as defined in
§101 once it is imagined apart from the useful article. If the feature is not capable of
existing as a pictorial, graphic, or sculptural work once separated from the useful
article, then it was not a pictorial, graphic, or sculptural feature of that article, but
rather one of its utilitarian aspects.
Of course, to qualify as a pictorial, graphic, or sculptural work on its own, the feature
cannot itself be a useful article or “[a]n article that is normally a part of a useful
article” (which is itself considered a useful article). §101. Nor could someone claim a
copyright in a useful article merely by creating a replica of that article in some other
medium—for example, a cardboard model of a car. Although the replica could itself
be copyrightable, it would not give rise to any rights in the useful article that inspired
it.
In sum, a feature of the design of a useful article is eligible for copyright if, when
identified and imagined apart from the useful article, it would qualify as a pictorial,
graphic, or sculptural work either on its own or when fixed in some other tangible
medium.
Applying this test to the surface decorations on the cheerleading uniforms is
straightforward. First, one can identify the decorations as features having pictorial,
graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes,
and chevrons on the surface of the cheerleading uniforms were separated from the
uniform and applied in another medium—for example, on a painter’s canvas—they
would qualify as “two-dimensional … works of … art,” §101. And imaginatively
removing the surface decorations from the uniforms and applying them in another
medium would not replicate the uniform itself. Indeed, respondents have applied the
designs in this case to other media of expression—different types of clothing—
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without replicating the uniform. The decorations are therefore separable from the
uniforms and eligible for copyright protection.1
Footnote 1: We do not today hold that the surface decorations are copyrightable. We express no
opinion on whether these works are sufficiently original to qualify for copyright protection, see Feist
Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340–359 (1991), or on whether any other
prerequisite of a valid copyright has been satisfied.

The dissent argues that the designs are not separable because imaginatively removing
them from the uniforms and placing them in some other medium of expression—a
canvas, for example—would create “pictures of cheerleader uniforms.” Petitioner
similarly argues that the decorations cannot be copyrighted because, even when
extracted from the useful article, they retain the outline of a cheerleading uniform.
This is not a bar to copyright. Just as two-dimensional fine art corresponds to the
shape of the canvas on which it is painted, two-dimensional applied art correlates to
the contours of the article on which it is applied. A fresco painted on a wall, ceiling
panel, or dome would not lose copyright protection, for example, simply because it
was designed to track the dimensions of the surface on which it was painted. Or
consider, for example, a design etched or painted on the surface of a guitar. If that
entire design is imaginatively removed from the guitar’s surface and placed on an
album cover, it would still resemble the shape of a guitar. But the image on the cover
does not “replicate” 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
it was applied. The statute protects that work of art whether it is first drawn on the
album cover and then applied to the guitar’s surface, or vice versa. Failing to protect
that art would create an anomaly: It would extend protection to two-dimensional
designs that cover a part of a useful article but would not protect the same design if
it covered the entire article. The statute does not support that distinction, nor can it
be reconciled with the dissent’s recognition that “artwork printed on a t-shirt” could
be protected.
To be clear, the only feature of the cheerleading uniform eligible for a copyright in
this case is the two-dimensional work of art fixed in the tangible medium of the
uniform fabric. Even if respondents ultimately succeed in establishing a valid
copyright in the surface decorations at issue here, respondents have no right to
prohibit any person from manufacturing a cheerleading uniform of identical shape,
cut, and dimensions to the ones on which the decorations in this case appear. They
may prohibit only the reproduction of the surface designs in any tangible medium of
expression—a uniform or otherwise.2
Footnote 2: The dissent suggests that our test would lead to the copyrighting of shovels. But a shovel,
like a cheerleading uniform, even if displayed in an art gallery, is “an article having an intrinsic
utilitarian function that is not merely to portray the appearance of the article or to convey
information.” 17 U.S.C. §101. It therefore cannot be copyrighted. A drawing of a shovel could, of
course, be copyrighted. And, if the shovel included any artistic features that could be perceived as art
apart from the shovel, and which would qualify as protectable pictorial, graphic, or sculptural works
on their own or in another medium, they too could be copyrighted. But a shovel as a shovel cannot.

According to petitioner, if a feature of a useful article “advances the utility of the
article,” then it is categorically beyond the scope of copyright. The designs here are
not protected, it argues, because they are necessary to two of the uniforms’ “inherent,

548

essential, or natural functions”—identifying the wearer as a cheerleader and
enhancing the wearer’s physical appearance. Because the uniforms would not be
equally useful without the designs, petitioner contends that the designs are
inseparable from the “utilitarian aspects” of the uniform.
The Government suggests that the appropriate test is whether the useful article with
the artistic feature removed would “remain similarly useful.” In the view of the
United States, however, a plain white cheerleading uniform is “similarly useful” to
uniforms with respondents’ designs.
The debate over the relative utility of a plain white cheerleading uniform is
unnecessary. The focus of the separability inquiry is on the extracted feature and not
on any aspects of the useful article that remain after the imaginary extraction. The
statute does not require the decisionmaker to imagine a fully functioning useful
article without the artistic feature. Instead, it requires that the separated feature
qualify as a nonuseful pictorial, graphic, or sculptural work on its own.
Of course, because the removed feature may not be a useful article—as it would then
not qualify as a pictorial, graphic, or sculptural work—there necessarily would be
some aspects of the original useful article “left behind” if the feature were
conceptually removed. But the statute does not require the imagined remainder to be
a fully functioning useful article at all, much less an equally useful one.
Because we reject the view that a useful article must remain after the artistic feature
has been imaginatively separated from the article, we necessarily abandon the
distinction between “physical” and “conceptual” separability, which some courts and
commentators have adopted based on the Copyright Act’s legislative history.
The statutory text indicates that separability is a conceptual undertaking. Because
separability does not require the underlying useful article to remain, the physicalconceptual distinction is unnecessary.
Petitioner next argues that we should incorporate two “objective” components into
our test to provide guidance to the lower courts: (1) “whether the design elements
can be identified as reflecting the designer’s artistic judgment exercised
independently of functional influence,” and (2) whether “there is [a] substantial
likelihood that the pictorial, graphic, or sculptural feature would still be marketable to
some significant segment of the community without its utilitarian function.”
We reject this argument because neither consideration is grounded in the text of the
statute. The statute’s text makes clear that our inquiry is limited to how the article
and feature are perceived, not how or why they were designed. See Brandir Int’l, Inc. v.
Cascade Pacific Lumber Co., 834 F. 2d 1142, 1152 (CA2 1987) (Winter, J., concurring in
part and dissenting in part) (The statute “expressly states that the legal test is how the
final article is perceived, not how it was developed through various stages”).
The same is true of marketability. Nothing in the statute suggests that
copyrightability depends on market surveys. Moreover, asking whether some
segment of the market would be interested in a given work threatens to prize popular
art over other forms, or to substitute judicial aesthetic preferences for the policy
choices embodied in the Copyright Act.

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Finally, petitioner argues that allowing the surface decorations to qualify as a “work
of authorship” is inconsistent with Congress’ intent to entirely exclude industrial
design from copyright. Petitioner notes that Congress refused to pass a provision
that would have provided limited copyright protection for industrial designs,
including clothing, when it enacted the 1976 Act and that it has enacted laws
protecting designs for specific useful articles—semiconductor chips and boat hulls—
while declining to enact other industrial design statutes. From this history of failed
legislation petitioner reasons that Congress intends to channel intellectual property
claims for industrial design into design patents. It therefore urges us to approach this
question with a presumption against copyrightability
We do not share petitioner’s concern. As an initial matter, “congressional inaction
lacks persuasive significance” in most circumstances. Moreover, we have long held
that design patent and copyright are not mutually exclusive. In any event, as
explained above, our test does not render the shape, cut, and physical dimensions of
the cheerleading uniforms eligible for copyright protection.
Justice Ginsburg, concurring in the judgment.
I concur in the Court’s judgment but not in its opinion. Unlike the majority, I would
not take up in this case the separability test appropriate under 17 U.S.C. §101.
Consideration of that test is unwarranted because the designs at issue are not designs
of useful articles. Instead, the designs are themselves copyrightable pictorial or
graphic works reproduced on useful articles.
The designs here in controversy are standalone pictorial and graphic works that
respondents Varsity Brands reproduce on cheerleading uniforms. Varsity’s designs
first appeared as pictorial and graphic works that Varsity’s design team sketched on
paper. Varsity then sought copyright protection for those two-dimensional designs,
not for cheerleading costumes; its registration statements claimed “2-Dimensional
artwork” and “fabric design (artwork).” Varsity next reproduced its two-dimensional
graphic designs on cheerleading uniforms, also on other garments, including T-shirts
and jackets.
In short, Varsity’s designs are standalone PGS works that may gain copyright
protection as such, including the exclusive right to reproduce the designs on useful
articles.
Justice Breyer, with whom Justice Kennedy joins, dissenting.
I agree with much in the Court’s opinion. But I do not agree that the designs that
Varsity Brands, Inc., submitted to the Copyright Office are eligible for copyright
protection. Even applying the majority’s test, the designs cannot “be perceived as …
two- or three-dimensional works of art separate from the useful article.”
Look at the designs that Varsity submitted to the Copyright Office. You will see only
pictures of cheerleader uniforms. And cheerleader uniforms are useful articles. A
picture of the relevant design features, whether separately “perceived” on paper or in
the imagination, is a picture of, and thereby “replicate[s],” the underlying useful
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article of which they are a part. Hence the design features that Varsity seeks to
protect are not “capable of existing independently [of] the utilitarian aspects of the
article.” 17 U.S.C. §101.
The relevant statutory provision says that the “design of a useful article” is
copyrightable “only if, and only to the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified separately from, and are capable
of existing independently of, the utilitarian aspects of the article.” But what, we must
ask, do the words “identified separately” mean? The most direct, helpful aspect of
the Court’s opinion answers this question by stating:
Nor could someone claim a copyright in a useful article merely by creating a replica
of that article in some other medium—for example, a cardboard model of a car.
Although the replica could itself be copyright-able, it would not give rise to any
rights in the useful article that inspired it.

Exactly so. These words help explain the Court’s statement that a copyrightable
work of art must be “perceived as a two- or three-dimensional work of art separate
from the useful article.” They help clarify the concept of separateness. They are
consistent with Congress’ own expressed intent.
Consider, for example, the explanation that the House Report for the Copyright Act
of 1976 provides. It says:
“Unless the shape of an automobile, airplane, ladies’ dress, food processor,
television set, or any other industrial product contains some element that, physically or
conceptually, can be identified as separable from the utilitarian aspects of that article,
the design would not be copyrighted … .” House Report at 55 (emphasis added).

These words suggest two exercises, one physical, one mental. Can the design features
(the picture, the graphic, the sculpture) be physically removed from the article (and
considered separately), all the while leaving the fully functioning utilitarian object in
place? If not, can one nonetheless conceive of the design features separately without
replicating a picture of the utilitarian object? If the answer to either of these
questions is “yes,” then the design is eligible for copyright protection. Otherwise, it is
not.
An example will help. Imagine a lamp with a circular marble base, a vertical 10-inch
tall brass rod (containing wires) inserted off center on the base, a light bulb fixture
emerging from the top of the brass rod, and a lampshade sitting on top. In front of
the brass rod a porcelain Siamese cat sits on the base facing outward. Obviously, the
Siamese cat is physically separate from the lamp, as it could be easily removed while
leaving both cat and lamp intact. And, assuming it otherwise qualifies, the designed
cat is eligible for copyright protection.
Now suppose there is no long brass rod; instead the cat sits in the middle of the base
and the wires run up through the cat to the bulbs. The cat is not physically separate
from the lamp, as the reality of the lamp’s construction is such that an effort to
physically separate the cat and lamp will destroy both cat and lamp. The two are
integrated into a single functional object, like the similar configuration of the ballet
dancer statuettes that formed the lamp bases at issue in Mazer v. Stein, 347 U.S. 201
(1954). But we can easily imagine the cat on its own, as did Congress when
conceptualizing the ballet dancer. See House Report, at 55 (the statuette in Mazer
551

was “incorporated into a product without losing its ability to exist independently as a
work of art”). In doing so, we do not create a mental picture of a lamp (or, in the
Court’s words, a “replica” of the lamp), which is a useful article. We simply perceive
the cat separately, as a small cat figurine that could be a copyrightable design work
standing alone that does not replicate the lamp. Hence the cat is conceptually
separate from the utilitarian article that is the lamp. The pair of lamps pictured at
Figures 1 and 2 illustrate this principle.
Justice Breyer’s Figures 1 and 2 (Cat Lamps)

By way of contrast, Van Gogh’s painting of a pair of old shoes, though beautifully
executed and copyrightable as a painting, would not qualify for a shoe design
copyright. See fig. 3. Courts have similarly denied copyright protection to objects
that begin as three-dimensional designs, such as measuring spoons shaped like hearttipped arrows, candleholders shaped like sailboats, and wire spokes on a wheel cover.
None of these designs could qualify for copyright protection that would prevent
others from selling spoons, candleholders, or wheel covers with the same design.
Why not? Because in each case the design is not separable from the utilitarian aspects
of the object to which it relates. The designs cannot be physically separated because
they themselves make up the shape of the spoon, candleholders, or wheel covers of
which they are a part. One cannot easily imagine or otherwise conceptualize the
design of the spoons or the candleholders or the shoes without that picture, or image,
or replica being a picture of spoons, or candleholders, or wheel covers, or shoes. The
designs necessarily bring along the underlying utilitarian object. Hence each design is
not conceptually separable from the physical useful object.

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Justice Breyer’s Figure 3

To repeat: A separable design feature must be “capable of existing independently” of
the useful article as a separate artistic work that is not itself the useful article. If the
claimed feature could be extracted without replicating the useful article of which it is
a part, and the result would be a copyrightable artistic work standing alone, then
there is a separable design. But if extracting the claimed features would necessarily
bring along the underlying useful article, the design is not separable from the useful
article. In many or most cases, to decide whether a design or artistic feature of a
useful article is conceptually separate from the article itself, it is enough to imagine
the feature on its own and ask, “Have I created a picture of a (useful part of a) useful
article?” If so, the design is not separable from the useful article. If not, it is.
In referring to imagined pictures and the like, I am not speaking technically. I am
simply trying to explain an intuitive idea of what separation is about, as well as how I
understand the majority’s opinion. So understood, the opinion puts design
copyrights in their rightful place. The law has long recognized that drawings or
photographs of real world objects are copyrightable as drawings or photographs, but
the copyright does not give protection against others making the underlying useful
objects. That is why a copyright on Van Gogh’s painting would prevent others from
reproducing that painting, but it would not prevent others from reproducing and
selling the comfortable old shoes that the painting depicts.
To ask this kind of simple question—does the design picture the useful article?—will
not provide an answer in every case, for there will be cases where it is difficult to say
whether a picture of the design is, or is not, also a picture of the useful article. But
the question will avoid courts focusing primarily upon what I believe is an unhelpful
feature of the inquiry, namely, whether the design can be imagined as a “two- or
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three-dimensional work of art.” That is because virtually any industrial design can be
thought of separately as a “work of art”: Just imagine a frame surrounding the design,
or its being placed in a gallery. Consider Marcel Duchamp’s “readymades” series, the
functional mass-produced objects he designated as art. See fig. 4, [picture of shovel].
What design features could not be imaginatively reproduced on a painter’s canvas?
Justice Breyer’s Figure 4

The conceptual approach that I have described reflects Congress’ answer to a
problem that is primarily practical and economic. Years ago Lord Macaulay drew
attention to the problem when he described copyright in books as a “tax on readers
for the purpose of giving a bounty to writers.” He called attention to the main
benefit of copyright protection, which is to provide an incentive to produce
copyrightable works and thereby “promote the Progress of Science and useful Arts.”
But Macaulay also made clear that copyright protection imposes costs. Those costs
include the higher prices that can accompany the grant of a copyright monopoly.
They also can include (for those wishing to display, sell, or perform a design, film,
work of art, or piece of music, for example) the costs of discovering whether there
are previous copyrights, of contacting copyright holders, and of securing permission
to copy. Sometimes, as Thomas Jefferson wrote to James Madison, costs can
outweigh “the benefit even of limited monopolies.” And that is particularly true in
light of the fact that Congress has extended the “limited Times” of protection, from
the “14 years” of Jefferson’s day to potentially more than a century today.
The Constitution grants Congress primary responsibility for assessing comparative
costs and benefits and drawing copyright’s statutory lines. Courts must respect those
lines and not grant copyright protection where Congress has decided not to do so.
And it is clear that Congress has not extended broad copyright protection to the
fashion design industry.

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Congress’ decision not to grant full copyright protection to the fashion industry has
not left the industry without protection. Patent design protection is available. A
maker of clothing can obtain trademark protection under the Lanham Act for
signature features of the clothing. And a designer who creates an original textile
design can receive copyright protection for that pattern as placed, for example, on a
bolt of cloth, or anything made with that cloth.
The fashion industry has thrived against this backdrop, and designers have
contributed immeasurably to artistic and personal self-expression through clothing.
But a decision by this Court to grant protection to the design of a garment would
grant the designer protection that Congress refused to provide. It would risk
increased prices and unforeseeable disruption in the clothing industry, which in the
United States alone encompasses nearly $370 billion in annual spending and 1.8
million jobs. That is why I believe it important to emphasize those parts of the
Court’s opinion that limit the scope of its interpretation. That language, as I have
said, makes clear that one may not “claim a copyright in a useful article merely by
creating a replica of that article in some other medium,” which “would not give rise
to any rights in the useful article that inspired it.”
If we ask the “separateness” question correctly, the answer here is not difficult to
find. The majority’s opinion, in its appendix, depicts the cheerleader dress designs
that Varsity submitted to the Copyright Office. Can the design features in Varsity’s
pictures exist separately from the utilitarian aspects of a dress? Can we extract those
features as copyrightable design works standing alone, without bringing along, via
picture or design, the dresses of which they constitute a part?
Consider designs 074, 078, and 0815. They certainly look like cheerleader uniforms.
That is to say, they look like pictures of cheerleader uniforms, just like Van Gogh’s
old shoes look like shoes. I do not see how one could see them otherwise. Designs
299A and 2999B present slightly closer questions. They omit some of the dresslike
context that the other designs possess. But the necklines, the sleeves, and the cut of
the skirt suggest that they too are pictures of dresses. Looking at all five of Varsity’s
pictures, I do not see how one could conceptualize the design features in a way that
does not picture, not just artistic designs, but dresses as well.
Were I to accept the majority’s invitation to “imaginatively remove” the chevrons
and stripes as they are arranged on the neckline, waistline, sleeves, and skirt of each
uniform, and apply them on a “painter’s canvas,” that painting would be of a
cheerleader’s dress. The esthetic elements on which Varsity seeks protection exist
only as part of the uniform design—there is nothing to separate out but for dressshaped lines that replicate the cut and style of the uniforms. Hence, each design is
not physically separate, nor is it conceptually separate, from the useful article it
depicts, namely, a cheerleader’s dress. They cannot be copyrighted.
Varsity, of course, could have sought a design patent for its designs. Or, it could
have sought a copyright on a textile design, even one with a similar theme of
chevrons and lines.
But that is not the nature of Varsity’s copyright claim. It has instead claimed
ownership of the particular “treatment and arrangement” of the chevrons and lines
of the design as they appear at the neckline, waist, skirt, sleeves, and overall cut of
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each uniform. The majority imagines that Varsity submitted something different—
that is, only the surface decorations of chevrons and stripes, as in a textile design. As
the majority sees it, Varsity’s copyright claim would be the same had it submitted a
plain rectangular space depicting chevrons and stripes, like swaths from a bolt of
fabric. But considered on their own, the simple stripes are plainly unoriginal. Varsity,
then, seeks to do indirectly what it cannot do directly: bring along the design and cut
of the dresses by seeking to protect surface decorations whose “treatment and
arrangement” are coextensive with that design and cut. As Varsity would have it, it
would prevent its competitors from making useful three-dimensional cheerleader
uniforms by submitting plainly unoriginal chevrons and stripes as cut and arranged
on a useful article. But with that cut and arrangement, the resulting pictures on which
Varsity seeks protection do not simply depict designs. They depict clothing. They
depict the useful articles of which the designs are inextricable parts. And Varsity
cannot obtain copyright protection that would give them the power to prevent
others from making those useful uniforms, any more than Van Gogh can copyright
comfortable old shoes by painting their likeness.
I fear that, in looking past the three-dimensional design inherent in Varsity’s claim by
treating it as if it were no more than a design for a bolt of cloth, the majority has lost
sight of its own important limiting principle. One may not “claim a copyright in a
useful article merely by creating a replica of that article in some other medium,” such
as in a picture. That is to say, one cannot obtain a copyright that would give its
holder “any rights in the useful article that inspired it.”
With respect, I dissent.
Questions & Comments
(1) In Star Athletica, L.L.C. v. Varsity Brands 137 S. Ct. 1002 (2017), the Supreme Court
considered whether design elements on cheerleading uniforms (namely, the arrangement of
colors, stripes, and chevrons on the fabric) were eligible for copyright protection. The
majority found that such designs were potentially copyrightable despite the fact that they
were part of a useful article. In reaching this conclusion, the majority invoked a two-part test
to determine the copyrightability of a useful article. Justice Thomas, writing for the Supreme
Court majority held (at 1014–15) that
… a feature incorporated into the design of a useful article is eligible for copyright
protection only if the feature (1) can be perceived as a two or three-dimensional
work of art separate from the useful article and (2) would qualify as a protectable
pictorial, graphic, or sculptural work—either on its own or fixed in some other
tangible medium of expression—if it were imagined separately from the useful article into
which it is incorporated.” (emphasis added)

In addition to setting out the two-part test, Justice Thomas also explicitly abrogated a
number of other tests, including the physical separability test and the designer’s perspective
test.
Applying its two-part test to the surface decorations on the cheerleading uniforms, the
majority found that the surface decorations had pictorial, graphic, or sculptural qualities and
thus met the first prong. Moving on to the second prong, the Court found that if the
arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading
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uniforms were separated from the uniform and applied to another medium they would
qualify as two-dimensional works of art (provided that they met the originality threshold in
Feist, which the Court expressly declined to commit to). Moreover, removing the surface
decorations and applying them to a different medium did not replicate the uniform itself.
Consequently, the majority found the decorations separable from the uniforms and eligible
for copyright protection.
(2) Is it fair to say that Justice Breyer agreed with the majority’s test, but not its application?
(3) Other than shovels, what exactly is excluded under the majority’s approach to the useful
article doctrine?
(4) How should we apply Section 113(b) after Star Athletica? In DC Comics v. Towle, 802 F.3d
1012 (9th Cir. 2015), the court ruled that copyright in the Batmobile as visually depicted in
Batman comic books, television programs, and movies, was violated by a manufacturer of
replica kits that attached to actual automobiles to make them look like the Batmobile. The
court did not consider whether the copyright in the depiction of a useful article like an
automobile could extend protection to the production of actual car parts. Should it have?
(5) Is clothing on a doll protectable under copyright law? See Mattel, Inc. v. MGA
Entertainment, Inc., 616 F.3d 904, 916 n.12 (9th Cir. 2010).
(6) In Inhale, Inc. v. Starbuzz Tobacco, Inc., 2017 WL 4163990 (C.D. Cal. May 8, 2017), the
district court noted that plaintiff’s “water container at issue here is no Noguchi Table” and
helpfully included the following image.
Figure 5 The Noguchi Table, Isamo Noguchi

The first version of what became the iconic Noguchi Table was designed by Isamo Noguchi in
1939. The version of the table still current today was commissioned by the then president of
the Museum of Modern Art in New York City, the original remains in the museum’s
permanent collection. Is the Noguchi Table copyrightable under Star Athletica?
Noguchi was born in Los Angeles to an American mother and a Japanese father in 1904. He
was placed in an internment camp in Arizona during WWII.
(7) We all know that judges in copyright cases are not supposed to rest their decisions on
their personal views of aesthetic quality, does Star Athletica give courts or the Copyright
Office the analytical tools to do anything else?

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(8) Mala Chatterjee, proposes a different test:
Mala Chatterjee, Conceptual Separability As Conceivability: A Philosophical
Analysis Of The Useful Articles Doctrine, 93 NYU LAW REVIEW (2018)
“When you conceive of the article as lacking the design element in question, is the
article you imagine functionally identical to the actual article?” If the answer to this
question is yes, then we can conclude that the design element is conceptually
separable from the article’s utilitarian aspects; if not, then the element has failed the
test, and it is not entitled to copyright protection.

Is this an improvement? Can Chatterjee’s approach be reconciled with Justice Thomas’
majority opinion (at 1013):
The focus of the separability inquiry is on the extracted feature and not on any aspects of the
useful article that remain after the imaginary extraction. The statute does not require the
decisionmaker to imagine a fully functioning useful article without the artistic feature.

Did Star Athletica change the law?
How does Star Athletica change the law? One view is that Star Athletica is a significant change
to copyright law. For example, Christopher Buccafusco and Mark Lemley argue that the
Court’s opinion “eliminates the threshold Congress imposed between useful and non-useful
articles, and it alters the treatment of dual-nature features, which are now potentially
protectable.” They also contend that as a result of the second prong of the Star Athletica test,
“PGS features are protectable simply if they can be depicted in some medium other than
that of a useful article.”145
Christopher Buccafusco & Mark A. Lemley, Functionality Screens, 103
Virginia Law Review, 1293, 1334–36 (2017)
While much of the Court’s opinion remains mysterious--including how to determine
whether a feature is functional or not, or even whether a court should engage in that
inquiry at all--its variation from accepted doctrine is fairly clear. For example, the
Court rejected the notion that only “solely artistic features” of a useful article are
protectable. The Court explained that a feature could be considered separable “even
if it makes [the] article more useful.” Once the PGS features are imagined away
from the useful article, there is no requirement, according to the opinion, that what
is “‘left behind’ ... be a fully functioning useful article at all, much less an equally
useful one.”
Because Star Athletica does not consider the language of Section 101 requiring
protection only for non-functional aspects of the design, it is possible that courts
will treat the new conceptual separability test only as a first step in the functionality
inquiry. While virtually everything will be separable under the Court’s new test,
courts may--indeed, should--nonetheless filter out the functional aspects of those
works in a next step, as the statute commands.
Thus, the most charitable reading of the Court’s opinion is that it flips copyright
law’s treatment of dual-nature features of PGS works. Where previously only those
features that were purely non-functional were protectable, after Star Athletica, only
those aspects that are purely functional will be filtered out.
145 Christopher Buccafusco & Mark A. Lemley, Functionality Screens, 103 Virginia Law Review, 1293, 1332–1334

(2017).

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… a second possibility for rationalizing Star Athletica with the rest of copyright law is
that while there won’t be much, if any, filtering under the conceptual separability
rubric, courts can and will filter out functional elements on other grounds, like the
idea-expression dichotomy and the exclusion of “processes” and “systems” under
Section 102(b).

Another view is that Star Athletica really does not say anything at all. Consider the following
law review note:
Copyright Act of 1976-Useful Articles-Star Athletica, L.L.C. v. Varsity Brands,
Inc., 131 Harvard Law Review, 363, 370–71 (2017):
Additionally, the Court may have invited various interpretations of the opinion by
not providing more guidance on how the text of § 101 should be construed. The
Court’s test does little more than restate the statute’s language.
“Features that can be identified separately” becomes “features [that] can be
perceived as a ... separate” work. “Features that ... are capable of existing
independently” becomes “features ... [that] would qualify as a protectable ... work.”
Paraphrases are ordinarily helpful, as they provide other ways of thinking through a
question. But the number of approaches developed by lower courts renders it
“obvious” that there was no settled way to understand the statute’s text, how it
should be applied, or under what standard. A gloss on the text will likely not resolve
those questions.

Star Athletica at the Copyright Office
To recap, in Star Athletica, the majority held that a feature incorporated into the design of a
useful article is eligible for copyright protection only if (1) the feature can be perceived as a
two or three-dimensional work of art separate from the useful article—i.e. “separateidentification” requirement; and (2) the feature would qualify as a protectable pictorial,
graphic, or sculptural work if it were imagined separately from the useful article into which it
is incorporated—i.e. the “independent-existence” requirement.

Colosseum Flatware Artwork
In a recent decision the Review Board of the United States Copyright Office agreed that the
work titled “Colosseum Flatware Artwork,” pictured below, met the “separate-identification”
requirement of the conceptual separability test, but failed the “independent-existence”
requirement.146

See, Second Request for Reconsideration for Refusal to Register Colosseum Flatware Artwork;
Correspondence ID: 1-3H7MI85; SR 1-6342140861
146

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Figure 39 Colosseum Flatware Artwork

The Board concluded that the separable features did not qualify as a protectable pictorial,
graphic or sculptural work because they lacked, individually or in combination, the requisite
minimum degree of creativity required for copyright protection.
In this decision, the Board analyzed the design features of the spoon separate from its
intrinsic spoon shape and function and concluded that those remaining features—evenly
spaced stripes, a sphere and basic lines—were standard geometric shapes that are not
copyrightable individually or in the “workaday combination” presented.
Kitchen Helper Children’s Stool
In assessing the copyrightability of the Kitchen Helper Children’s Stool, pictured below, the
Board concluded that the only aspect of the design that made it through the separateidentification requirement were “the geometric cutouts—four stars, two circles, two squares,
and a half-moon.”147
Figure 40 Kitchen Helper Children’s Stool

Second Request for Reconsideration for Refusal to Register Kitchen Helper Children’s Stool
(Correspondence ID: 1-30JN911, SR # 1-6843395721)
147

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Once the work is reduced down to those basic geometric features, the conclusion that it
failed the Feist threshold in under the “independent-existence” requirement was inevitable.
The Board concluded that:
… neither the Work’s separable individual elements nor the combination of those
elements meet this threshold. The individual separable elements—four stars, two
circles, two squares, and a half-moon—are common and familiar shapes, and, as
such, are not copyrightable. Moreover, viewed as a whole, the Board finds that the
selection, coordination, and arrangement of these shapes are insufficient to render
the Work sufficiently creative and original. Here, the arrangement of the stars,
circles, and squares are evenly spaced and create a mirror image on either side of the
stool. The shapes are each the same size and contain no variation. The half-moon is
vertically centered below the step. While a sufficiently creative arrangement of
shapes may provide a basis for copyrightability, a mirror image arrangement of
evenly spaced shapes amounts to a garden variety pattern that falls short of the
Copyright Act’s requirements for protection.

Yeezy Boost
In contrast, in another decision the Copyright Office overturned an examination decision
refusing to register “2-D artwork and sculpture claims” for two pairs of sneakers, the Yeezy
Boost 350 Version 1 and Yeezy Boost 350 Version 2.
In Adidas’ first request for reconsideration, the Copyright Office took the view that the
works were useful articles. Applying the useful article doctrine, the Office argued that
although the works contained separable designs, “those designs did not meet the originality
requirement as they consisted of simple shapes arranged into common, expected patterns in
very simple color schemes.”
However, after Adidas’ second request, the Copyright Office Review Board applied the law
as follows:
… The Board agrees that the Works can be perceived as two- or three-dimensional
works of art separate from the useful article, that is, the sneaker. Thus, the only
remaining issue is whether the Works are protectable as original works of authorship
if imagined separately from the sneaker.
The Board believes that the Works contain a sufficient amount of original and
creative two- and three-dimensional authorship for registration. Our decision to
register the Works is based on the low standard for copyrightability articulated in
Feist Publications v. Rural Telephone Service Co., 499 U.S. 340 (1991). But the Board’s
decision relates only to the Works as a whole, and does not extend individually to
any of the standard and common elements depicted in the Works such as lines,
stripes, or swirl designs. … When reviewed as a whole, the Works reflect that the
common constituent shapes were “combined in a distinctive manner indicating
some ingenuity.” Atari Games Corp. v. Oman, 888 F.2d 878, 883 (D.C. Cir. 1989).
Thus, the Board believes that the Works contain a sufficient amount of original and
creative authorship.148

Re: Second Request for Reconsideration for Refusal to Register Yeezy Boost 350 Version 1,
Yeezy Boost 350 Version 2
148

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Joseph Petersen, Esq.
May 8, 2019
Figure 41 Various Illustrations
of the Yeezy Boost 350 Version 1 Included
in the Copyright Office’s
Kilpatrick Townsend & Stockton, LLP
Joseph
Petersen,
Esq.
May
8,
2019
Letter
Granting
Adidas’
Second
Request
for
Reconsideration
Kilpatrick Townsend & Stockton, LLP
Appendix A

Appendix A

Yeezy Boost 350 Version 1

Yeezy Boost 350 Version 1

Joseph Petersen, Esq.
Kilpatrick Townsend & Stockton, LLP

May 8, 2019

-4-

-4-

-5-

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Kilpatrick Townsend & Stockton, LLP

Joseph Petersen, Esq.
Kilpatrick Townsend & Stockton, LLP

May 8, 2019

-5-

***

-6-

How much work is the useful article doctrine doing in these cases?
Evaluated without reference to the useful article doctrine, the Kitchen Helper stool
combines a few basic geometric and structural-6-features and might still fail the originality
threshold. But arguably there is just enough complexity here to satisfy the designedly low
threshold in Feist. However, after the application of the first prong of the conceptual
separability test, the structural features of the stool vanish and all we are left with is clearly
uncopyrightable geometric features. The same analysis probably holds for the Colosseum
Flatware Artwork.
The Yeezy Boost decision illustrates that design features that are more integrated into the
product will allow the entire product to pass through the first stage of the conceptual
separability test and thus leave more material to evaluate in terms of originality. The most
intriguing part of the Board’s decision in this case is what is left out. The Board does not
explain at all how or why the Yeezy works can be “imagined separately from the sneaker.”
One is left with the suspicion that as long as is always a work is significantly different from
conventional designs for the same utilitarian article that will satisfy the separate-identification

563

requirement. If so, then conceptual separability becomes a test of significant novelty for
integrated design features.
If these decisions are any guide, and perhaps they are not, Star Athletica has reversed the
polarity of the conceptual separability test. In easy cases where design elements are clearly
conceptually separable from the underlying utilitarian aspects of a useful article, the test
allows for those elements to be considered in isolation and subject to a copyright ability
assessment based on the originality threshold in Feist. However, one suspects that cases of
integrated design that would have previously failed (at least some variations of) conceptual
separability now pass the test because design features can always be perceived as a separate
work of art by someone with sufficient imagination. As such, integrated designs such as the
Aeron chair and the Noguchi Table would now be copyrightable in spite of their intrinsic
utilitarian function. That seems like a major change in the law.

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Case: 18-2266

Document: 003113308040

Page: 16

Date Filed: 08/01/2019

Recent cases
(1) In Silvertop Assocs. v. Kangaroo Manufacturing (August 1, 2019) the Third Circuit held under
Star Athletica that a banana costume is (likely) copyrightable, i.e. original and non-utilitarian.
Figure 42 Appendix A from Silvertop v. Kangaroo

APPENDIX A

16

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16. COPYRIGHT IN COMPUTER SOFTWARE
Copyright in computer programs under Berne and TRIPs
The Berne Convention does not address the copyrightability of software. However, by 1994
several countries had included computer software within their concept of literary works—
either through judicial decisions recognizing software as yet another written form and thus a
type literature, or through an explicit amendment to the copyright law.
Article 10 of the TRIPs Agreement, which was strongly championed by the United States,
requires member nations to protect computer programs, whether in source code or object
code, as literary works under the Berne Convention.
TRIPs Article 10(1)
Computer programs, whether in source or object code, shall be protected as literary
works under the Berne Convention (1971).

What’s the difference between source code or object code? The computer code that
programmers and software engineers write is called source code. Source code is humanreadable by those familiar with the relevant programming language. However, source code
does not actually do anything inside a computer. For a computer to do anything, instructions
written in source code must be translated into a series of ones and zeros called object code
or machine code.

An overview of copyright protection for computer software in the United
States
Copyright protection for computer software makes sense for several reasons. First, source
code is clearly a form of writing and usually contains phrases and comments that would be
recognized as expressive—although much of what is recognizably expressive is actually
unnecessary for the program to run. Second, like many other types of copyrighted works,
computer software can take enormous time and effort to create, but once created it is easily
copied. Third, at the time the TRIPs Agreement was being negotiated, the patentability of
computer software was quite uncertain. In fact, although there is a general consensus that
software is to some extent patentable, the extent of patent protection for software remains
controversial and uncertain—at least in the United States.
Nonetheless, copyright protection for computer software raises some inherent
contradictions. Writing software obviously involves considerable human ingenuity, however,
no one buys software to appreciate the expressive attributes of its source code.149 The
difference between software and other forms of written communication can be
demonstrated by asking the question, “what makes it good?” For most works of authorship,
there really is no consensus. For example, many people would say the DaVinci Code was a
good book, and many would not. The two sides of that debate have very different ideas
149 Pamela Samuelson, et al., A Manifesto Concerning the Legal Protection of Computer Programs, 94 COLUM. L. REV.

2308, 2317 (1994) (“No one would want to buy a program that did not behave, i.e., that did nothing, no matter
how elegant the source code ‘prose’ expressing that nothing.”).

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about what makes something a good book. However, computer scientists and software
engineers will inevitably respond that good code is simple, readable, efficient, and well
structured. No one says that software should be expressive, moving, that it should speak to
the human condition, or have emotional resonance. Software is primarily functional and
good software is good because it functions well and does things that people want done. This
creates a “paradox … in that software’s value is usually measured precisely by its
functionality and efficiency, aspects expressly excluded from copyright protection. In light of
that disconnect, judges are faced with the prospect of having to fit a square peg into a round
hole.”150
The importance of function in software raises some obvious questions with respect to
Section 102(b) of the Copyright Act.
17 U.S. Code § 102(b)
In no case does copyright protection for an original work of authorship extend to
any idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or
embodied in such work.

Section 102(b) of the 1976 Copyright Act clearly states that copyright protection does not
extend to any “process, system, [or] method of operation …” Indeed, exclusive rights in
processes and methods of operation are generally left to the patent system. And yet, thanks
to an amendment made in 1980, the Copyright Act clearly extends copyright protection to
computer programs, which are defined as “a set of statements or instructions to be used
directly or indirectly in a computer in order to bring about a certain result.”
17 U.S. Code § 101
Computer program ~ “a set of statements or instructions to be used directly or
indirectly in a computer in order to bring about a certain result.”

A “set of instructions” used “in order to bring about a certain result” appears to be the very
essence of the “process, system, method of operation” exclusion under Section 102(b).
How should this contradiction be resolved? Copyright provides the software industry with a
useful set of exclusive rights and robust remedies against infringement. Copyright is
extremely useful in acting against blatant piracy where the entirety of a computer program is
simply copied without authorization. Given that most software is only distributed in object
code and that object code does not lend itself to partial reproduction, this may be the most
important aspect of copyright law for the computer industry.
Software should not be denied copyright protection because it is functional—that would
contradict Congress’ clearly expressed legislative intent—but the scope of copyright
protection for software must be carefully policed to ensure that it does not confer a patent
like exclusive right on particular functional features. The modern software industry has
thrived on interoperability and open competition. Allowing copyright protection to confer
exclusive rights on particular programming methods, functions, or conceptual elements such
as the trashcan or pull-down menu in a graphical user interface would make the software
industry far less dynamic and competitive.
150 Lothar Determann & David Nimmer, Software Copyright’s Oracle from the Cloud, 30 BERKELEY TECH.

L.J. 161, 169-70 (2015)

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The history of software copyright litigation in the United States
Professor Peter Menell provides an excellent overview of the history of software copyright
litigation from the early 1980’s up to and including the Federal Circuit’s decision in Oracle v.
Google.
Peter S. Menell, API Copyrightability Bleak House: Unraveling and Repairing the
Oracle v. Google Jurisdictional Mess, 31 Berkeley Technology Law Journal, 1515
(2016)
Extracted and adapted with permission

The rapid growth of the microcomputer and consumer software industries fueled
more than a decade of litigation centered on the scope of copyright protection for
computer software. These cases spanned Apple’s litigation to bar clones of its
breakthrough Apple II computer, Apple’s effort to block Microsoft Windows from
competing with the Macintosh’s graphical user interface, mobile phone companies’
copyright claims to codes for cellular phone networks, Sega’s effort to control access
to its Genesis videogame console, and Lotus’s effort to control the menu command
hierarchy of the Lotus 1-2-3 spreadsheet program. These cases, and many other
software copyright battles, centered on the idea-expression dichotomy: to what
extent could platform innovators protect application program interfaces through
copyright protection?
The early cases suggested a broad scope of copyright protection for computer
software and interoperable features. The first major software copyright cases pitted
Apple Computer Corporation, then a young, break-out microcomputer company,
against brash competitors offering inexpensive “interoperable” Apple II clones.151
The clone makers quickly entered the market by copying, bit by bit, Apple’s
operating system and application programs. The defendants argued that copyright
protection did not extend to non-human readable (object code) formats of computer
software and that the idea-expression doctrine barred copyright protection for
operating system programs. They further argued that copyright protection should
not stand in the way of selling computers that can run programs written for the
Apple II.
The courts had little difficulty finding that copying the entirety of sophisticated
computer programs constituted copyright infringement. In reaching these findings,
however, the courts went overboard in their dicta. Addressing the defendant’s
interoperability argument, the Third Circuit opined that “total compatibility with
independently developed application programs ... is a commercial and competitive
objective which does not enter into the somewhat metaphysical issue of whether
particular ideas and expressions have merged.” 152 Since two entirely different
programs can achieve the same “certain result[s]”--for example, generate the same
151 See Apple Comput., Inc. v. Franklin Comput. Corp., 545 F. Supp. 812 (E.D. Pa. 1982), rev’d, 714 F.2d 1240

(3d Cir. 1983); Apple Comput., Inc. v. Formula Int’l, Inc., 562 F. Supp. 775 (C.D. Cal. 1983), aff’d, 725 F.2d
521 (9th Cir. 1984).
152 See Apple Computer, Inc. v. Franklin Computer. Corp., 714 F.2d 1240, 1253 (3d Cir. 1983).

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set of protocols needed for interoperability--the court was not justified in making
such an expansive statement about the scope of copyright protection for computer
program elements. Given the verbatim copying of millions of bits of object code,
there was no need to address the interoperability issue. The defendant offered no
explanation of which elements of the program were protectable and which were not.
The next major software copyright appellate decision also arose from the Third
Circuit. In Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir.
1986) a computer programmer sued the dental laboratory, for which it had
developed a computer program for managing its bookkeeping functions, for
copyright infringement after an officer of the laboratory set out to create a version of
the program that would run on other computer systems. The competing software did
not literally copy Whelan’s code, but there were overall structural similarities between
the two programs. To distinguish protectable expression from unprotectable idea,
the court reasoned:
The purpose or function of a utilitarian work would be the work’s idea, and
everything that is not necessary to that purpose or function would be part of the
expression of the idea. Where there are many means of achieving the desired
purpose, then the particular means chosen is not necessary to the purpose; hence,
there is expression, not idea.153

In applying this rule, the court defined the idea as “the efficient management of a
dental laboratory,” which could be expressed in countless ways. Drawing the ideaexpression dichotomy at such a high level of abstraction implies an expansive scope
of copyright protection. Furthermore, the court’s conflation of merger analysis and
the idea-expression dichotomy implicitly allows copyright protection of procedures,
processes, systems, and methods of operation that § 102(b) expressly excludes. …
Commentators roundly criticized the Whelan test, and other courts began to refine
the scope of copyright protection to comport with the fundamental principles
(including limitations) of copyright protection. A few months after the Whelan
decision, the Fifth Circuit confronted a similar claim of copyright infringement based
upon structural similarities between two programs designed to provide cotton
growers with information regarding cotton prices and availability, accounting services,
and a means for conducting cotton transactions electronically. 154 In declining to
follow the Whelan approach, the court found that the similarities in the programs
were dictated largely by standard practices and forms in the cotton market--what the
court called “externalities”--which constitute unprotectable ideas.155
In Computer Associates International v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), the
Second Circuit adapted Learned Hand’s seminal abstraction-filtration-comparison
framework in Nichols v. Universal Pictures Corporation, 45 F.2d 119 (2d Cir. 1930) to
computer software analysis. Computer Associates, a leading mainframe software
provider, had developed SCHEDULER, a job-scheduling program that worked with
153 Id. at 1236 (emphasis in original) (citations omitted).
154 Plains Cotton Coop. Ass’n v. Goodpasture Computer Serv., Inc., 807 F.2d 1256 (5th Cir. 1987).
155 Id. at 1262 (finding the commonly used “cotton recap sheet,” for summarizing basic transaction information,

to be unprotectable).

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three IBM mainframe computers. Part of the success of this program was that it had
a subcomponent, called ADAPTER, which would interoperate with any of the three
IBM mainframes (DOS/VSE, MVS, and VM/CMS). As a result, the user did not
need to customize its programs for each of the IBM mainframes. ADAPTER
ensured that programs written for SCHEDULER would interoperate with any of the
three IBM mainframes.
In developing a competing job scheduling computer program (ZEKE), which had its
own code layer (OSCAR) for interoperating with the three IBM mainframes, Altai
relied on James Arney, a former Computer Associates programmer. Unbeknownst to
Altai’s management, Arney improperly copied 30% of OSCAR from Computer
Associates’ ADAPTER program. When Altai’s executives learned of the illicit
copying, the company initiated a clean-room rewrite of the program. Drawing on the
Whelan decision, Computer Associates challenged the revised version of ZEKE
based on structural similarities. The district court criticized Whelan’s “simplistic test”
for determining similarity between computer programs, rejecting the notion that
there is but one idea per program and that as long as there were alternative ways of
expressing that one idea, then any particular version was protectable under copyright
law. Focusing on the various levels of the computer programs at issue, the court
determined that the similarities between the programs were dictated by external
factors--such as the interface specifications of the IBM operating system and the
demands of functionality-- and hence no protected code was infringed.
The Second Circuit decision fleshed out the analytical framework for determining
copyright infringement of computer program code:
In ascertaining substantial similarity ... a court would first break down the allegedly
infringed program into its constituent structural parts. Then, by examining each of
these parts for such things as incorporated ideas, expression that is necessarily
incidental to those ideas, and elements that are taken from the public domain, a
court would then be able to sift out all nonprotectable material. Left with a kernel,
or perhaps kernels, of creative expression after following this process of elimination,
the court’s last step would be to compare this material with the structure of an
allegedly infringing program.156

The court’s abstraction-filtration-comparison test recognized that an idea could exist
at multiple levels of a computer program and not solely at the most abstract level.
Furthermore, the ultimate comparison is not between the programs as a whole but
rather between a program’s protectable elements and those that allegedly copy them.
Of most importance with regard to fostering interoperability, the court held
copyright protection did not extend to those program elements where the
programmer’s freedom to choose is:
circumscribed by extrinsic considerations such as (1) mechanical specifications of
the computer on that a particular program is intended to run; (2) compatibility
requirements of other programs with which a program is designed to operate in
conjunction; (3) computer manufacturers’ design standards; (4) demands of the

156 Altai, 982 F.2d at 706.

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industry being serviced; and (5) widely accepted programming practices within the
computer industry.157

Directly rejecting the dictum in Apple v. Franklin, the Second Circuit recognized that
external factors such as interface specifications, de facto industry standards, and
accepted programming practices are not protectable under copyright law. The
Second Circuit test evaluates these external factors at the time of the allegedly
infringing activities (i.e., ex post), not at the time that the first program is written.
Commentators warmly embraced the Altai decision, and courts have universally
adopted the abstraction-filtration-comparison. The Ninth Circuit’s decision in Sega
Enterprises Ltd. v. Accolade158 expressly recognized the legitimacy of deciphering and
copying lockout codes for purposes of developing interoperable products. Sega
developed a successful video game platform (Genesis) for which it licensed access to
video game developers. Accolade, a manufacturer of video games, wanted to
distribute versions of its games on the Genesis platform. It did not, however, want
to limit distribution exclusively to Genesis, as Sega required. Rather than license
Sega’s code, Accolade reverse engineered the access code through a painstaking
effort that entailed making hundreds of intermediate copies of Sega’s computer code.
Accolade then incorporated only the code (approximately 25 bytes in games
containing between 500,000 and 1.5 million bytes) necessary to achieve
interoperability with the Genesis platform.159
Sega sued Accolade for copyright infringement. Given the relatively small amount of
Sega code in the Accolade game cartridges, Sega focused its copyright claim on the
making of intermediate copies of its full computer program made during the process
of reverse engineering. The district court rejected Accolade’s argument that such
intermediate copies constituted fair use and granted a preliminary injunction.160
The Ninth Circuit reversed, holding that “the functional requirements for
compatibility with the Genesis [video game console are] aspects of Sega’s programs
that are not protected by copyright.”161 Building on that foundation, the court ruled
that “disassembly of object code in order to gain an understanding of the ideas and
functional concepts embodied in the code is a fair use that is privileged by section
107 of the Act.”162 The court determined that policies underlying the Copyright Act
authorize disassembly of copyrighted object code and the making of intermediate

157 Id. at 709-10. The court observed that “while, hypothetically, there might be a myriad of ways in which a

programmer may effectuate certain functions within a program-i.e., express the idea embodied in a given
subroutine-efficiency concerns may so narrow the practical range of choice as to make only one or two forms
of expression workable operations.” Id. at 708.
158 977 F.2d 1510 (9th Cir. 1992) [hereinafter Sega Enters. II].
159 Id. at 1516.
160 See Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 1397-1400 (N.D. Cal. 1992), rev’d, 977 F.2d 1510

(9th Cir. 1992).

161 Sega Enters. II, 977 F.2d at 1522 (citing 17 U.S.C. § 102(b) (2012)).
162 Id. at 1517-18.

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copies to discover unprotectable elements of code. The Ninth Circuit reaffirmed and
expanded this doctrine in Sony Computer Entertainment, Inc. v. Connectix Corp.163
The Northern District of California and the Ninth Circuit applied the Altai
framework to the graphical user interface features of a computer program in Apple
Computer, Inc. v. Microsoft Corp.164 Apple Computer alleged that Microsoft’s Windows
operating system infringed Apple’s copyrights in the desktop graphical user interface
of its Macintosh computer system. A licensing agreement authorizing the defendants’
use of aspects of Apple’s graphical user interface muddied the copyright issue. The
court determined, however, that the licensing agreement was not a complete defense
to the copyright infringement claims and consequently analyzed the scope of
copyright protection for a range of audiovisual display elements.
The district court found that the unlicensed similarities between Apple’s works and
Microsoft’s Windows were either unprotectable or subject to at least one of
copyright law’s limiting doctrines. In evaluating the compilation of these elements as
a whole, the court applied the “virtual identity” standard and determined that no
infringement had occurred. On appeal, the Ninth Circuit affirmed the district court’s
dissection of Apple’s graphical user interface to determine which elements are
protectable, filtering of unprotectable elements, and application of the “virtual
identity” standard.
The copyrightability of command systems for computer software arose in litigation
over spreadsheet technology. Building upon the success of the VisiCalc program
developed for the Apple II computer, Lotus Corporation marketed a spreadsheet
program for the IBM PC platform--Lotus 1-2-3--which offered many of VisiCalc’s
features 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
valuable for accountants and managers. The 1-2-3 command hierarchy provided a
logically structured menu of more than 200 commands and enabled users to develop
customized programs (called macros) for their particular accounting and business
planning functions. These investments locked users into the 1-2-3 command
structure as their library of macros grew. By the late 1980s, software developers
seeking to enter the spreadsheet market could not ignore the large premiums that
many consumers placed on transferring their investments in the 1-2-3 system to a
new spreadsheet environment, even where a new spreadsheet product offered
significant technical improvements over the Lotus spreadsheet.
After three years of intensive development efforts, Borland International, developer
of several successful software products including Turbo Pascal and Sidekick,
introduced Quattro Pro, its entry into the spreadsheet market. Quattro Pro made
substantial design and operational improvements and earned accolades in the
computer product review magazines. Quattro Pro offered a new interface for its
users, which many purchasers of spreadsheets preferred over the 1-2-3 interface.
Nonetheless, because of the large number of users already familiar with the 1-2-3
163 203 F.3d 596 (9th Cir. 2000)
164 799 F. Supp. 1006 (N.D. Cal. 1992), aff’d in part, rev’d in part, 35 F.3d 1435 (9th Cir. 1994).

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command structure and those who had made substantial investments in developing
macros to run on the 1-2-3 platform, Borland considered it essential to offer an
operational mode based on the 1-2-3 command structure as well as macro
compatibility. Borland’s visual representation of the 1-2-3 command mode
substantially differed from the 1-2-3 screen displays.
The lower court held that a menu command structure was protectable if there were
many such structures available. 165 The court also found that Borland was not
permitted to achieve macro compatibility with the 1-2-3 product, distinguishing the
treatment of external constraints noted in the Altai decision on the ground that such
constraints had to exist at the time that the first program was created. The First
Circuit reversed, holding that the menu command hierarchy was a “method of
operation” that fell within the copyright exclusion set forth in § 102(b).166 The U.S.
Supreme Court granted certiorari and affirmed without opinion by an equally divided
vote.167
Subsequent appellate decisions reached similar outcomes, although they have not
fully subscribed to the First Circuit’s reasoning.168 Thus, after an inauspicious start,
the federal courts implemented a balanced framework for both protecting computer
software against piracy and interpreting the idea-expression dichotomy in such a way
to ensure that copyright law does not extend to functional features of computer
technology. Following resolution of the first API copyright war, the software
engineering community believed that copyright law did not protect high-level
functions, labeling conventions, and APIs. Software copyright litigation subsided,
and there were no new major API copyright judicial decisions until Oracle v. Google
more than a decade later.

165 See Lotus Dev. Corp. v. Borland Int’l, Inc., 831 F. Supp. 202, 215 (D. Mass. 1993) (“[A]lthough functional

considerations may have some effect on the design of a menu tree, they do not impose any practical limitation
on the possible forms of expression to a number far enough short of infinity that any way of expressing the
number in English words has come into common usage”), rev’d, 49 F.3d 807 (1st Cir. 1995), aff’d without
opinion by equally divided court, 516 U.S. 233 (1996).
166 Lotus Dev. Corp. v. Borland Int’l., Inc., 49 F.3d 807, 814-15 (1st Cir. 1995), aff’d without opinion by equally

divided court, 516 U.S. 233 (1996).
167 Lotus

Dev. Corp. v. Borland Int’l, Inc., 516 U.S. 233 (1996) (Justice Stevens recused himself from
participation in consideration of the case). As a result, the First Circuit’s Lotus decision remained the law in the
First Circuit but did not bind other circuits.
168 See Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1373-74 (10th Cir. 1997) (holding that a computer system for

automating the selection of telephone long-distance carrier and remotely activating optional
telecommunications features lacked the minimal degree of creativity to qualify for copyright protection and
should be denied copyright protection under the scènes à faire doctrine because such systems are largely dictated
by external factors including compatibility requirements and industry practices; but declining to hold that menu
command hierarchies are categorically excluded from copyright protection); MiTek Holdings, Inc. v. ARCE
Eng’g Co., 89 F.3d 1548, 1556-57 (11th Cir. 1996) (holding that the menu and submenu command structure of
a software program for designing wood trusses for the framing of building roofs was uncopyrightable under §
102(b) of the Copyright Act because it represents a process).

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The Oracle v. Google Cases
The extent to which copyright should protect more abstract features of computer software
was thrown into doubt by the Federal Circuit’s decision in Oracle America, Inc. v. Google Inc.,
750 F.3d 1339 (Fed. Cir. 2014), the doubt was not resolved by the Supreme Court’s 2021
decision in Google Inc. v. Oracle America, Inc. (April 5, 2021)
The case concerns Google’s copying of the Java APIs (application protocol interfaces) that
are part of the widely used Java programming language as part of its Android mobile phone
operating system. When Google developed its android mobile phone operating system it
rewrote almost all of the code necessary to make third party programs work on a mobile
phone. However, to enable programmers familiar with Java to easily port their programs to
this new environment, Google used the same declarations – effectively the same names for
various commands – as those contained in Java. The case is difficult because although
Google appears to have only copied what was necessary to make its independently written
software work with applications written in Java, that turned out to be a very large amount of copying.

The Federal Circuit decision on copyrightability
Do copyright cases belong at the Federal Circuit? Not really. The case made its way to the
Federal Circuit because Oracle had initially alleged both patent and copyright infringement.
Although the jury found that Oracle’s patents were not infringed, the patent issues in the
case gave the Federal Circuit jurisdiction to hear the appeal. The Federal Circuit is a
specialized appellate court in the United States that was primarily created to hear patent
cases. The Federal Circuit has very little experience with copyright law and its ruling struck
many commentators as a substantial departure from established Ninth Circuit precedent.
In 2012, the district court in Oracle America, Inc. v. Google Inc. ruled that the Java APIs (or
application protocol interfaces) that were part of the widely used Java programming language
are not separately copyrightable.169 In 2014, the Federal Circuit reversed the district court’s
ruling that the structure, sequence, and organization of the 37 Java APIs were not
copyrightable and remanded the issue of fair use for retrial with revised jury instructions.170
The Federal Circuit’s conclusion that the declaring code in the individual Java APIs and the
structure, sequence, and organization of the APIs as a whole were copyrightable. Seemed
like a major departure from settled Ninth Circuit precedent. The court’s views on merger are
particularly interesting. The Federal Circuit saw no place for the application of copyright’s
limiting doctrines to negate or diminish that copyrightability. It held (at 1358) that merger
and scènes à faire are affirmative defenses to infringement, not limitations on copyrightability.
In the Ninth Circuit, while questions regarding originality are considered questions
of copyrightability, concepts of merger and scènes à fair are affirmative defenses to
claims of infringement.

Moreover, the Federal Circuit said (at 1361) that merger would not apply in this case because
… merger cannot bar copyright protection for any lines of declaring source code
unless Sun/Oracle had only one way, or a limited number of ways, to write them.
169 Oracle America, Inc. v. Google Inc., 872 F. Supp. 2d 974 (N.D. Cal. 2012).
170 Oracle America, Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014)

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The court was saying, in effect, that was not interested in Google’s choices after the fact,
only the fact that there were choices available to Sun (Oracle’s predecessor in interest) at the
time the code was first created. The Federal Circuit also held that the short phrases
doctrine171 did not bar copyright protection for compilations of words and short phrases as
reflected in declaring code. The Federal Circuit argued that short phrases are copyrightable if
they are creative (!) and that an original combination of short phrases can be copyrightable.
Furthermore, the Federal Circuit held that whether Google’s software was “interoperable” in
some sense with any aspect of the Java platform had no bearing on the threshold question of
whether Oracle’s software was copyrightable. At 1367, the court of appeals explained that
Oracle’s constraints at the time of writing are part of the copyrightability analysis, but
Google’s need to emulate Oracle is not.
Section 102(b) does not, as Google seems to suggest, automatically deny copyright
protection to elements of a computer program that are functional. Instead, as noted,
Section 102(b) codifies the idea/expression dichotomy and the legislative history
confirms that, among other things, Section 102(b) was “intended to make clear that
the expression adopted by the programmer is the copyrightable element in a
computer program.” Therefore, even if an element directs a computer to perform
operations, the court must nevertheless determine whether it contains any separable
expression entitled to protection.

The Federal Circuit took the position, that as long as the original authors made some choices
that were not entirely dictated by the program’s functionality, those choices were entitled to
copyright protection. As Professor Menell summarized:
The Federal Circuit resurrected the flawed analysis in the Third Circuit’s Apple and
Whelan cases: analyzing copyrightability of computer software based on whether the
high-level function(s) of the software could be implemented in multiple ways rather
than viewing a particularized set of software functions as an unprotectable “method
of operation.172

The decision of Court of Appeals for the Federal Circuit in Oracle v. Google threatens to
unsettle the law relating to computer software. Lothar Determann and David Nimmer
predicted shortly after the decision:
If this precedent takes hold future defendants will have to prove fair use, merger, or
scènes à faire in order to vindicate copying of interfaces, lock-out codes, and other
gateways to interoperability.173

The new jury trial and the 2018 Federal Circuit decision
On remand, the trial court put the question of whether Google’s use of the Java declarations
and the like constituted fair use to the jury. After an eight day trial and three days of
deliberation, the jury found that Google had “shown by a preponderance of the evidence
that its use in Android of the declaring lines of code and their structure, sequence, and
171 As noted in a previous chapter, the Copyright Office has a long established practice of refusing registration

to words and short phrases on this basis. See 37 C.F.R. § 202.1(a) Material not subject to copyright.

172 Peter S. Menell, API Copyrightability Bleak House: Unraveling and Repairing the Oracle v. Google Jurisdictional Mess,

31 BERKELEY TECH. L.J. 1515, 1557 (2016).

173 Lothar Determann & David Nimmer, Software Copyright’s Oracle from the Cloud, 30 Berkeley Tech. L.J. 161, 170

(2015)

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organization from Java 2 Standard Edition Version 1.4 and Java 2 Standard Edition Version
5.0 constitutes a ‘fair use’ under the Copyright Act.”174
In Oracle America, Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018) the court of appeals for
the Federal Circuit overturned a jury verdict that Google’s unauthorized use of 37 packages
of the Java application programming interface in its Android operating system was fair use.
The Federal Circuit held that Google’s use of the Java API packages was not fair as a matter of
law.
The Federal Circuit justified overturning the jury on the basis that the role of the jury in fair
use cases “is limited to determining disputed ‘historical facts,’ not the inferences or
conclusions to be drawn from those facts.” Even if that is correct, which the Supreme Court
seems to think it is (see below), the timing of the Federal Circuit’s decision was curious. If
Google’s fair use defense was really unsustainable as a matter of law in 2018, why wasn’t it
also unsustainable in 2014 when the Federal Circuit reversed the district court’s finding that
the API packages were not copyrightable as a matter of law and remanded with instructions
to reinstate the jury’s infringement verdict and for further proceedings on Google’s fair use
defense in 2014. See, Oracle America, Inc. v. Google Inc., 750 F.3d 1339, 1348 (Fed. Cir. 2014).
The Federal Circuit reasoned through the fair use factors as follows:
On the first factor, the nature and purpose of the defendant’s use, it found that (i) Google’s
use of the API packages must be considered commercial and as such it weighed against a
finding of fair use and (ii) Google’s use of the API packages is not transformative as a matter
of law, primarily because the copied APIs perform the same function in Android as they did
in the Java platform. The Federal Circuit held that the fact that Google wrote its own
implementing code for a new operating environment (smart phones) was irrelevant to the
question of whether use of the APIs was transformative because in so doing it did not alter
the expressive content or message of the original work that it copied.
On the second factor, the district court held on remand that while the declaring code of the
APIs and entire structure sequence and organization of the APIs were creative enough to
qualify for copyright protection, functional considerations predominated in their design. The
Federal Circuit agreed that reasonable jurors could have concluded that functional
considerations in the APIs were both substantial and important and thus that the second
factor favored a finding of fair use. However, the Federal Circuit was quick to point out that
this second factor typically has not been terribly significant in the overall fair use balancing
and (at 1205):
We note, moreover, that allowing this one factor to dictate a conclusion of fair use
in all cases involving copying of software could effectively negate Congress’s express
declaration — continuing unchanged for some forty years — that software is
copyrightable. Accordingly, though the jury’s assumed view of the nature of the
copyrighted work weighs in favor of finding fair use, it has less significance to the
overall analysis.

The Federal Circuit found that the third fair use factor, “the amount and substantiality of the
portion used”, was “at best, neutral in the fair use inquiry, and arguably weighs against such a
finding.” The court discounted the fact that the copied APIs represented only a tiny fraction
174 See Special Verdict Form, Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 946 (N.D. Cal. 2012), rev’d and

remanded, 750 F.3d 1339 (Fed. Cir. 2014) (3:10-cv-03561-WHA) (filed May 7, 2012)

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of the original copyrighted work and also of Google’s Android operating system and noted
that only 170 of the 11,500 lines of code Google copied were strictly necessary to write in
the Java language. The Federal Circuit did not accept that copying APIs to make it easier for
programmers familiar with Java to write to Android was necessary and (at 1207) dismissed
the core of Google’s interoperability argument as analogous “to copying the most famous
and well recognized aspects of a work ‘to get attention’ or ‘to avoid the drudgery in working
up something fresh’” (quoting the Ninth Circuit decision in Dr. Seuss Enters., 109 F.3d at
1401, which itself was quoting Campbell, 510 U.S. at 580).
On the fourth fair use factor, the effect of the use on the market for or value of the
copyrighted work, Oracle argued that Android competed with Java SE in the market for
mobile devices and that Android had displaced Java SE on the Amazon Kindle. The Federal
Circuit agreed with Oracle that the evidence of actual and potential harm stemming from
Google’s copying was “overwhelming” and that the district court erred as a matter of law in
holding otherwise. Its analysis relied heavily on Oracle’s intention to license Java SE in
smartphones in the future and the “copyright owner’s right to enter a ‘potential market,’” as
sufficient to establish market impact.

The Supreme Court’s decision in Google Inc. v. Oracle America, Inc.
Google Inc. v. Oracle America, Inc. (Supreme Court 2021)
JUSTICE BREYER, delivered the opinion of the Court.
Oracle America, Inc., is the current owner of a copyright in Java SE, a computer
program that uses the popular Java computer programming language. Google,
without permission, has copied a portion of that program, a portion that enables a
programmer to call up prewritten software that, together with the computer’s
hardware, will carry out a large number of specific tasks. The lower courts have
considered (1) whether Java SE’s owner could copyright the portion that Google
copied, and (2) if so, whether Google’s copying nonetheless constituted a “fair use”
of that material, thereby freeing Google from copyright liability. The Federal Circuit
held in Oracle’s favor (i.e., that the portion is copyrightable and Google’s copying
did not constitute a “fair use”). In reviewing that decision, we assume, for argument’s
sake, that the material was copyrightable. But we hold that the copying here at issue
nonetheless constituted a fair use. Hence, Google’s copying did not violate the
copyright law.
I
In 2005, Google acquired Android, Inc., a startup firm that hoped to become
involved in smartphone software. Google sought, through Android, to develop a
software platform for mobile devices like smartphones. A platform provides the
necessary infrastructure for computer programmers to develop new programs and
applications. One might think of a software platform as a kind of factory floor where
computer programmers (analogous to autoworkers, designers, or manufacturers)
might come, use sets of tools found there, and create new applications for use in, say,
smartphones.
Google envisioned an Android platform that was free and open, such that software
developers could use the tools found there free of charge. Its idea was that more and
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more developers using its Android platform would develop ever more Androidbased applications, all of which would make Google’s Android-based smartphones
more attractive to ultimate consumers. Consumers would then buy and use ever
more of those phones. Oracle America, Inc. v. Google Inc., 872 F. Supp. 2d 974, 978
(ND Cal. 2012). That vision required attracting a sizeable number of skilled
programmers.
At that time, many software developers understood and wrote programs using the
Java programming language, a language invented by Sun Microsystems (Oracle’s
predecessor). About six million programmers had spent considerable time learning,
and then using, the Java language. Many of those programmers used Sun’s own
popular Java SE platform to develop new programs primarily for use in desktop and
laptop computers. That platform allowed developers using the Java language to write
programs that were able to run on any desktop or laptop computer, regardless of the
underlying hardware (i.e., the programs were in large part “interoperable”). Indeed,
one of Sun’s slogans was “write once, run anywhere.”
Shortly after acquiring the Android firm, Google began talks with Sun about the
possibility of licensing the entire Java platform for its new smartphone technology.
But Google did not want to insist that all programs written on the Android platform
be interoperable. As Android’s founder explained, “the whole idea about [an] open
source [platform] is to have very, very few restrictions on what people can do with it,”
and Sun’s interoperability policy would have undermined that free and open business
model. Apparently, for reasons related to this disagreement, Google’s negotiations
with Sun broke down. Google then built its own platform.
The record indicates that roughly 100 Google engineers worked for more than three
years to create Google’s Android platform software. In doing so, Google tailored the
Android platform to smartphone technology, which differs from desktop and laptop
computers in important ways. A smartphone, for instance, may run on a more
limited battery or take advantage of GPS technology. The Android platform offered
programmers the ability to program for that environment. To build the platform,
Google wrote millions of lines of new code. Because Google wanted millions of
programmers, familiar with Java, to be able easily to work with its new Android
platform, it also copied roughly 11,500 lines of code from the Java SE program. The
copied lines of code are part of a tool called an Application Programming Interface,
or API.
What is an API? The Federal Circuit described an API as a tool that “allow[s]
programmers to use … prewritten code to build certain functions into their own
programs, rather than write their own code to perform those functions from scratch.”
Oracle America, Inc. v. Google, Inc., 750 F. 3d 1339, 1349 (2014). Through an API, a
programmer can draw upon a vast library of prewritten code to carry out complex
tasks. For lay persons, including judges, juries, and many others, some elaboration of
this description may prove useful.
Consider in more detail just what an API does. A computer can perform thousands,
perhaps millions, of different tasks that a programmer may wish to use. These tasks
range from the most basic to the enormously complex. Ask the computer, for
example, to tell you which of two numbers is the higher number or to sort one

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thousand numbers in ascending order, and it will instantly give you the right answer.
An API divides and organizes the world of computing tasks in a particular way.
Programmers can then use the API to select the particular task that they need for
their programs. In Sun’s API (which we refer to as the Sun Java API), each
individual task is known as a “method.” The API groups somewhat similar methods
into larger “classes,” and groups somewhat similar classes into larger “packages.”
This method-class-package organizational structure is referred to as the Sun Java
API’s “structure, sequence, and organization,” or SSO.
For each task, there is computer code, known as “implementing code,” that in effect
tells the computer how to execute the particular task you have asked it to perform
(such as telling you, of two numbers, which is the higher). The implementing code
(which Google independently wrote) is not at issue here. For a single task, the
implementing code may be hundreds of lines long. It would be difficult, perhaps
impossible, for a programmer to create complex software programs without drawing
on prewritten task-implementing programs to execute discrete tasks.
But how do you as the programmer tell the computer which of the implementing
code programs it should choose, i.e., which task it should carry out? You do so by
entering into your own program a command that corresponds to the specific task
and calls it up. Those commands, known as “method calls,” help you carry out the
task by choosing those programs written in implementing code that will do the trick,
i.e., that will instruct the computer so that your program will find the higher of two
numbers. If a particular computer might perform, say, a million different tasks,
different method calls will tell the computer which of those tasks to choose. Those
familiar with the Java language already know countless method calls that allow them
to invoke countless tasks.
And how does the method call (which a programmer types) actually locate and
invoke the particular implementing code that it needs to instruct the computer how
to carry out a particular task? It does so through another type of code, which the
parties have labeled “declaring code.” Declaring code is part of the API. For each
task, the specific command entered by the programmer matches up with specific
declaring code inside the API. That declaring code provides both the name for each
task and the location of each task within the API’s overall organizational system (i.e.,
the placement of a method within a particular class and the placement of a class
within a particular package). In this sense, the declaring code and the method call
form a link, allowing the programmer to draw upon the thousands of prewritten
tasks, written in implementing code. Without that declaring code, the method calls
entered by the programmer would not call up the implementing code.
The declaring code therefore performs at least two important functions in the Sun
Java API. The first, more obvious, function is that the declaring code enables a set of
shortcuts for programmers. By connecting complex implementing code with method
calls, it allows a programmer to pick out from the API’s task library a particular task
without having to learn anything more than a simple command. For example, a
programmer building a new application for personal banking may wish to use various
tasks to, say, calculate a user’s balance or authenticate a password. To do so, she
need only learn the method calls associated with those tasks. In this way, the
declaring code’s shortcut function is similar to a gas pedal in a car that tells the car to
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move faster or the QWERTY keyboard on a typewriter that calls up a certain letter
when you press a particular key. As those analogies demonstrate, one can think of
the declaring code as part of an interface between human beings and a machine.
The second, less obvious, function is to reflect the way in which Java’s creators have
divided the potential world of different tasks into an actual world, i.e., precisely
which set of potentially millions of different tasks we want to have our Java-based
computer systems perform and how we want those tasks arranged and grouped. In
this sense, the declaring code performs an organizational function. It determines the
structure of the task library that Java’s creators have decided to build. To understand
this organizational system, think of the Dewey Decimal System that categorizes
books into an accessible system or a travel guide that arranges a city’s attractions into
different categories. Language itself provides a rough analogy to the declaring code’s
organizational feature, for language itself divides into sets of concepts a world that in
certain respects other languages might have divided differently. The developers of
Java, for example, decided to place a method called “draw image” inside of a class
called “graphics.”
Consider a comprehensive, albeit farfetched, analogy that illustrates how the API is
actually used by a programmer. Imagine that you can, via certain keystrokes, instruct
a robot to move to a particular file cabinet, to open a certain drawer, and to pick out
a specific recipe. With the proper recipe in hand, the robot then moves to your
kitchen and gives it to a cook to prepare the dish. This example mirrors the API’s
task-related organizational system. Through your simple command, the robot locates
the right recipe and hands it off to the cook. In the same way, typing in a method call
prompts the API to locate the correct implementing code and hand it off to your
computer. And importantly, to select the dish that you want for your meal, you do
not need to know the recipe’s contents, just as a programmer using an API does not
need to learn the implementing code. In both situations, learning the simple
command is enough.
Now let us consider the example that the District Court used to explain the precise
technology here. A programmer wishes, as part of her program, to determine which
of two integers is the larger. To do so in the Java language, she will first write
java.lang. Those words (which we have put in bold type) refer to the “package” (or
by analogy to the file cabinet). She will then write Math. That word refers to the
“class” (or by analogy to the drawer). She will then write max. That word refers to
the “method” (or by analogy to the recipe). She will then make two parentheses ().
And, in between the parentheses she will put two integers, say 4 and 6, that she
wishes to compare. The whole expression—the method call—will look like this:
“java.lang.Math.max(4, 6).” The use of this expression will, by means of the API,
call up a task-implementing program that will determine the higher number.
In writing this program, the programmer will use the very symbols we have placed in
bold in the precise order we have placed them. But the symbols by themselves do
nothing. She must also use software that connects the symbols to the equivalent of
file cabinets, drawers, and files. The API is that software. It includes both the
declaring code that links each part of the method call to the particular taskimplementing program, and the implementing code that actually carries it out.

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Now we can return to the copying at issue in this case. Google did not copy the taskimplementing programs, or implementing code, from the Sun Java API. It wrote its
own task-implementing programs, such as those that would determine which of two
integers is the greater or carry out any other desired (normally far more complex)
task. This implementing code constitutes the vast majority of both the Sun Java API
and the API that Google created for Android. For most of the packages in its new
API, Google also wrote its own declaring code. For 37 packages, however, Google
copied the declaring code from the Sun Java API. As just explained, that means that,
for those 37 packages, Google necessarily copied both the names given to particular
tasks and the grouping of those tasks into classes and packages.
In doing so, Google copied that portion of the Sun Java API that allowed
programmers expert in the Java programming language to use the “task calling”
system that they had already learned. As Google saw it, the 37 packages at issue
included those tasks that were likely to prove most useful to programmers working
on applications for mobile devices. In fact, “three of these packages were …
fundamental to being able to use the Java language at all.” Oracle, 872 F. Supp. 2d, at
982. By using the same declaring code for those packages, programmers using the
Android platform can rely on the method calls that they are already familiar with to
call up particular tasks (e.g., determining which of two integers is the greater); but
Google’s own implementing programs carry out those tasks. Without that copying,
programmers would need to learn an entirely new system to call up the same tasks.
We add that the Android platform has been successful. Within five years of its
release in 2007, Android-based devices claimed a large share of the United States
market. As of 2015, Android sales produced more than $42 billion in revenue.
In 2010 Oracle Corporation bought Sun. Soon thereafter Oracle brought this lawsuit
in the United States District Court for the Northern District of California.
II
The case has a complex and lengthy history. At the outset Oracle complained that
Google’s use of the Sun Java API violated both copyright and patent laws. For its
copyright claim, Oracle alleged that Google infringed its copyright by copying, for 37
packages, both the literal declaring code and the nonliteral organizational structure
(or SSO) of the API, i.e., the grouping of certain methods into classes and certain
classes into packages. For trial purposes the District Court organized three
proceedings. The first would cover the copyright issues, the second would cover the
patent issues, and the third would, if necessary, calculate damages. Oracle, 872 F.
Supp. 2d, at 975. The court also determined that a judge should decide whether
copyright law could protect an API and that the jury should decide whether Google’s
use of Oracle’s API infringed its copyright and, if so, whether a fair use defense
nonetheless applied. Ibid.
After six weeks of hearing evidence, the jury rejected Oracle’s patent claims (which
have since dropped out of the case). It also found a limited copyright infringement.
It deadlocked as to whether Google could successfully assert a fair use defense. The
judge then decided that, regardless, the API’s declaring code was not the kind of
creation to which copyright law extended its protection. The court noted that
Google had written its own implementing code, which constituted the vast majority
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of its API. It wrote that “anyone is free under the Copyright Act to write his or her
own code to carry out exactly the same” tasks that the Sun Java API picks out or
specifies. Google copied only the declaring code and organizational structure that
was necessary for Java-trained programmers to activate familiar tasks (while, as we
said, writing its own implementing code). Hence the copied material, in the judge’s
view, was a “system or method of operation,” which copyright law specifically states
cannot be copyrighted. Id., at 977 (citing 17 U. S. C. § 102(b)).
On appeal, the Federal Circuit reversed. That court held that both the API’s
declaring code and its organizational structure could be copyrighted. Oracle, 750 F. 3d,
at 1354. It pointed out that Google could have written its own declaring code just as
it wrote its own implementing code. And because in principle Google might have
created a whole new system of dividing and labeling tasks that could be called up by
programmers, the declaring code (and the system) that made up the Sun Java API
was copyrightable. Id., at 1361.
The Federal Circuit also rejected Oracle’s plea that it decide whether Google had the
right to use the Sun Java API because doing so was a “fair use,” immune from
copyright liability [and] it remanded the case for another trial on that question. On
remand the District Court, sitting with a jury, heard evidence for a week. The court
instructed the jury to answer one question: Has Google “shown by a preponderance
of the evidence that its use in Android” of the declaring code and organizational
structure contained in the 37 Sun Java API packages that it copied “constitutes a ‘fair
use’ under the Copyright Act?” After three days of deliberation the jury answered the
question in the affirmative. Google had shown fair use.
Oracle again appealed to the Federal Circuit. And the Circuit again reversed the
District Court. The Federal Circuit assumed all factual questions in Google’s favor.
But, it said, the question whether those facts constitute a “fair use” is a question of
law. Deciding that question of law, the court held that Google’s use of the Sun Java
API was not a fair use. It wrote that “there is nothing fair about taking a copyrighted
work verbatim and using it for the same purpose and function as the original in a
competing platform.” It remanded the case again, this time for a trial on damages.
Google then filed a petition for certiorari in this Court. It asked us to review the
Federal Circuit’s determinations as to both copyrightability and fair use. We granted
its petition.
III
A
Copyright and patents, the Constitution says, are to “promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Discoveries.” Art. I, § 8, cl. 8.
Copyright statutes and case law have made clear that copyright has practical
objectives. It grants an author an exclusive right to produce his work (sometimes for
a hundred years or more), not as a special reward, but in order to encourage the
production of works that others might reproduce more cheaply. At the same time,
copyright has negative features. Protection can raise prices to consumers. It can
impose special costs, such as the cost of contacting owners to obtain reproduction

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permission. And the exclusive rights it awards can sometimes stand in the way of
others exercising their own creative powers. See generally Twentieth Century Music Corp.
v. Aiken, 422 U.S. 151, 156 (1975); Mazer v. Stein, 347 U.S. 201, 219 (1954).
Macaulay once said that the principle of copyright is a “tax on readers for the
purpose of giving a bounty to writers.” T. Macaulay, Speeches on Copyright 25 (E.
Miller ed. 1913). Congress, weighing advantages and disadvantages, will determine
the more specific nature of the tax, its boundaries and conditions, the existence of
exceptions and exemptions, all by exercising its own constitutional power to write a
copyright statute.
Four provisions of the current Copyright Act are of particular relevance in this case.
First, a definitional provision sets forth three basic conditions for obtaining a
copyright. There must be a “work of authorship,” that work must be “original,” and
the work must be “fixed in any tangible medium of expression.” 17 U. S. C. § 102(a);
see also Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 345 (1991)
(explaining that copyright requires some original “creative spark” and therefore does
not reach the facts that a particular expression describes).
Second, the statute lists certain kinds of works that copyright can protect. They
include “literary,” “musical,” “dramatic,” “motion picture,” “architectural,” and
certain other works. § 102(a). In 1980, Congress expanded the reach of the
Copyright Act to include computer programs. And it defined “computer program”
as “‘a set of statements or instructions to be used directly or indirectly in a computer
in order to bring about a certain result.’” § 10, 94 Stat. 3028 (codified at 17 U. S. C. §
101).
Third, the statute sets forth limitations on the works that can be copyrighted,
including works that the definitional provisions might otherwise include. It says, for
example, that copyright protection cannot be extended to “any idea, procedure,
process, system, method of operation, concept, principle, or discovery. …” § 102(b).
These limitations, along with the need to “fix” a work in a “tangible medium of
expression,” have often led courts to say, in shorthand form, that, unlike patents,
which protect novel and useful ideas, copyrights protect “expression” but not the
“ideas” that lie behind it.
Fourth, Congress, together with the courts, has imposed limitations upon the scope
of copyright protection even in respect to works that are entitled to a copyright. …
And directly relevant here, a copyright holder cannot prevent another person from
making a “fair use” of copyrighted material. § 107.
We have described the “fair use” doctrine, originating in the courts, as an “equitable
rule of reason” that “permits courts to avoid rigid application of the copyright statute
when, on occasion, it would stifle the very creativity which that law is designed to
foster.” Stewart v. Abend, 495 U. S. 207, 236 (1990) (internal quotation marks omitted).
The statutory provision that embodies the doctrine indicates, rather than dictates,
how courts should apply it. The provision says:
“[T]he fair use of a copyrighted work, . . . for purposes such as criticism, comment,
news reporting, teaching . . . scholarship, or research, is not an infringement of
copyright. In determining whether the use made of a work in any particular case is a
fair use the factors to be considered shall include—

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(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.” § 107.

In applying this provision, we, like other courts, have understood that the provision’s
list of factors is not exhaustive (note the words “include” and “including”), that the
examples it sets forth do not exclude other examples (note the words “such as”), and
that some factors may prove more important in some contexts than in others. See
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994); Harper & Row, Publishers,
Inc. v. Nation Enterprises, 471 U.S. 539, 560 (1985); see also Leval, Toward a Fair Use
Standard, 103 Harvard Law Review 1105, 1110 (1990) (Leval) (“The factors do not
represent a score card that promises victory to the winner of the majority”). In a
word, we have understood the provision to set forth general principles, the
application of which requires judicial balancing, depending upon relevant
circumstances, including “significant changes in technology.” Sony Corp. of America v.
Universal City Studios, Inc., 464 U.S. 417, 430 (1984); see also Aiken, 422 U.S., at 156
(“When technological change has rendered its literal terms ambiguous, the Copyright
Act must be construed in light of its basic purpose”).
B
Google’s petition for certiorari poses two questions. The first asks whether Java’s
API is copyrightable. It asks us to examine two of the statutory provisions just
mentioned, one that permits copyrighting computer programs and the other that
forbids copyrighting, e.g., “processes,” “systems,” and “methods of operation.”
Google believes that the API’s declaring code and organization fall into these latter
categories and are expressly excluded from copyright protection. The second
question asks us to determine whether Google’s use of the API was a “fair use.”
Google believes that it was.
A holding for Google on either question presented would dispense with Oracle’s
copyright claims. Given the rapidly changing technological, economic, and businessrelated circumstances, we believe we should not answer more than is necessary to
resolve the parties’ dispute. We shall assume, but purely for argument’s sake, that the
entire Sun Java API falls within the definition of that which can be copyrighted. We
shall ask instead whether Google’s use of part of that API was a “fair use.” Unlike
the Federal Circuit, we conclude that it was.
IV
The language of § 107, the “fair use” provision, reflects its judge-made origins. It is
similar to that used by Justice Story in Folsom v. Marsh, 9 F. Cas. 342, 348 (No. 4,901)
(CC Mass. 1841). See Campbell, 510 U. S., at 576 (noting how “Justice Story’s
summary [of fair use considerations] is discernable” in § 107). That background, as
well as modern courts’ use of the doctrine, makes clear that the concept is flexible,
that courts must apply it in light of the sometimes conflicting aims of copyright law,

584

and that its application may well vary depending upon context. Thus, copyright’s
protection may be stronger where the copyrighted material is fiction, not fact, where
it consists of a motion picture rather than a news broadcast, or where it serves an
artistic rather than a utilitarian function. See, e.g., Stewart, 495 U.S., at 237-238; Harper
& Row, 471 U.S., at 563; see also 4 M. Nimmer & D. Nimmer, Copyright § 13.05[A]
[2][a] (2019) (hereinafter Nimmer on Copyright) (“Copyright protection is narrower,
and the corresponding application of the fair use defense greater, in the case of
factual works than in the case of works of fiction or fantasy”). Similarly, courts have
held that in some circumstances, say, where copyrightable material is bound up with
uncopyrightable material, copyright protection is “thin.” See Feist, 499 U.S., at 349
(noting that “the copyright in a factual compilation is thin”); see also Experian
Information Solutions, Inc. v. Nationwide Marketing Servs. Inc., 893 F. 3d 1176, 1186 (CA9
2018) (“In the context of factual compilations, … there can be no infringement
unless the works are virtually identical”).
Generically speaking, computer programs differ from books, films, and many other
“literary works” in that such programs almost always serve functional purposes.
These and other differences have led at least some judges to complain that “applying
copyright law to computer programs is like assembling a jigsaw puzzle whose pieces
do not quite fit.” Lotus Development Corp. v. Borland Int’l, Inc., 49 F. 3d 807, 820 (CA1
1995) (Boudin, J., concurring).
These differences also led Congress to think long and hard about whether to grant
computer programs copyright protection. In 1974, Congress established a National
Commission on New Technological Uses of Copyrighted Works (CONTU) to look
into the matter. §§ 201-208, 88 Stat. 1873-1875. After several years of research,
CONTU concluded that the “availability of copyright protection for computer
programs is desirable.” Final Report 11 (July 31, 1978). At the same time, it
recognized that computer programs had unique features. Mindful of not “unduly
burdening users of programs and the general public,” it wrote that copyright “should
not grant anyone more economic power than is necessary to achieve the incentive to
create.” Id., at 12. And it believed that copyright’s existing doctrines (e.g., fair use),
applied by courts on a case-by-case basis, could prevent holders from using
copyright to stifle innovation. Ibid. (“Relatively few changes in the Copyright Act of
1976 are required to attain these objectives”). Congress then wrote computer
program protection into the law.
The upshot, in our view, is that fair use can play an important role in determining the
lawful scope of a computer program copyright, such as the copyright at issue here. It
can help to distinguish among technologies. It can distinguish between expressive
and functional features of computer code where those features are mixed. It can
focus on the legitimate need to provide incentives to produce copyrighted material
while examining the extent to which yet further protection creates unrelated or
illegitimate harms in other markets or to the development of other products. In a
word, it can carry out its basic purpose of providing a context-based check that can
help to keep a copyright monopoly within its lawful bounds. See House Report pp.
65-66 (1976) (explaining that courts are to “adapt the doctrine [of fair use] to
particular situations on a case-by-case basis” and in light of “rapid technological
change”); see, e.g., Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F. 3d 522,

585

543-545 (CA6 2004) (discussing fair use in the context of copying to preserve
compatibility); Sony Computer Entertainment, Inc. v. Connectix Corp., 203 F. 3d 596, 603608 (CA9 2000) (applying fair use to intermediate copying necessary to reverse
engineer access to unprotected functional elements within a program); Sega Enterprises
Ltd. v. Accolade, Inc., 977 F. 2d 1510, 1521-1527 (CA9 1992) (holding that wholesale
copying of copyrighted code as a preliminary step to develop a competing product
was a fair use).
JUSTICE THOMAS’ thoughtful dissent offers a very different view of how (and
perhaps whether) fair use has any role to play for computer programs. We are told
that no attempt to distinguish among computer code is tenable when considering
“the nature of the work,” even though there are important distinctions in the ways
that programs are used and designed, (“The declaring code is what attracted
programmers”). We are told that no reuse of code in a new program will ever have a
valid “purpose and character,” even though the reasons for copying computer code
may vary greatly and differ from those applicable to other sorts of works, ibid.
(accepting that copying as part of “reverse engineer[ing] a system to ensure
compatibility” could be a valid purpose). And we are told that our fair use analysis
must prioritize certain factors over others, even though our case law instructs that
fair use depends on the context, see Campbell, 510 U.S., at 577-578.
We do not understand Congress, however, to have shielded computer programs
from the ordinary application of copyright’s limiting doctrines in this way. By
defining computer programs in § 101, Congress chose to place this subject matter
within the copyright regime. Like other protected works, that means that the owners
of computer programs enjoy the exclusive rights set forth in the Act, including the
right to “reproduce [a] copyrighted work” or to “prepare derivative works.” 17 U.S.C.
§ 106. But that also means that exclusive rights in computer programs are limited like
any other works. Just as fair use distinguishes among books and films, which are
indisputably subjects of copyright, so too must it draw lines among computer
programs. And just as fair use takes account of the market in which scripts and
paintings are bought and sold, so too must it consider the realities of how
technological works are created and disseminated. We do not believe that an
approach close to “all or nothing” would be faithful to the Copyright Act’s overall
design.
V
At the outset, Google argues that “fair use” is a question for a jury to decide; here
the jury decided the question in Google’s favor; and we should limit our review to
determining whether “substantial evidence” justified the jury’s decision. The Federal
Circuit disagreed. It thought that the “fair use” question was a mixed question of fact
and law; that reviewing courts should appropriately defer to the jury’s findings of
underlying facts; but that the ultimate question whether those facts showed a “fair
use” is a legal question for judges to decide de novo.
We agree with the Federal Circuit’s answer to this question. We have said, “fair use is
a mixed question of law and fact.” Harper & Row, 471 U. S., at 560. We have
explained that a reviewing court should try to break such a question into its separate
factual and legal parts, reviewing each according to the appropriate legal standard.

586

But when a question can be reduced no further, we have added that “the standard of
review for a mixed question all depends— on whether answering it entails primarily
legal or factual work.” U.S. Bank N.A. v. Village at Lakeridge, LLC (2018).
In this case, the ultimate “fair use” question primarily involves legal work. “Fair use”
was originally a concept fashioned by judges. Folsom, 9 F. Cas., at 348. Our cases still
provide legal interpretations of the fair use provision. And those interpretations
provide general guidance for future cases. See, e.g., Campbell, 510 U. S., at 592-593
(describing kinds of market harms that are not the concern of copyright); Harper &
Row, 471 U.S., at 564 (“scope of fair use is narrower with respect to unpublished
works”); Sony, 464 U.S., at 451 (wholesale copying aimed at creating a market
substitute is presumptively unfair). This type of work is legal work. U.S. Bank,
(“When applying the law involves developing auxiliary legal principles for use in
other cases[,] appellate courts should typically review a decision de novo”).
Applying a legal “fair use” conclusion may, of course, involve determination of
subsidiary factual questions, such as “whether there was harm to the actual or
potential markets for the copyrighted work” or “how much of the copyrighted work
was copied.” 886 F. 3d, at 1196; see, e.g., Peter F. Gaito Architecture, LLC v. Simone
Development Corp., 602 F. 3d 57, 63 (CA2 2010) (noting that in an infringement suit
“the question of substantial similarity typically presents an extremely close question
of fact”). In this case the Federal Circuit carefully applied the fact/law principles we
set forth in U.S. Bank, leaving factual determinations to the jury and reviewing the
ultimate question, a legal question, de novo.
Next, Google argues that the Federal Circuit’s approach violates the Seventh
Amendment. The Amendment both requires that “the right of trial by jury . . . be
preserved” and forbids courts to “re-examin[e]” any “fact tried by a jury.” U.S.
Const., Amdt. 7; see also Gasperini v. Center for Humanities, Inc., 518 U. S. 415, 432-433
(1996). The Reexamination Clause is no bar here, however, for, as we have said, the
ultimate question here is one of law, not fact. It does not violate the Reexamination
Clause for a court to determine the controlling law in resolving a challenge to a jury
verdict, as happens any time a court resolves a motion for judgment as a matter of
law.
Nor is Google correct that “the right of trial by jury” includes the right to have a jury
resolve a fair use defense. That Clause is concerned with “the particular trial decision”
at issue. Markman v. Westview Instruments, Inc., 517 U. S. 370, 376 (1996). Even though
it is possible to find pre-Revolutionary English cases in which a judge sent related
questions like fair abridgment to a jury, those questions were significantly different
from the “fair use” doctrine as courts apply it today. See, e.g., Gyles v. Wilcox, 2 Atk.
141, 142-144 (Ch. 1740) (asking the Court to resolve the narrow question whether a
shortened work could be considered a new work); Sayre v. Moore, 1 East 361 (K.B.
1785) (discussing the jury’s role in resolving whether copying constituted
infringement). As far as contemporary fair use is concerned, we have described the
doctrine as an “equitable,” not a “legal,” doctrine. We have found no case suggesting
that application of U.S. Bank here would fail “to preserve the substance of the
common-law [jury trial] right as it existed in 1791.” Markman, 517 U. S., at 376.
VI

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We turn now to the basic legal question before us: Was Google’s copying of the Sun
Java API, specifically its use of the declaring code and organizational structure for 37
packages of that API, a “fair use.” In answering this question, we shall consider the
four factors set forth in the fair use statute as we find them applicable to the kind of
computer programs before us. We have reproduced those four statutory factors
supra, at 13-14. For expository purposes, we begin with the second.
A. “The Nature of the Copyrighted Work”
The Sun Java API is a “user interface.” It provides a way through which users (here
the programmers) can “manipulate and control” task-performing computer
programs “via a series of menu commands.” Lotus Development Corp., 49 F. 3d, at 809.
The API reflects Sun’s division of possible tasks that a computer might perform into
a set of actual tasks that certain kinds of computers actually will perform. Sun
decided, for example, that its API would call up a task that compares one integer
with another to see which is the larger. Sun’s API (to our knowledge) will not call up
the task of determining which great Arabic scholar decided to use Arabic numerals
(rather than Roman numerals) to perform that “larger integer” task. No one claims
that the decisions about what counts as a task are themselves copyrightable—
although one might argue about decisions as to how to label and organize such tasks
(e.g., the decision to name a certain task “max” or to place it in a class called “Math.”
Cf. Baker v. Selden, 101 U. S. 99 (1880)).
As discussed above, we can think of the technology as having three essential parts.
First, the API includes “implementing code,” which actually instructs the computer
on the steps to follow to carry out each task. Google wrote its own programs
(implementing programs) that would perform each one of the tasks that its API calls
up.
Second, the Sun Java API associates a particular command, called a “method call,”
with the calling up of each task. The symbols java.lang., for example, are part of the
command that will call up the program (whether written by Sun or, as here, by
Google) that instructs the computer to carry out the “larger number” operation.
Oracle does not here argue that the use of these commands by programmers itself
violates its copyrights.
Third, the Sun Java API contains computer code that will associate the writing of a
method call with particular “places” in the computer that contain the needed
implementing code. This is the declaring code. The declaring code both labels the
particular tasks in the API and organizes those tasks, or “methods,” into “packages”
and “classes.” We have referred to this organization, by way of rough analogy, as file
cabinets, drawers, and files. Oracle does claim that Google’s use of the Sun Java
API’s declaring code violates its copyrights.
The declaring code at issue here resembles other copyrighted works in that it is part
of a computer program. Congress has specified that computer programs are subjects
of copyright. It differs, however, from many other kinds of copyrightable computer
code. It is inextricably bound together with a general system, the division of
computing tasks, that no one claims is a proper subject of copyright. It is inextricably
bound up with the idea of organizing tasks into what we have called cabinets,
drawers, and files, an idea that is also not copyrightable. It is inextricably bound up
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with the use of specific commands known to programmers, known here as method
calls (such as java.lang.Math.max, etc.), that Oracle does not here contest. And it is
inextricably bound up with implementing code, which is copyrightable but was not
copied.
Moreover, the copied declaring code and the uncopied implementing programs call
for, and reflect, different kinds of capabilities. A single implementation may walk a
computer through dozens of different steps. To write implementing programs,
witnesses told the jury, requires balancing such considerations as how quickly a
computer can execute a task or the likely size of the computer’s memory. One
witness described that creativity as “magic” practiced by an API developer when he
or she worries “about things like power management” for devices that “run on a
battery.” This is the very creativity that was needed to develop the Android software
for use not in laptops or desktops but in the very different context of smartphones.
The declaring code (inseparable from the programmer’s method calls) embodies a
different kind of creativity. Sun Java’s creators, for example, tried to find declaring
code names that would prove intuitively easy to remember. They wanted to attract
programmers who would learn the system, help to develop it further, and prove
reluctant to use another. See post, at 10 (“Declaring code . . . is user facing. It must
be designed and organized in a way that is intuitive and understandable to developers
so that they can invoke it”). Sun’s business strategy originally emphasized the
importance of using the API to attract programmers. It sought to make the API
“open” and “then . . . compete on implementations.” The testimony at trial was
replete with examples of witnesses drawing this critical line between the usercentered declaratory code and the innovative implementing code.
These features mean that, as part of a user interface, the declaring code differs to
some degree from the mine run of computer programs. Like other computer
programs, it is functional in nature. But unlike many other programs, its use is
inherently bound together with uncopyrightable ideas (general task division and
organization) and new creative expression (Android’s implementing code). Unlike
many other programs, its value in significant part derives from the value that those
who do not hold copyrights, namely, computer programmers, invest of their own
time and effort to learn the API’s system. And unlike many other programs, its value
lies in its efforts to encourage programmers to learn and to use that system so that
they will use (and continue to use) Sun-related implementing programs that Google
did not copy.
Although copyrights protect many different kinds of writing, Leval 1116, we have
emphasized the need to “recogni[ze] that some works are closer to the core of
[copyright] than others,” Campbell, 510 U. S., at 586. In our view, for the reasons just
described, the declaring code is, if copyrightable at all, further than are most
computer programs (such as the implementing code) from the core of copyright.
That fact diminishes the fear, expressed by both the dissent and the Federal Circuit,
that application of “fair use” here would seriously undermine the general copyright
protection that Congress provided for computer programs. And it means that this
factor, “the nature of the copyrighted work,” points in the direction of fair use.

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B. “The Purpose and Character of the Use”
In the context of fair use, we have considered whether the copier’s use “adds
something new, with a further purpose or different character, altering” the
copyrighted work “with new expression, meaning or message.” Id., at 579.
Commentators have put the matter more broadly, asking whether the copier’s use
“fulfill[s] the objective of copyright law to stimulate creativity for public illumination.”
Leval 1111. In answering this question, we have used the word “transformative” to
describe a copying use that adds something new and important. Campbell, 510 U. S.,
at 579. An artistic painting might, for example, fall within the scope of fair use even
though it precisely replicates a copyrighted advertising logo to make a comment
about consumerism. Netanel, Making Sense of Fair Use, 15 Lewis & Clark Law Review
715, 746 (2011)). Or, as we held in Campbell, a parody can be transformative because
it comments on the original or criticizes it, for “parody needs to mimic an original to
make its point.” 510 U.S., at 580-581.
Google copied portions of the Sun Java API precisely, and it did so in part for the
same reason that Sun created those portions, namely, to enable programmers to call
up implementing programs that would accomplish particular tasks. But since virtually
any unauthorized use of a copyrighted computer program (say, for teaching or
research) would do the same, to stop here would severely limit the scope of fair use
in the functional context of computer programs. Rather, in determining whether a
use is “transformative,” we must go further and examine the copying’s more
specifically described “purpose[s]” and “character.” 17 U.S.C. § 107(1).
Here Google’s use of the Sun Java API seeks to create new products. It seeks to
expand the use and usefulness of Android-based smartphones. Its new product
offers programmers a highly creative and innovative tool for a smartphone
environment. To the extent that Google used parts of the Sun Java API to create a
new platform that could be readily used by programmers, its use was consistent with
that creative “progress” that is the basic constitutional objective of copyright itself.
Cf. Feist, 499 U.S., at 349-350 (“The primary objective of copyright is not to reward
the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts’”
(quoting U. S. Const., Art. I, § 8, cl. 8)).
The jury heard that Google limited its use of the Sun Java API to tasks and specific
programming demands related to Android. It copied the API (which Sun created for
use in desktop and laptop computers) only insofar as needed to include tasks that
would be useful in smartphone programs. And it did so only insofar as needed to
allow programmers to call upon those tasks without discarding a portion of a familiar
programming language and learning a new one. To repeat, Google, through Android,
provided a new collection of tasks operating in a distinct and different computing
environment. Those tasks were carried out through the use of new implementing
code (that Google wrote) designed to operate within that new environment. Some of
the amici refer to what Google did as “reimplementation,” defined as the “building
of a system . . . that repurposes the same words and syntaxes” of an existing
system—in this case so that programmers who had learned an existing system could
put their basic skills to use in a new one. Brief for R Street Institute et al. as Amici
Curiae 2.

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The record here demonstrates the numerous ways in which reimplementing an
interface can further the development of computer programs. The jury heard that
shared interfaces are necessary for different programs to speak to each other. App.
125 (“We have to agree on the APIs so that the application I write to show a movie
runs on your device”). It heard that the reimplementation of interfaces is necessary if
programmers are to be able to use their acquired skills. Id., at 191 (“If the API labels
change, then either the software wouldn’t continue to work anymore or the
developer . . . would have to learn a whole new language to be able to use these API
labels”). It heard that the reuse of APIs is common in the industry. It heard that Sun
itself had used pre-existing interfaces in creating Java. And it heard that Sun
executives thought that widespread use of the Java programming language, including
use on a smartphone platform, would benefit the company.
Amici supporting Google have summarized these same points—points that
witnesses explained to the jury. See, e.g., Brief for Copyright Scholars as Amici Curiae
25 (“The portions of Java SE that Google reimplemented may have helped preserve
consistency of use within the larger Java developer community”); Brief for Microsoft
Corporation as Amicus Curiae 22 (“Allowing reasonable fair use of functional code
enables innovation that creates new opportunities for the whole market to grow”);
Brief for 83 Computer Scientists as Amici Curiae 20 (“Reimplementing interfaces
fueled widespread adoption of popular programming languages”); Brief for R Street
Institute et al. as Amici Curiae 15-20 (describing Oracle’s reimplementation of other
APIs); see also Brief for American Antitrust Institute as Amicus Curiae 7 (“Copyright
on largely functional elements of software that [have] become an industry standard
gives a copyright holder anti-competitive power”).
These and related facts convince us that the “purpose and character” of Google’s
copying was transformative—to the point where this factor too weighs in favor of
fair use.
There are two other considerations that are often taken up under the first factor:
commerciality and good faith. The text of § 107 includes various noncommercial
uses, such as teaching and scholarship, as paradigmatic examples of privileged
copying. There is no doubt that a finding that copying was not commercial in nature
tips the scales in favor of fair use. But the inverse is not necessarily true, as many
common fair uses are indisputably commercial. For instance, the text of § 107
includes examples like “news reporting,” which is often done for commercial profit.
So even though Google’s use was a commercial endeavor—a fact no party
disputed—that is not dispositive of the first factor, particularly in light of the
inherently transformative role that the reimplementation played in the new Android
system.
As for bad faith, our decision in Campbell expressed some skepticism about whether
bad faith has any role in a fair use analysis. 510 U.S., at 585, n. 18. We find this
skepticism justifiable, as “copyright is not a privilege reserved for the well-behaved.”
Leval 1126. We have no occasion here to say whether good faith is as a general
matter a helpful inquiry. We simply note that given the strength of the other factors
pointing toward fair use and the jury finding in Google’s favor on hotly contested
evidence, that fact-bound consideration is not determinative in this context.

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C. “The Amount and Substantiality of the Portion Used”
If one considers the declaring code in isolation, the quantitative amount of what
Google copied was large. Google copied the declaring code for 37 packages of the
Sun Java API, totaling approximately 11,500 lines of code. Those lines of code
amount to virtually all the declaring code needed to call up hundreds of different
tasks. On the other hand, if one considers the entire set of software material in the
Sun Java API, the quantitative amount copied was small. The total set of Sun Java
API computer code, including implementing code, amounted to 2.86 million lines, of
which the copied 11,500 lines were only 0.4 percent.
The question here is whether those 11,500 lines of code should be viewed in
isolation or as one part of the considerably greater whole. We have said that even a
small amount of copying may fall outside of the scope of fair use where the excerpt
copied consists of the “‘heart’” of the original work’s creative expression. Harper &
Row, 471 U. S., at 564-565. On the other hand, copying a larger amount of material
can fall within the scope of fair use where the material copied captures little of the
material’s creative expression or is central to a copier’s valid purpose. See, e.g.,
Campbell, 510 U. S., at 588; New Era Publications Int’l, ApS v. Carol Publishing Group, 904
F. 2d 152, 158 (CA2 1990). If a defendant had copied one sentence in a novel, that
copying may well be insubstantial. But if that single sentence set forth one of the
world’s shortest short stories—“When he awoke, the dinosaur was still there.”—the
question looks much different, as the copied material constitutes a small part of the
novel but the entire short story. See A. Monterroso, El Dinosaurio, in Complete
Works & Other Stories 42 (E. Grossman transl. 1995). (In the original Spanish, the
story reads: “Cuando despertó, el dinosaurio todavía estaba allí.”)
Several features of Google’s copying suggest that the better way to look at the
numbers is to take into account the several million lines that Google did not copy.
For one thing, the Sun Java API is inseparably bound to those task-implementing
lines. Its purpose is to call them up. For another, Google copied those lines not
because of their creativity, their beauty, or even (in a sense) because of their purpose.
It copied them because programmers had already learned to work with the Sun Java
API’s system, and it would have been difficult, perhaps prohibitively so, to attract
programmers to build its Android smartphone system without them. Further,
Google’s basic purpose was to create a different task-related system for a different
computing environment (smartphones) and to create a platform—the Android
platform—that would help achieve and popularize that objective. The “substantiality”
factor will generally weigh in favor of fair use where, as here, the amount of copying
was tethered to a valid, and transformative, purpose. See Campbell, 510 U.S., at 586587 (explaining that the factor three “enquiry will harken back to the first of the
statutory factors, for … the extent of permissible copying varies with the purpose
and character of the use”).
We do not agree with the Federal Circuit’s conclusion that Google could have
achieved its Java-compatibility objective by copying only the 170 lines of code that
are “necessary to write in the Java language.” 886 F. 3d, at 1206. In our view, that
conclusion views Google’s legitimate objectives too narrowly. Google’s basic
objective was not simply to make the Java programming language usable on its
Android systems. It was to permit programmers to make use of their knowledge and
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experience using the Sun Java API when they wrote new programs for smartphones
with the Android platform. In principle, Google might have created its own,
different system of declaring code. But the jury could have found that its doing so
would not have achieved that basic objective. In a sense, the declaring code was the
key that it needed to unlock the programmers’ creative energies. And it needed those
energies to create and to improve its own innovative Android systems.
We consequently believe that this “substantiality” factor weighs in favor of fair use.
D. Market Effects
The fourth statutory factor focuses upon the “effect” of the copying in the “market
for or value of the copyrighted work.” 17 U. S. C. § 107(4). Consideration of this
factor, at least where computer programs are at issue, can prove more complex than
at first it may seem. It can require a court to consider the amount of money that the
copyright owner might lose. As we pointed out in Campbell, “verbatim copying of the
original in its entirety for commercial purposes” may well produce a market
substitute for an author’s work. 510 U.S., at 591. Making a film of an author’s book
may similarly mean potential or presumed losses to the copyright owner. Those
losses normally conflict with copyright’s basic objective: providing authors with
exclusive rights that will spur creative expression.
But a potential loss of revenue is not the whole story. We here must consider not
just the amount but also the source of the loss. As we pointed out in Campbell, a
“lethal parody, like a scathing theatre review,” may “kill demand for the original.” Id.,
at 591-592. Yet this kind of harm, even if directly translated into foregone dollars, is
not “cognizable under the Copyright Act.” Id., at 592.
Further, we must take into account the public benefits the copying will likely
produce. Are those benefits, for example, related to copyright’s concern for the
creative production of new expression? Are they comparatively important, or
unimportant, when compared with dollar amounts likely lost (taking into account as
well the nature of the source of the loss)? Cf. MCA, INC. v. Wilson, 677 F. 2d 180,
183 (CA2 1981) (calling for a balancing of public benefits and losses to copyright
owner under this factor).
We do not say that these questions are always relevant to the application of fair use,
not even in the world of computer programs. Nor do we say that these questions are
the only questions a court might ask. But we do find them relevant here in helping to
determine the likely market effects of Google’s reimplementation.
As to the likely amount of loss, the jury could have found that Android did not harm
the actual or potential markets for Java SE. And it could have found that Sun itself
(now Oracle) would not have been able to enter those markets successfully whether
Google did, or did not, copy a part of its API. First, evidence at trial demonstrated
that, regardless of Android’s smartphone technology, Sun was poorly positioned to
succeed in the mobile phone market. The jury heard ample evidence that Java SE’s
primary market was laptops and desktops. It also heard that Sun’s many efforts to
move into the mobile phone market had proved unsuccessful. As far back as 2006,
prior to Android’s release, Sun’s executives projected declining revenue for mobile
phones because of emerging smartphone technology. When Sun’s former CEO was

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asked directly whether Sun’s failure to build a smartphone was attributable to
Google’s development of Android, he answered that it was not. Given the evidence
showing that Sun was beset by business challenges in developing a mobile phone
product, the jury was entitled to agree with that assessment.
Second, the jury was repeatedly told that devices using Google’s Android platform
were different in kind from those that licensed Sun’s technology. For instance,
witnesses explained that the broader industry distinguished between smartphones
and simpler “feature phones.” As to the specific devices that used Sun-created
software, the jury heard that one of these phones lacked a touchscreen, while another
did not have a QWERTY keyboard. For other mobile devices, the evidence showed
that simpler products, like the Kindle, used Java software, while more advanced
technology, like the Kindle Fire, were built on the Android operating system. This
record evidence demonstrates that, rather than just “repurposing [Sun’s] code from
larger computers to smaller computers,” Google’s Android platform was part of a
distinct (and more advanced) market than Java software.
Looking to these important differences, Google’s economic expert told the jury that
Android was not a market substitute for Java’s software. As he explained, “the two
products are on very different devices,” and the Android platform, which offers “an
entire mobile operating stack,” is a “very different type of product” than Java SE,
which is “just an applications programming framework.” Taken together, the
evidence showed that Sun’s mobile phone business was declining, while the market
increasingly demanded a new form of smartphone technology that Sun was never
able to offer.
Finally, the jury also heard evidence that Sun foresaw a benefit from the broader use
of the Java programming language in a new platform like Android, as it would
further expand the network of Java-trained programmers. (“Once an API starts
getting reimplemented, you know it has succeeded”). In other words, the jury could
have understood Android and Java SE as operating in two distinct markets. And
because there are two markets at issue, programmers learning the Java language to
work in one market (smartphones) are then able to bring those talents to the other
market (laptops). See 4 Nimmer on Copyright § 13.05[A][4] (explaining that factor
four asks what the impact of “widespread conduct of the sort engaged in by the
defendant” would be on the market for the present work).
Sun presented evidence to the contrary. Indeed, the Federal Circuit held that the
“market effects” factor militated against fair use in part because Sun had tried to
enter the Android market. (Sun sought licensing agreement with Google). But those
licensing negotiations concerned much more than 37 packages of declaring code,
covering topics like “the implementation of [Java’s] code” and “branding and
cooperation” between the firms. See 4 Nimmer on Copyright § 13.05[A][4]
(cautioning against the “danger of circularity posed” by considering unrealized
licensing opportunities because “it is a given in every fair use case that plaintiff
suffers a loss of a potential market if that potential is defined as the theoretical
market for licensing the very use at bar”). In any event, the jury’s fair use
determination means that neither Sun’s effort to obtain a license nor Oracle’s
conflicting evidence can overcome evidence indicating that, at a minimum, it would

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have been difficult for Sun to enter the smartphone market, even had Google not
used portions of the Sun Java API.
On the other hand, Google’s copying helped Google make a vast amount of money
from its Android platform. And enforcement of the Sun Java API copyright might
give Oracle a significant share of these funds. It is important, however, to consider
why and how Oracle might have become entitled to this money. When a new
interface, like an API or a spreadsheet program, first comes on the market, it may
attract new users because of its expressive qualities, such as a better visual screen or
because of its superior functionality. As time passes, however, it may be valuable for
a different reason, namely, because users, including programmers, are just used to it.
They have already learned how to work with it. See Lotus Development Corp., 49 F. 3d,
at 821 (Boudin, J., concurring).
The record here is filled with evidence that this factor accounts for Google’s desire
to use the Sun Java API. This source of Android’s profitability has much to do with
third parties’ (say, programmers’) investment in Sun Java programs. It has
correspondingly less to do with Sun’s investment in creating the Sun Java API. We
have no reason to believe that the Copyright Act seeks to protect third parties’
investment in learning how to operate a created work. Cf. Campbell, 510 U. S., at 591592 (discussing the need to identify those harms that are “cognizable under the
Copyright Act”).
Finally, given programmers’ investment in learning the Sun Java API, to allow
enforcement of Oracle’s copyright here would risk harm to the public. Given the
costs and difficulties of producing alternative APIs with similar appeal to
programmers, allowing enforcement here would make of the Sun Java API’s
declaring code a lock limiting the future creativity of new programs. Oracle alone
would hold the key. The result could well prove highly profitable to Oracle (or other
firms holding a copyright in computer interfaces). But those profits could well flow
from creative improvements, new applications, and new uses developed by users
who have learned to work with that interface. To that extent, the lock would
interfere with, not further, copyright’s basic creativity objectives. See Connectix Corp.,
203 F. 3d, at 607; see also Sega Enterprises, 977 F. 2d, at 1523-1524 (“An attempt to
monopolize the market by making it impossible for others to compete runs counter
to the statutory purpose of promoting creative expression”); Lexmark Int’l, 387 F. 3d,
at 544 (noting that where a subsequent user copied a computer program to foster
functionality, it was not exploiting the programs “commercial value as a copyrighted
work” (emphasis in original)). After all, “copyright supplies the economic incentive to
[both] create and disseminate ideas,” Harper & Row, 471 U. S., at 558, and the
reimplementation of a user interface allows creative new computer code to more
easily enter the market.
The uncertain nature of Sun’s ability to compete in Android’s market place, the
sources of its lost revenue, and the risk of creativity-related harms to the public,
when taken together, convince that this fourth factor—market effects— also weighs
in favor of fair use.
***

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The fact that computer programs are primarily functional makes it difficult to apply
traditional copyright concepts in that technological world. See Lotus Development Corp.,
49 F. 3d, at 820 (Boudin, J., concurring). In doing so here, we have not changed the
nature of those concepts. We do not overturn or modify our earlier cases involving
fair use—cases, for example, that involve “knockoff” products, journalistic writings,
and parodies. Rather, we here recognize that application of a copyright doctrine such
as fair use has long proved a cooperative effort of Legislatures and courts, and that
Congress, in our view, intended that it so continue. As such, we have looked to the
principles set forth in the fair use statute, § 107, and set forth in our earlier cases, and
applied them to this different kind of copyrighted work.
It is so ordered.
We reach the conclusion that in this case, where Google reimplemented a user
interface, taking only what was needed to allow users to put their accrued talents to
work in a new and transformative program, Google’s copying of the Sun Java API
was a fair use of that material as a matter of law. The Federal Circuit’s contrary
judgment is reversed, and the case is remanded for further proceedings in conformity
with this opinion.
JUSTICE BARRETT took no part in the consideration or decision of this case.
APPENDIXES
A
Computer System Diagram
Some readers might find it helpful to start with an explanation of what a “software
platform” is. Put simply, a software platform collects all of the software tools that a
programmer may need to build computer programs. The Android platform, for
instance, includes an “operating system,” “core libraries,” and a “virtual machine,”
among other tools. App. 197-198.
The diagram below illustrates the general features of a standard computer system,
with the dotted line reflecting the division between a computer’s hardware and its
software. (It is not intended to reflect any specific technology at issue in this case.)

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J. Garrido & R. Schlesinger, Principles of Modern Operating Systems 8 (2008)
(“Figure 1.4. An External View of a Computer System”).
B
Sun Java API Diagram

This image depicts the connection between the three parts of the Sun Java API
technology at issue, using the District Court’s example. Oracle, 872 F. Supp. 2d, at
980-981. The programmer enters a method call to invoke a task from within the API
(the solid arrow). The precise symbols in the method call correspond to a single task,
which is located within a particular class. That class is located within a particular

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package. All of the lines of code that provide that organization and name the
methods, classes, and packages are “declaring code.” For each method, the declaring
code is associated with particular lines of implementing code (the dotted arrow). It is
that implementing code (which Google wrote for its Android API) that actually
instructs the computer in the programmer’s application.
JUSTICE THOMAS, with whom JUSTICE ALITO joins, dissenting.
Oracle spent years developing a programming library that successfully attracted
software developers, thus enhancing the value of Oracle’s products.1
Footnote 1: A different company, Sun, created the library. But because Oracle later purchased Sun,
for simplicity I refer to both companies as Oracle.

Google sought a license to use the library in Android, the operating system it was
developing for mobile phones. But when the companies could not agree on terms,
Google simply copied verbatim 11,500 lines of code from the library. As a result, it
erased 97.5% of the value of Oracle’s partnership with Amazon, made tens of
billions of dollars, and established its position as the owner of the largest mobile
operating system in the world. Despite this, the majority holds that this copying was
fair use.
The Court reaches this unlikely result in large part because it bypasses the antecedent
question clearly before us: Is the software code at issue here protected by the
Copyright Act? The majority purports to assume, without deciding, that the code is
protected. But its fair-use analysis is wholly inconsistent with the substantial
protection Congress gave to computer code. By skipping over the copyrightability
question, the majority disregards half the relevant statutory text and distorts its fairuse analysis. Properly considering that statutory text, Oracle’s code at issue here is
copyrightable, and Google’s use of that copyrighted code was anything but fair.
I
In the 1990s, Oracle created a programming language called Java. Like many
programming languages, Java allows developers to prewrite small subprograms called
“methods.” Methods form the building blocks of more complex programs. This
process is not unlike what legislatures do with statutes. To save space and time,
legislatures define terms and then use those definitions as a shorthand. For example,
the legal definition for “refugee” is more than 300 words long. 8 U.S.C. § 1101(42).
Rather than repeat all those words every time they are relevant, the U.S. Code
encapsulates them all with a single term that it then inserts into each relevant section.
Java methods work similarly. Once a method has been defined, a developer need
only type a few characters (the method name and relevant inputs) to invoke
everything contained in the subprogram. A programmer familiar with prewritten
methods can string many of them together to quickly develop complicated programs
without having to write from scratch all the basic subprograms.
To create Java methods, developers use two kinds of code. The first, “declaring
code,” names the method, defines what information it can process, and defines what
kind of data it can output. It is like the defined term in a statute. The second,

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“implementing code,” includes the step-by-step instructions that make those
methods run.2 It is like the detailed definition in a statute.
Footnote 2: Consider what the relevant text of a simple method—designed to return the largest of
three integers—might look like:
public static int MaxNum (int x, int y, int z) {if (x >= y && x >= z) return x; else if (y >= x && y >=
z) return y; else return z;}
The first line is declaring code that defines the method, including what inputs (integers x, y, and z) it
can process and what it can output (an integer). The remainder is implementing code that checks
which of the inputs is largest and returns the result. Once this code is written, a programmer could
invoke it by typing, for example, "MaxNum (4, 12, 9)."

Oracle’s declaring code was central to its business model. Oracle profited financially
by encouraging developers to create programs written in Java and then charging
manufacturers a fee to embed in their devices the Java software platform needed to
run those programs. To this end, Oracle created a work called Java 2 Platform,
Standard Edition, which included a highly organized library containing about 30,000
methods. Oracle gave developers free access to these methods to encourage them to
write programs for the Java platform. In return, developers were required to make
their programs compatible with the Java platform on any device. Developers were
encouraged to make improvements to the platform, but they were required to release
beneficial modifications to the public. If a company wanted to customize the
platform and keep those customizations secret for business purposes, it had to pay
for a separate license.
By 2005, many companies were racing to develop operating systems for what would
become modern smartphones. Oracle’s strategy had successfully encouraged millions
of programmers to learn Java. As a result, Java software platforms were in the vast
majority of mobile phones. Google wanted to attract those programmers to Android
by including in Android the declaring code with which they were now familiar. But
the founder of Android, Andrew Rubin, understood that the declaring code was
copyrighted, so Google sought a custom license from Oracle. At least four times
between 2005 and 2006, the two companies attempted to negotiate a license, but
they were unsuccessful, in part because of “trust issues.”
When those negotiations broke down, Google simply decided to use Oracle’s code
anyway. Instead of creating its own declaring code—as Apple and Microsoft chose
to do— Google copied verbatim 11,500 lines of Oracle’s declaring code and
arranged that code exactly as Oracle had done. It then advertised Android to device
manufacturers as containing “Core Java Libraries.” Oracle predictably responded by
suing Google for copyright infringement. The Federal Circuit ruled that Oracle’s
declaring code is copyrightable and that Google’s copying of it was not fair use.
II
The Court wrongly sidesteps the principal question that we were asked to answer: Is
declaring code protected by copyright? I would hold that it is.
Computer code occupies a unique space in intellectual property. Copyright law
generally protects works of authorship. Patent law generally protects inventions or
discoveries. A library of code straddles these two categories. It is highly functional
like an invention; yet as a writing, it is also a work of authorship. Faced with
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something that could fit in either space, Congress chose copyright, and it included
declaring code in that protection.
The Copyright Act expressly protects computer code. It recognizes that a “computer
program” is protected by copyright. See 17 U.S.C. §§ 109(b), 117, 506(a). And it
defines “‘computer program’” as “a set of statements or instructions to be used
directly or indirectly in a computer in order to bring about a certain result.” § 101.
That definition clearly covers declaring code—sets of statements that indirectly
perform computer functions by triggering prewritten implementing code.
Even without that express language, declaring code would satisfy the general test for
copyrightability. “Copyright protection subsists . . . in original works of authorship
fixed in any tangible medium of expression.” § 102(a). “Works of authorship
include . . . literary works,” which are “works . . . expressed in words, numbers, or
other verbal or numerical symbols.” §§ 101, 102(a). And a work is “original” if it is
“independently created by the author” and “possesses at least some minimal degree
of creativity.” Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 345
(1991). The lines of declaring code in the Java platform readily satisfy this “extremely
low” threshold. Ibid. First, they are expressed in “words, numbers, or other verbal or
numerical symbols” and are thus works of authorship. § 101. Second, as Google
concedes, the lines of declaring code are original because Oracle could have created
them any number of ways.
Google contends that declaring code is a “method of operation” and thus excluded
from protection by § 102(b). That subsection excludes from copyright protection
“any idea, procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained, illustrated, or
embodied.” This provision codifies the “idea/expression dichotomy” that copyright
protection covers only the “the author’s expression” of an idea, not the idea itself.
Golan v. Holder, 565 U.S. 302, 328 (2012). A property right in the idea itself “can only
be secured, if it can be secured at all, by letters-patent.” Baker v. Selden, 101 U. S. 99,
105 (1880). Thus, for example, a “method of book-keeping” is not protected by
copyright, but the expression describing that accounting method is. Id., at 101-102.
So too, a person who writes a book inventing the idea of declaring code has a
copyright protection in the expression in the book, but not in the idea of declaring
code itself. Google acknowledges that implementing code is protected by the
Copyright Act, but it contends that declaring code is much more functional and thus
is a “method of operation” outside the scope of protection.
That argument fails. As the majority correctly recognizes, declaring code and
implementing code are “inextricably bound” together. Declaring code defines the
scope of a set of implementing code and gives a programmer a way to use it by
shortcut. Because declaring code incorporates implementing code, it has no function
on its own. Implementing code is similar. Absent declaring code, developers would
have to write every program from scratch, making complex programs prohibitively
time consuming to create. The functionality of both declaring code and
implementing code will thus typically rise and fall together.
Google’s argument also cannot account for Congress’ decision to define protected
computer code as “a set of statements or instructions to be used directly or indirectly in

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a computer in order to bring about a certain result.” § 101 (emphasis added). Hence,
Congress rejected any categorical distinction between declaring and implementing
code. Implementing code orders a computer operation directly. Declaring code does
so indirectly by incorporating implementing code. When faced with general language
barring protection for “methods of operation” and specific language protecting
declaring code, the specific governs the general.
This context makes clear that the phrase “method of operation” in § 102(b) does not
remove protection from declaring code simply because it is functional. That
interpretation does not, however, render “method of operation” meaningless. It is
“given more precise content by the neighboring words with which it is associated.”
United States v. Williams, 553 U.S. 285, 294 (2008). Other terms in the same subsection
such as “idea,” “principle,” and “concept” suggest that “method of operation”
covers the functions and ideas implemented by computer code—such as math
functions, accounting methods, or the idea of declaring code— not the specific
expression Oracle created. Oracle cannot copyright the idea of using declaring code,
but it can copyright the specific expression of that idea found in its library.
Google also contends that declaring code is not copyrightable because the “merger
doctrine” bars copyright protection when there is only one way to express an idea.
That argument fails for the same reasons Google’s § 102(b) argument fails. Even if
the doctrine exists, Google admits that it is merely an application of § 102(b). And, in
any event, there may have been only one way for Google to copy the lines of
declaring code, but there were innumerable ways for Oracle to write them. Certainly,
Apple and Microsoft managed to create their own declaring code.
III
The Court inexplicably declines to address copyrightability. Its sole stated reason is
that “technological, economic, and business-related circumstances” are “rapidly
changing.” That, of course, has been a constant where computers are concerned.
Rather than address this principal question, the Court simply assumes that declaring
code is protected and then concludes that every fair-use factor favors Google. I agree
with the majority that Congress did not “shield computer programs from the
ordinary application” of fair use. But the majority’s application of fair use is far from
ordinary. By skipping copyrightability, the majority gets the methodology backward,
causing the Court to sidestep a key conclusion that ineluctably affects the fair-use
analysis: Congress rejected categorical distinctions between declaring and
implementing code. But the majority creates just such a distinction. The result of this
distorting analysis is an opinion that makes it difficult to imagine any circumstance in
which declaring code will remain protected by copyright.
I agree with the majority that, under our precedent, fair use is a mixed question of
fact and law and that questions of law predominate.3
Footnote 3: I would not, however, definitively resolve Google’s argument that the Seventh
Amendment commits the question of fair use to a jury. I tend to agree with the Court that fair use was
not itself necessarily a jury issue when the Constitution was ratified. Google cites cases about “fair
abridgment” but Congress has since made clear that copyright holders have “exclusive rights” over
any “abridgment.” 17 U. S. C. §§ 101, 106. And in any event, judges often declined to refer these

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issues to juries. See, e.g., Gyles v. Wilcox, Folsom v. Marsh. Still, we should not so casually decide this
question when the parties barely addressed it.

Because the jury issued a finding of fair use in favor of Google, we must construe all
factual disputes and inferences in Google’s favor and ask whether the evidence was
sufficient as a matter of law to support the jury’s verdict. But whether a statutory
fair-use factor favors one side or the other is a legal question reviewed de novo.
Congress has established four statutory fair-use factors for courts to weigh. Three
decisively favor Oracle. And even assuming that the remaining factor favors Google,
that factor, without more, cannot legally establish fair use in this context.
The majority holds otherwise—concluding that every factor favors Google—by
relying, in large part, on a distinction it draws between declaring and implementing
code, a distinction that the statute rejects. Tellingly, the majority evaluates the factors
neither in sequential order nor in order of importance (at least two factors are more
important under our precedent5). Instead, it starts with the second factor: the nature
of the copyrighted work. It proceeds in this manner in order to create a distinction
between declaring and implementing code that renders the former less worthy of
protection than the latter. Because the majority’s mistaken analysis rests so heavily on
this factor, I begin with it as well.
Footnote 5: The fourth factor—the effect of Google’s copying on the potential market for Oracle’s
work—is “undoubtedly the single most important element of fair use.” Harper & Row, Publishers, Inc. v.
Nation Enterprises, 471 U. S. 539, 566 (1985). The first factor—the purpose and character of the use,
including whether the use is commercial—is the second-most important because it can prove
dispositive. See id., at 550 (“[In general,] the fair use doctrine has always precluded a use that
`supersede[s] the use of the original’”).

A. The Nature of the Copyrighted Work
This factor requires courts to assess the level of creativity or functionality in the
original work. It generally favors fair use when a copyrighted work is more
“informational or functional” than “creative.” Because code is predominantly
functional, this factor will often favor copying when the original work is computer
code. But because Congress determined that declaring and implementing code are
copyrightable, this factor alone cannot support a finding of fair use.
The majority, however, uses this factor to create a distinction between declaring and
implementing code that in effect removes copyright protection from declaring code.
It concludes that, unlike implementing code, declaring code is far “from the core of
copyright” because it becomes valuable only when third parties (computer
programmers) value it and because it is “inherently bound together with
uncopyrightable ideas.”
Congress, however, rejected this sort of categorical distinction that would make
declaring code less worthy of protection. The Copyright Act protects code that
operates “in a computer in order to bring about a certain result” both “directly”
(implementing code) and “indirectly” (declaring code). § 101. And if anything,
declaring code is closer to the “core of copyright.” Developers cannot even see
implementing code. Implementing code thus conveys no expression to developers.
Declaring code, in contrast, is user facing. It must be designed and organized in a
way that is intuitive and understandable to developers so that they can invoke it.

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Even setting those concerns aside, the majority’s distinction is untenable. True,
declaring code is “inherently bound together with uncopyrightable ideas.” Is
anything not? Books are inherently bound with uncopyrightable ideas—the use of
chapters, having a plot, or including dialogue or footnotes. This does not place
books far “from the core of copyright.” And implementing code, which the majority
concedes is copyrightable, is inherently bound up with “the division of computing
tasks” that cannot be copyrighted.6
Footnote 6: The majority also belittles declaring code by suggesting it is simply a way to organize
implementing code. Not so. Declaring code defines subprograms of implementing code, including by
controlling what inputs they can process. Similarly, the majority is wrong to suggest that the purpose
of declaring code is to connect pre-existing method calls to implementing code. Declaring code
creates the method calls.

We have not discounted a work of authorship simply because it is associated with
noncopyrightable ideas. While ideas cannot be copyrighted, expressions of those
ideas can.
Similarly, it makes no difference that the value of declaring code depends on how
much time third parties invest in learning it. Many other copyrighted works depend
on the same. A Broadway musical script needs actors and singers to invest time
learning and rehearsing it. But a theater cannot copy a script—the rights to which are
held by a smaller theater—simply because it wants to entice actors to switch theaters
and because copying the script is more efficient than requiring the actors to learn a
new one.
What the majority says is true of declaring code is no less true of implementing code.
Declaring code is how programmers access prewritten implementing code. The value
of that implementing code thus is directly proportional to how much programmers
value the associated declaring code. The majority correctly recognizes that declaring
code “is inextricably bound up with implementing code,” but it overlooks the
implications of its own conclusion.
Only after wrongly concluding that the nature of declaring code makes that code
generally unworthy of protection does the Court move on to consider the other
factors. This opening mistake taints the Court’s entire analysis.
B. Market Effects
“[U]ndoubtedly the single most important element of fair use” is the effect of
Google’s copying “‘upon the potential market for or value of [Oracle’s] copyrighted
work.’” Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 566 (1985).
As the Federal Circuit correctly determined, “evidence of actual and potential harm
stemming from Google’s copying was overwhelming.” By copying Oracle’s code to
develop and release Android, Google ruined Oracle’s potential market in at least two
ways.
First, Google eliminated the reason manufacturers were willing to pay to install the
Java platform. Google’s business model differed from Oracle’s. While Oracle earned
revenue by charging device manufacturers to install the Java platform, Google
obtained revenue primarily through ad sales. Its strategy was to release Android to
device manufacturers for free and then use Android as a vehicle to collect data on
consumers and deliver behavioral ads. With a free product available that included
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much of Oracle’s code (and thus with similar programming potential), device
manufacturers no longer saw much reason to pay to embed the Java platform.
For example, before Google released Android, Amazon paid for a license to embed
the Java platform in Kindle devices. But after Google released Android, Amazon
used the cost-free availability of Android to negotiate a 97.5% discount on its license
fee with Oracle. Evidence at trial similarly showed that right after Google released
Android, Samsung’s contract with Oracle dropped from $40 million to about $1
million. Google contests none of this except to say that Amazon used a different
Java platform, Java Micro Edition instead of Java Standard Edition. That difference
is inconsequential because the former was simply a smaller subset of the latter.
Google copied code found in both platforms. The majority does not dispute—or
even mention— this enormous harm.
Second, Google interfered with opportunities for Oracle to license the Java platform
to developers of smartphone operating systems. Before Google copied Oracle’s code,
nearly every mobile phone on the market contained the Java platform. Oracle’s code
was extraordinarily valuable to anybody who wanted to develop smartphones, which
explains why Google tried no fewer than four times to license it. The majority’s
remark that Google also sought other licenses from Oracle, does not change this
central fact. Both parties agreed that Oracle could enter Google’s current market by
licensing its declaring code. But by copying the code and releasing Android, Google
eliminated Oracle’s opportunity to license its code for that use.
The majority writes off this harm by saying that the jury could have found that
Oracle might not have been able to enter the modern smartphone market
successfully.7
Footnote 7: It also suggests that Oracle may have received some incidental benefit from Android. But
even assuming that is true, it would go to the question of damages, not fair use. And there is no
evidence that any benefit came even close to offsetting Oracle’s enormous loss.

But whether Oracle could itself enter that market is only half the picture. We look at
not only the potential market “that creators of original works would in general
develop” but also those potential markets the copyright holder might “license others
to develop.” Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, 592 (1994). A book
author need not be able to personally convert a book into a film so long as he can
license someone else to do so. That Oracle could have licensed its code for use in
Android is undisputed.
Unable to seriously dispute that Google’s actions had a disastrous effect on Oracle’s
potential market, the majority changes course and asserts that enforcing copyright
protection could harm the public by giving Oracle the power to “limit the future
creativity” of programs on Android. But this case concerns only versions of Android
released through November 2014. Google has released six major versions since then.
Only about 7.7% of active Android devices still run the versions at issue. The
majority’s concern about a lock-in effect might carry more weight if this suit
concerned versions of Android widely in use or that will be widely in use. It makes
little sense in a suit about versions that are close to obsolete.
The majority’s concern about a lock-in effect also is speculation belied by history.
First, Oracle never had lock-in power. The majority (again) overlooks that Apple and
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Microsoft created mobile operating systems without using Oracle’s declaring code.
Second, Oracle always made its declaring code freely available to programmers.
There is little reason to suspect Oracle might harm programmers by stopping now.
And third, the majority simply assumes that the jury, in a future suit over current
Android versions, would give Oracle control of Android instead of just awarding
damages or perpetual royalties.
If the majority is going to speculate about what Oracle might do, it at least should
consider what Google has done. The majority expresses concern that Oracle might
abuse its copyright protection (on outdated Android versions) and “‘attempt to
monopolize the market.’” But it is Google that recently was fined a record $5 billion
[by the European Commission] for abusing Android to violate antitrust laws. Google
controls the most widely used mobile operating system in the world. And if
companies may now freely copy libraries of declaring code whenever it is more
convenient than writing their own, others will likely hesitate to spend the resources
Oracle did to create intuitive, well-organized libraries that attract programmers and
could compete with Android. If the majority is worried about monopolization, it
ought to consider whether Google is the greater threat.
By copying Oracle’s work, Google decimated Oracle’s market and created a mobile
operating system now in over 2.5 billion actively used devices, earning tens of
billions of dollars every year. If these effects on Oracle’s potential market favor
Google, something is very wrong with our fair use analysis.
C. The Purpose and Character of the Use
The second-most important factor—“the purpose and character of the use, including
whether such use is of a commercial nature or is for nonprofit educational purposes,”
§ 107(1)—requires us to consider whether use was “commercial” and whether it was
“transformative.” Campbell, 510 U.S., at 578-579. Both aspects heavily favor Oracle.
Begin with the overwhelming commercial nature of Google’s copying. In 2015 alone,
the year before the fair use trial, Google earned $18 billion from Android. That
number has no doubt dramatically increased as Android has grown to dominate the
global market share.9 On this scale, Google’s use of Oracle’s declaring code weighs
heavily—if not decisively—against fair use.
Footnote 9: The real value also may be much higher because Android indirectly boosts other sources
of revenue. For years Google has set its search engine as the default engine on Android. Google can
use that engine to collect reams of data used to deliver behavioral advertisements to consumers on
desktops. Using control over Android to choose a default search engine may seem trivial, but Google
certainly does not think so. According to a Goldman Sachs analysis, Google paid Apple $12 billion to
be the default search engine for Safari, Apple’s web browser, for just one year. Google does not
appear to have disputed this figure.

The majority attempts to dismiss this overwhelming commercial use by noting that
commercial use does “not necessarily” weigh against fair use. True enough.
Commercial use sometimes can be overcome by use that is sufficiently
“transformative.” Campbell, 510 U. S., at 579. But “we cannot ignore [Google’s]
intended purpose of supplanting [Oracle’s] commercially valuable” platform with its
own. Harper, 471 U.S., at 562 (emphasis in original). Even if we could, we have

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never found fair use for copying that reaches into the tens of billions of dollars and
wrecks the copyright holder’s market.
Regardless, Google fares no better on transformative use. A court generally cannot
find fair use unless the copier’s use is transformative.10
Footnote 10: Although “transformative use is not absolutely necessary” every time, Campbell v. AcuffRose Music, Inc., 510 U.S. 569, 579, and n. 11 (1994) (emphasis added), as a general matter “the fair use
doctrine has always precluded a use that ‘supersedes the use of the original,’” Harper, 471 U.S., at 550.

A work is “transformative” if it “adds something new, with a further purpose or
different character, altering the first with new expression, meaning, or message.”
Campbell, 510 U.S., at 579. This question is “guided by the examples [of fair use]
given in the preamble to § 107.” Id., at 578. Those examples include: “criticism,
comment, news reporting, teaching . . ., scholarship, or research.” § 107. Although
these examples are not exclusive, they are illustrative, and Google’s repurposing of
Java code from larger computers to smaller computers resembles none of them.
Google did not use Oracle’s code to teach or reverse engineer a system to ensure
compatibility. Instead, to “avoid the drudgery in working up something fresh,”
Google used the declaring code for the same exact purpose Oracle did. As the
Federal Circuit correctly determined, “there is nothing fair about taking a
copyrighted work verbatim and using it for the same purpose and function as the
original in a competing platform.”
The majority acknowledges that Google used the copied declaring code “for the
same reason” Oracle did. So, by turns, the majority transforms the definition of
“transformative.” Now, we are told, “transformative” simply means—at least for
computer code—a use that will help others “create new products.” (Google’s
copying “can further the development of computer programs”).
That new definition eviscerates copyright. A movie studio that converts a book into
a film without permission not only creates a new product (the film) but enables
others to “create products”—film reviews, merchandise, YouTube highlight reels,
late night television interviews, and the like. Nearly every computer program, once
copied, can be used to create new products. Surely the majority would not say that an
author can pirate the next version of Microsoft Word simply because he can use it to
create new manuscripts.11
Footnote 11: Because the majority’s reasoning would undermine copyright protection for so many
products long understood to be protected, I understand the majority’s holding as a good-fordeclaring-code-only precedent.

Ultimately, the majority wrongly conflates transformative use with derivative use. To
be transformative, a work must do something fundamentally different from the
original. A work that simply serves the same purpose in a new context—which the
majority concedes is true here—is derivative, not transformative. Congress made
clear that Oracle holds “the exclusive rights . . . to prepare derivative works.” §
106(2). Rather than create a transformative product, Google “profit[ed] from
exploitation of the copyrighted material without paying the customary price.” Harper,
471 U. S., at 562.
D. The Amount and Substantiality of the Portion Used

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The statutory fair-use factors also instruct us to consider “the amount and
substantiality of the portion used in relation to the copyrighted work as a whole.” §
107(3). In general, the greater the amount of use, the more likely the copying is
unfair. Ibid. But even if the copier takes only a small amount, copying the “‘heart’”
or “focal points” of a work weighs against fair use, Harper, 471 U.S., at 565-566,
unless “‘no more was taken than necessary’” for the copier to achieve transformative
use, Campbell, 510 U.S., at 589.
Google does not dispute the Federal Circuit’s conclusion that it copied the heart or
focal points of Oracle’s work. The declaring code is what attracted programmers to
the Java platform and why Google was so interested in that code. And Google
copied that code “verbatim,” which weighs against fair use. Harper, 471 U. S., at 565.
The majority does not disagree. Instead, it concludes that Google took no more than
necessary to create new products. That analysis fails because Google’s use is not
transformative. Campbell, 510 U.S., at 586 (recognizing that this fourth factor “will
harken back to the [purpose-and-character] statutory factor”). This factor thus
weighs against Google.
Even if Google’s use were transformative, the majority is wrong to conclude that
Google copied only a small portion of the original work. The majority points out
that the 11,500 lines of declaring code—enough to fill about 600 pages in an
appendix—were just a fraction of the code in the Java platform. But the proper
denominator is declaring code, not all code. A copied work is quantitatively
substantial if it could “serve as a market substitute for the original” work or
“potentially licensed derivatives” of that work. Campbell, 510 U.S., at 587. The
declaring code is what attracted programmers. And it is what made Android a
“market substitute” for “potentially licensed derivatives” of Oracle’s Java platform.
Google’s copying was both qualitatively and quantitatively substantial.
***
In sum, three of the four statutory fair-use factors weigh decidedly against Google.
The nature of the copyrighted work—the sole factor possibly favoring Google—
cannot by itself support a determination of fair use because holding otherwise would
improperly override Congress’ determination that declaring code is copyrightable.12
Footnote 12: To be sure, these factors are not necessarily exclusive, but they are “especially relevant,”
Harper, 471 U.S., at 560; the majority identifies no other relevant factors; and I can think of none that
could overcome the overwhelming weight of these key factors.

IV
The majority purports to save for another day the question whether declaring code is
copyrightable. The only apparent reason for doing so is because the majority cannot
square its fundamentally flawed fair-use analysis with a finding that declaring code is
copyrightable. The majority has used fair use to eviscerate Congress’ considered
policy judgment. I respectfully dissent.

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Notes and questions
(1) Writing for the majority in Google v. Oracle, Justice Breyer was willing to assume “but
purely for argument’s sake, that the entire Sun Java API falls within the definition of that
which can be copyrighted.” Rather than attempting to deal with the paradoxes of software
copyright under the heading of copyrightability, the majority turned to the fair use doctrine.
Justice Breyer said: “The upshot, in our view, is that fair use can play an important role in
determining the lawful scope of a computer program copyright, such as the copyright at
issue here.” The majority’s reservations about the copyrightability of the Java APIs was the
critical context that informed its fair use analysis. Indeed, the majority’s fair use analysis
begins with the nature of the work, the second fair use factor, emphasizing that the unique
conundrum of software copyright was the vital context for the application of the other fair
use factors. Justice Thomas, in dissent, argued that the majority’s fair-use analysis was
“wholly inconsistent with the substantial protection Congress gave to computer code.” And
as he saw it, “[by] skipping over the copyrightability question, the majority disregards half the
relevant statutory text and distorts its fair-use analysis.” Does Google v. Oracle shed any light
on the copyrightability of APIs?

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17. DISTRIBUTION & FIRST SALE
International framework
In theory, an exclusive right of distribution would give the copyright owner the right to
control any use of the copyrighted work that involved a reproduction of the work changing
hands. This is a useful addition to the reproduction right because it regulates downstream
conduct by people who might not be liable for infringing the reproduction right. For
example, if A makes 100 unauthorized copies and sells them to B, B can be sued for
violating the distribution right even if she was not responsible for A’s initial violation. Of
course, giving the sort of ongoing control over particular physical copies to the copyright
owner could cause a host of practical problems. The transaction costs and information costs
involved in checking back with rightsholders for every transfer of a copy of the work would
make it impossible for individuals to know what to do with old books, movies, and CDs
they no longer have any use for.
Every copyright jurisdiction around the world limits the exclusive right of distribution (or its
equivalent) in some way. Most commonly, the distribution right is deemed to have been
“exhausted” by the first sale of any particular physical embodiment of the work. In some
jurisdictions, the distribution right is exhausted by a sale anywhere in the world; in others, a
sale in that particular jurisdiction is required. The European Union takes a regional approach
to exhaustion. The sale of the work in one member nation exhausts the distribution right for
the whole European Union. Books sold in Belgium can be imported into France without the
approval of the copyright owner, but books sold in Bolivia cannot.
These different approaches to exhaustion partly explain why the Berne Convention does not
include a general right of distribution. But note that Berne does recognize a right of
distribution for cinematographic adaptations under Article 14(1). Likewise, the TRIPs
Agreement expressly leaves the issue of exhaustion as a matter for individual member states.
However, the TRIPs Agreement does recognize, in Article 11, a rental rights for authors of
computer programs and cinematographic works, subject to certain limitations.
Berne Convention, Article 14
(1) Authors of literary or artistic works shall have the exclusive right of authorizing:
(i) the cinematographic adaptation and reproduction of these works, and the
distribution of the works thus adapted or reproduced;
(ii) the public performance and communication to the public by wire of the works
thus adapted or reproduced.
(2) The adaptation into any other artistic form of a cinematographic production
derived from literary or artistic works shall, without prejudice to the authorization of
the author of the cinematographic production, remain subject to the authorization
of the authors of the original works.
TRIPs Article 6 (Exhaustion)
For the purposes of dispute settlement under this Agreement … nothing in this
Agreement shall be used to address the issue of the exhaustion of intellectual
property rights.

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TRIPs Article 11 (Rental Rights)
In respect of at least computer programs and cinematographic works, a Member
shall provide authors and their successors in title the right to authorize or to
prohibit the commercial rental to the public of originals or copies of their copyright
works. A Member shall be excepted from this obligation in respect of
cinematographic works unless such rental has led to widespread copying of such
works which is materially impairing the exclusive right of reproduction conferred in
that Member on authors and their successors in title. In respect of computer
programs, this obligation does not apply to rentals where the program itself is not
the essential object of the rental.

The distribution right in the United States
The Copyright Act of 1909 expressly protected the right to “publish” and “vend;” the 1976
Act, in contrast, contains a right to “distribute copies or phonorecords of the copyrighted
work to the public by sale or other transfer of ownership, or by rental, lease, or lending.”
17 U.S. Code § 106
Subject to sections 107 through 122, the owner of copyright under this title has the
exclusive rights to do and to authorize any of the following: …
(3) to distribute copies or phonorecords of the copyrighted work to the public by
sale or other transfer of ownership, or by rental, lease, or lending;

In a simpler technological age, the concept of distributing copies of works to the public was
not complicated, however, digitization and the Internet have made the metaphysics of the
distribution right a bit more interesting. The distribution right is entirely intuitive for what
we tend to think of as “physical books”, i.e., books printed on paper. In the words of the
statute, one distributes a physical book through a transfer of title—“sale or other transfer of
ownership”—or a transfer of possession—“by rental, lease, or lending.” Arguably,
abandonment falls outside the terms of the statute, but that does not seem to have led to
much litigation. Moving from the physical to the digital, it is not immediately obvious
whether a digital transmission, such as downloading an MP3 music file or a piece of software
from an online store, should be thought of as a distribution even though it certainly would
have come within the concept of vending under the 1909 Act.

Distribution by digital transmission?
If we take the words of the Copyright Act at face value, it might seem that digital
transmissions do not implicate the exclusive right to distribute the copyrighted work in
“copies or phonorecords.” But in copyright law, logic and first impressions from the text
often take a backseat to more policy focused and less literal methods of interpretation.
Section 106(3) speaks to the distribution of “copies or phonorecords,” which are defined in
Section 101 as “material objects . . . in which a work is fixed by any method now known or
later developed, and from which the [work/sounds] can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or device.”
17 U.S. Code § 101 – Definitions

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“Copies” are material objects, other than phonorecords, in which a work is fixed by
any method now known or later developed, and from which the work can be
perceived, reproduced, or otherwise communicated, either directly or with the aid of
a machine or device. The term “copies” includes the material object, other than a
phonorecord, in which the work is first fixed.

The transmission of bits over the Internet does not involve the distribution of a material
object. After all, can you really say that something has been distributed if it still exists at its
point of origin? Furthermore, note that Section 106(3) limits the scope of the right to
distributions made “by sale or other transfer of ownership, or by rental, lease, or lending,” all
of which seem to require a change in ownership or possession of a material object. They all
seem to indicate that something moves from transferor to transferee. This does not happen
in digital transmissions. A digital transmission does not divest the sender of her copy of the
relevant file; it merely creates a duplicate at the recipient’s location—there is a reproduction,
but not a change of ownership or possession as these terms are usually understood.
Courts have considered the argument that downloads are not distributions summarized
above and rejected it.175 A sufficient number of courts have held that digital transmissions do
in fact implicate the exclusive right to distribute the copyrighted work that the proposition
should probably be regarded as settled.176 This view is given further weight by the fact that in
New York Times Co. v. Tasini, 533 U.S. 483, 498 (2001) the Court indicated that selling copies
of news articles for download was a violation of the plaintiff’s distribution right.
Why do courts think that file transmission implicates the distribution right?
The opinion in London-Sire Records, Inc. v. Doe 1, 542 F. Supp. 2d 153 (D. Mass. 2008) explains
the logic of this broader interpretation of the distribution right. In London-Sire, the court
notes that electronic files are “material objects” within the meaning of the Copyright Act,
explaining that “any object in which a sound recording can be fixed”—including “the
appropriate segment of [a] hard disk”—qualifies as such. The court holds that electronic file
transfers are “distributions” under Section 106(3) because the purpose of the distribution right
is to “allow the author to control the rate and terms at which copies or phonorecords of the
work become available to the public.” Thus, “while the statute requires that distribution be
of ‘material objects,’ there is no reason to limit ‘distribution’ to processes in which a material
object exists throughout the entire transaction—as opposed to a transaction in which a
material object is created elsewhere at its finish.” In other words, the court concluded that it
is enough that the action creates a new possessor of a material object encoding the work, there is no

175 See e.g. Atlantic Recording Corp. v. Serrano, 2007 WL 4612921, at *3 (S.D. Cal. Dec. 28, 2007) (rejecting the

argument as “unsupported by law and … contrary to the policies underlying the application of copyright law to
internet communications.”)

176 See BMG Rights Mgmt. (US) LLC v. Cox Commc’ns, Inc., 2015 WL 7756130, at *26 (E.D. Va. Dec. 1,

2015) (“Not only can electronic files be ‘material objects,’ but transferring files using a BitTorrent protocol
satisfies the transactional element of distribution.”); Capitol Records, LLC v. ReDigi Inc., 934 F. Supp. 2d 640,
651 (S.D.N.Y. 2013) (“ReDigi”) (“[T]he sale of digital music files on ReDigi’s website infringes Capitol’s
exclusive right of distribution.”); Arista Records LLC v. Usenet.com, Inc., 633 F. Supp. 2d 124, 147 (S.D.N.Y.
2009) (“Usenet.com”) (“[T]he delivery of articles and/or content to download at the request of subscribers can
be the basis of direct infringement of the distribution right.”)

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need that the distributor be dispossessed or that a material object literally passes between
person A and person B.177
In addition to this recipient focused view of distribution, the argument is also supported by
Section 115 of the Act. That provision establishes a compulsory license for making and
distributing phonorecords of nondramatic musical works, repeatedly refers to distribution …
“by means of a digital phonorecord delivery.”
17 U.S. Code § 115. Scope of exclusive rights in nondramatic musical works:
Compulsory license for making and distributing phonorecords
In the case of nondramatic musical works, the exclusive rights provided by clauses
(1) and (3) of section 106, to make and to distribute phonorecords of such works,
are subject to compulsory licensing under the conditions specified by this section.
(a) (1) (A) Conditions for compulsory license.—A person may by complying with
the provisions of this section obtain a compulsory license to make and distribute
phonorecords of a nondramatic musical work, including by means of digital phonorecord
delivery. … (emphasis added)
…
(e) (10) Digital phonorecord delivery.—
The term “digital phonorecord delivery” means each individual delivery of a
phonorecord by digital transmission of a sound recording that results in a specifically
identifiable reproduction by or for any transmission recipient of a phonorecord of that
sound recording, regardless of whether the digital transmission is also a public
performance of the sound recording or any musical work embodied therein, and
includes a permanent download, a limited download, or an interactive stream. …
(emphasis added)

Distribution versus “Making Available”
Whether, to what extent, and how United States law recognizes a “making available right”
has been the source of ongoing confusion. The confusion stems from the apparent
contradiction between, the treaty obligations the United States has undertaken on the one
hand and the language of the distribution right expressed in the Copyright Act on the other
hand.
In the mid-1990s the World Intellectual Property Organization (“WIPO”) and its member
states (including the United States) began discussions on the appropriate protection of
copyrighted works in the newly emerging online environment. These discussions culminated
in the WIPO Internet Treaties—the WIPO Copyright Treaty (“WCT”) and the WIPO
Performances and Phonograms Treaty (“WPPT”).

177 This is probably right. At common law symbolic delivery requires the passing of an object between A and B

such that A ‘feels the wrench of dispossession’ but there is no reason why this is required to determine whether
an act infringes on the copyright owner’s distribution right which is rightly “concerned with the ability of a
transferor to create ownership in someone else—not the transferor’s ability simultaneously to retain his own
ownership.” London-Sire Records, Inc. v. Doe 1 542 F. Supp. 2d 153 (D. Mass. 2008)

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Among other obligations, the WCT and WPPT both require that authors and performers
respectively are to “enjoy the exclusive right of authorizing any communication to the public
of their works, … including the making available to the public of their works[.]” The
complete text of the relevant provision of the WCT follows, and the WPPT provision is
virtually identical:
WIPO Copyright Treaty, Article 8 Right of Communication to the Public
Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii),
11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and
artistic works shall enjoy the exclusive right of authorizing any communication to
the public of their works, by wire or wireless means, including the making available to
the public of their works in such a way that members of the public may access these
works from a place and at a time individually chosen by them. (emphasis added)

Regardless of what the United States has agreed under the WIPO Internet Treaties, it has
not chosen to implement the language of these treaties directly. There is no “Making
Available” right under United States law as such. Rather, copyright owners in the United
States have exclusive rights relating to reproduction, distribution, performance and display—
these rights implement the primary substance of the United States’ obligations under the
WIPO Internet Treaties.
The language in the WIPO Internet Treaties is deliberately imprecise and is frequently
referred to as an “umbrella solution” that gives treaty members flexibility in implementation.
On this reading, it is little more than a matter of preference that in the European Union the
rights of authors with respect to digital transmissions are protected by a broad right of
“communication to the public” while in the United States digital transmissions implicate the
reproduction right, the distribution right, and the performance right, depending on the
circumstances. Moreover, various doctrines of secondary liability for copyright infringement
probably fill any gap between the exclusive rights in Section 106 and the United States’
international treaty obligations.

Extended Discussion: The Copyright Office’s 2016 Making Available Report
Despite the clear text of Section 106(3), the U.S. Copyright Office and some commentators
continue to argue that a making available right is actually an unwritten part of the
distribution right. This issue has particular salience in the context of illegal Internet
filesharing.
As noted above, an unauthorized download is a distribution to the public (and a
reproduction) and thus violates Section 106(3) (and Section 106(1)) of the Copyright Act.
But what if no illegal download has been proven? Does the source of potential illegal
downloads “distribute” them by simply making them available?
There is no Supreme Court authority on this issue. A number of district courts have
assumed, without analysis, that placing copyrighted music files in a share folder on a peer-topeer network violates the copyright owner’s exclusive right of distribution.178 However, the

178 See e.g. Atlantic Recording Corp. v. Anderson, No. H-06-3578, 2008 WL 2316551, at *7–8 (S.D. Tex. Mar.

12, 2008); Motown Record Co. v. DePietro, No. 04-CV-2246, 2007 WL 576284, at *3 (E.D. Pa. Feb. 16, 2007)

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better-reasoned decisions have found exactly the opposite.179 A number of these cases have
held that although a transfer is required, plaintiffs are not required to offer direct proof of a
download to establish distribution, but may do so through circumstantial or investigator
evidence from which it reasonably can be inferred that a download took place.180
The Copyright Office argued in its 2016 report on the making available right that Section
106(3) is properly construed to cover the making available of copies of works to the public
in the form of downloads, regardless of whether the plaintiff proves that an actual download
occurred. In other words, the Copyright Office would treat an offer to distribute as a
distribution.
Copyright Office Making Available Report 2016 at 36
… the Copyright Office concludes that a person who has ‘completed all the steps
necessary for distribution to the public,’ such that members of the public may access
downloadable copies of a work on demand, has engaged in a “distribution” within
the meaning of Section 106(3).”

The Copyright Office relies on two rather strange cases as precedent to support its view:
Diversey v. Schmidly and Hotaling v. Church of Jesus Christ of Latter-Day Saints, but the report
admits (at 25) that neither decision “provides a detailed analysis of the statutory text.” This is
a deft understatement.
In Hotaling v. Jesus Christ of Latter-Day Saints, 118 F.3d 199 (4th Cir. 1997), the defendant’s
library maintained an unauthorized copy of the copyright owner’s work on microfiche. The
Hotaling case arose from the plaintiff copyright owners’ claim that a library operated by the
Latter-Day Saints Church made unauthorized copies of copyrighted genealogical materials
and distributed those materials to its branch libraries. The library did not record public use
of microfiche and therefore the plaintiff had no evidence as to whether the library ever
loaned the microfiche to members of the public.
The Fourth Circuit held that:
when a public library adds a work to its collection, lists the work in its index or
catalog system, and makes the work available to the borrowing or browsing public,
it has completed all the steps necessary for distribution to the public. At that point, members
of the public can visit the library and use the work. (emphasis added)

The court reasoned that

179 BMG Rights Mgmt. (US) LLC v. Cox Commc’ns, Inc., No. 1:14-CV-1611, 2015 WL 7756130, at *27 (E.D.

Va. Dec. 1, 2015) (“To establish a direct infringement of its distribution right, BMG must show an actual
dissemination of a copyrighted work.”); Atlantic Recording Corp. v. Howell, 554 F. Supp. 2d 976, 981 (D. Ariz.
2008) (“The general rule, supported by the great weight of authority, is that ‘infringement of [the distribution
right] requires an actual dissemination of either copies or phonorecords.”) (alteration in original); Capitol
Records Inc. v. Thomas, 579 F. Supp. 2d 1210, 1218–19 (D. Minn. 2008) (“The plain meaning of the term
‘distribution’ does not include making available and, instead, requires actual dissemination.”), vacated on other
grounds, 692 F.3d 899 (8th Cir. 2012). See also, London-Sire Records, Inc. v. Doe 1, 542 F. Supp. 2d 153, 169
(D. Mass. 2008)
180 BMG Rights Mgmt., 2015 WL 7756130, at *21, *27; Thomas, 579 F. Supp. 2d at 1225; London-Sire Records,

542 F. Supp. 2d at 169, 176–77; Howell, 554 F. Supp. 2d at 983–84.

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Were this not to be considered distribution within the meaning of section 106(3), a
copyright owner would be prejudiced by a library that does not keep records of
public use, and the library would unjustly profit by its own omission.
That the library might be advantaged by its lack of records might allow in inference
that distribution had in fact taken place, but it provides no basis for reading a
making available right into Section 106(3).

The Copyright Office’s reliance on Hoteling is unconvincing because Hoteling is not
convincing. Indeed, other courts confronted with the rationale in Hoteling have simply recast
the decision into something else. The better way to read Hoteling is shown by the district
court in In re Napster, Inc. Copyright Litigation, 377 F.Supp. 2d 796, 803 (N.D. Cal. 2005). In
this case, the district court rejected the plaintiff’s theory that Napster directly infringed the
distribution right by maintaining a centralized indexing system listing the file names of all
MP3-formatted music files available on the Napster network. The court cited various
authorities to the effect that for the distribution right under Section 106(3) to be infringed,
an actual transfer must take place. The court recast Hoteling as a case where distribution
could be inferred from potential distribution—there was not much doubt that the
genealogical materials at issue in Hotaling were copied and distributed to the church’s branch
libraries, it was simply that the library did not maintain the records that would be required to
prove it.
Diversey v. Schmidly, 738 F.3d 1196 (10th Cir. 2013) is similar to Hotaling. The case concerned
an infringing copy on which the statute of limitations had run with respect to the
reproduction right. The Tenth Circuit held that simply listing a copy of the work in the
library’s catalog amounted to a distribution and that there could be infringement if a patron
visited and used the work, stating, “this is the essence of a violation of the copyright owner’s
right to distribute his work via lending.”
This is absurd.
The court of appeals in Diversey v. Schmidly takes the words “to distribute copies or phonorecords of
the copyrighted work to the public” in Section 106(3) and effectively adds “or offer to
distribute.” If Congress meant to add those terms, it easily could have. The words “to
distribute copies or phonorecords of the copyrighted work to the public” in 106(3) are clear. There
is no ambiguity that could justify the heroic reading of the legislative history that the
Copyright Office relies upon to inject the concept of making available into the distribution
right.
As the Copyright Office notes in its 2016 report, courts have for years relied on the Nimmer
on Copyright treatise and its analysis that “infringement of [the distribution right] requires an
actual dissemination of either copies or phonorecords in support of their conclusion that the
statute does not cover offers of access.”181
David Nimmer has changed his view in the latest version of the Nimmer treatise. Nimmer
now adopts the analysis of an article by Professor Peter Menell published in 2011. The nub
of Menell’s argument is that, based on a deep dive into the legislative history, “the
181 See e.g., Shannon’s Rainbow LLC v. Supernova Media, Inc., No. 2:08-CV-880 TS, 2011 WL 320905, *4 n.34

(D. Utah Jan. 31, 2011) (citing Nimmer On Copyright § 8.11[A] (2007)); Howell, 554 F. Supp. 2d at 981 (same);
Leadbetter, 2007 WL 1217705, at *3 (citing 2 Nimmer On Copyright § 8.11[A] (2005); Perfect 10 v. Google,
Inc., 416 F. Supp. 2d 828, 841, 844 (C.D. Cal. 2006) (same).

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distribution right was intended to broaden the scope of the exclusive rights to “publish” and
to “vend” provided under the Copyright Act of 1909, which had long been understood to
encompass offers to distribute copies to the public.”182 With due respect to Professor Menell,
it is very hard to see how this deep reading of the legislative history can overcome the clear
statutory language. Arguably the policy shortcomings of the clear expression “distribute
copies … by sale or other transfer of ownership, or by rental, lease, or lending” were not
appreciated at the time the 1976 Act was being drafted, but can that policy argument really
justify rewriting some of the clearest words in the entire Copyright Act? It seems unlikely.
In light of the above, one might wonder why the Copyright Office continues to insist that
there is a “making available” right under United States copyright law? The most likely
answers are that the Copyright Office feels that such an interpretation is the only way to
comply with the WIPO Internet Treaties and/or that Copyright Office simply believes that a
making available right would be a better policy outcome. Neither of these reasons seems
sufficient.

The first sale doctrine in the United States
For almost as long as there have been mass-produced books there have been publishers
trying to guarantee that their books won’t be resold at a discount (this is called “resale price
maintenance” in the antitrust and competition law world). In 1908, the particular object of
the publishers’ ire was the Macy’s department store. This dispute ultimate led to the Supreme
Court case of Bobbs-Merrill Co. v. Straus.
Bobbs-Merrill Co. v. Straus 210 U.S. 339 (1908)
Justice Day delivered the opinion of the court.
The complainant in the Circuit Court, appellant here, the Bobbs-Merrill Company,
brought suit against the respondents, appellees here, Isidor Straus and Nathan Straus,
partners trading as R.H. Macy & Company, in the Circuit Court of the United States
for the Southern District of New York, to restrain the sale of a copyrighted novel,
entitled “The Castaway,” at retail at less than one dollar for each copy. The Circuit
Court dismissed the bill on final hearing. The decree of the Circuit Court was
affirmed on appeal by the Circuit Court of Appeals.
The appellant is the owner of the copyright upon “The Castaway,” obtained on the
eighteenth day of May, 1904, in conformity to the copyright statutes of the United
States. Printed immediately below the copyright notice on the page in the book
following the title page is inserted the following notice:
The price of this book at retail is one dollar net. No dealer is licensed to sell it at a
less price, and a sale at a less price will be treated as an infringement of the copyright.
THE BOBBS-MERRILL COMPANY.

182 Copyright Office Report on Making Available Right 2016 at 30. See Peter S. Menell, In Search of Copyright’s

Lost Ark: Interpreting the Right to Distribute in the Internet Age, 59 J. COPYRIGHT SOC’Y U.S.A. 201 (2011).

616

Macy & Company, before the commencement of the action purchased copies of the
book for the purpose of selling the same at retail. Ninety per cent of such copies
were purchased by them at wholesale at a price below the retail price by about forty
per cent, and ten per cent of the books purchased by them were purchased at retail,
and the full price paid therefor.
It is stipulated in the record:
Defendants, at the time of their purchase of copies of the book, knew that it was a
copyrighted book and were familiar with the terms of the notice printed in each
copy thereof, as above set forth, and knew that this notice was printed in every copy
of the book purchased by them.

The wholesale dealers, from whom defendants purchased copies of the book,
obtained the same either directly from the complainant or from other wholesale
dealers at a discount from the net retail price, and at the time of their purchase knew
that the book was a copyrighted book and were familiar with the terms of the notice
printed in each copy thereof, as described above, and such knowledge was in all
wholesale dealers through whom the books passed from the complainants to
defendants. But the wholesale dealers were under no agreement or obligation to
enforce the observance of the terms of the notice by retail dealers or to restrict their
sales to retail dealers who would agree to observe the terms stated in the notice.
The 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
book at retail at the price of eighty-nine cents per copy, without the consent of the
complainant.
[After discussing and distinguishing analogous patent law cases, the Court disclaimed
any intention to indicate its “views as to what would be the rights of parties in
circumstances similar to the present case under the patent laws, that there are
differences between the patent and copyright statutes in the extent of the protection
granted by them.”]
We therefore approach the consideration of this question as a new one in this court,
and one that involves the extent of the protection which is given by the copyright
statutes of the United States to the owner of a copyright under the facts disclosed in
this record. Recent cases in this court have affirmed the proposition that copyright
property under the Federal law is wholly statutory, and depends upon the right
created under the acts of Congress passed in pursuance of the authority conferred
under Article I, § 8, of the Federal Constitution: “To promote the progress of
science and useful arts, by securing for limited times to authors and inventors the
exclusive right to their respective writings and discoveries.” American Tobacco Co. v.
Werckmeister, 207 U.S. 284; White-Smith Music Co. v. Apollo Co., 209 U.S. 1; following
the previous cases of Wheaton v. Peters, 8 Pet. 590; Bank v. Manchester, 128 U.S. 244253; Thompson v. Hubbard, 131 U.S. 123-151.
The learned counsel for the appellant in this case in the argument at bar disclaims
relief because of any contract, and relies solely upon the copyright statutes, and rights
therein conferred. The copyright statutes ought to be reasonably construed with a
view to effecting the purposes intended by Congress. They ought not to be unduly
extended by judicial construction to include privileges not intended to be conferred,
617

nor so narrowly construed as to deprive those entitled to their benefit of the rights
Congress intended to grant.
At common law an author had a property in his manuscript and might have redress
against any one who undertook to realize a profit from its publication without
authority of the author. Wheaton v. Peters, 8 Pet. 591, 659.
While the nature of the property and the protection intended to be given the
inventor or author as the reward of genius or intellect in the production of his book
or work of art is to be considered in construing the act of Congress, it is evident that
to secure the author the right to multiply copies of his work may be said to have
been the main purpose of the copyright statutes.
In order to secure this right it was provided in that statute, as it has been in
subsequent ones, that the authors of books, their executors, administrators, or
assigns, shall have the “sole right and liberty of printing, reprinting, publishing, and
vending” such book for a term of years, upon complying with the statutory
conditions set forth in the act as essential to the acquiring of a valid copyright. Each
and all of these statutory rights should be given such protection as the act of
Congress requires, in order to secure the rights conferred upon authors and others
entitled to the benefit of the act.
The precise question, therefore, in this case is, does the sole right to vend (named in
§ 4952) secure to the owner of the copyright the right, after a sale of the book to a
purchaser, to restrict future sales of the book at retail, to the right to sell it at a
certain price per copy, because of a notice in the book that a sale at a different price
will be treated as an infringement, which notice has been brought home to one
undertaking to sell for less than the named sum? We do not think the statute can be
given such a construction, and it is to be remembered that this is purely a question of
statutory construction. There is no claim in this case of contract limitation, nor
license agreement controlling the subsequent sales of the book.
In our view the copyright statutes, while protecting the owner of the copyright in his
right to multiply and sell his production, do not create the right to impose, by notice,
such as is disclosed in this case, a limitation at which the book shall be sold at retail
by future purchasers, with whom there is no privity of contract. This conclusion is
reached in view of the language of the statute, read in the light of its main purpose to
secure the right of multiplying copies of the work, a right which is the special
creation of the statute. True, the statute also secures, to make this right of
multiplication effectual, the sole right to vend copies of the book, the production of
the author’s thought and conception. The owner of the copyright in this case did sell
copies of the book in quantities and at a price satisfactory to it. It has exercised the
right to vend. What the complainant contends for embraces not only the right to sell
the copies, but to qualify the title of a future purchaser by the reservation of the right
to have the remedies of the statute against an infringer because of the printed notice
of its purpose so to do unless the purchaser sells at a price fixed in the notice. To
add to the right of exclusive sale the authority to control all future retail sales, by a
notice that such sales must be made at a fixed sum, would give a right not included
in the terms of the statute, and, in our view, extend its operation, by construction,

618

beyond its meaning, when interpreted with a view to ascertaining the legislative
intent in its enactment.
This conclusion renders it unnecessary to discuss other questions noticed in the
opinion in the Circuit Court of Appeals, or to examine into the validity of the
publisher’s agreements, alleged to be in violation of the acts to restrain combinations
creating a monopoly or directly tending to the restraint of trade.
The decree of the Circuit Court of Appeals is
Affirmed.
Notes and questions
(1) In Bobbs-Merrill, the Supreme Court held that such restrictions found no support in
Copyright law and that the copyright owner’s exclusive right to “vend” the work did not
create a right to limit or place conditions upon resale.
(2) The Bobbs-Merrill Court did not hold that contractual terms restricting resale were invalid,
it simply held that violation of those terms was not a copyright violation. The department
store was not bound by the contract terms for a much simpler reason; it was not a party to
them.

Statutory recognition of distribution right and first sale doctrine
Congress codified the Bobbs-Merrill decision in the text of the Copyright Act of 1909 and that
same principle, the first sale doctrine, is now embodied in Section 109 of the Copyright Act
of 1976. At first glance, the Copyright Act gives the copyright owner and incredibly broad
exclusive right “to distribute copies of the work to the public by sale or other transfer of
ownership, or by rental, lease or lending.” However, the distribution right is counterbalanced
by the first sale doctrine—and some would argue, an even a broader concept of copyright
exhaustion.183
17 U.S. Code § 106 - Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright under this title has the
exclusive rights to do and to authorize any of the following: … (3) to distribute
copies or phonorecords of the copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or lending;
17 U.S. Code § 109 - Limitations on exclusive rights: Effect of transfer of
particular copy or phonorecord
(a) Notwithstanding the provisions of section 106 (3), the owner of a particular copy
or phonorecord lawfully made under this title, or any person authorized by such
owner, is entitled, without the authority of the copyright owner, to sell or otherwise
dispose of the possession of that copy or phonorecord. …

What is the point of the distribution right if it is negated by the first sale doctrine?
The distribution right could be violated when the defendant merely distributes copies
illegally made by a third party. It could also be infringed by a defendant who made copies
under the terms of a license agreement but then distributed those copies beyond the scope
183 See Aaron Perzanowski & Jason Schultz, Digital Exhaustion, 58 UCLA L. REV. 889 (2011).

619

of what was allowed under the agreement. In both of these examples, the defendant would
not be liable (at least not directly) under any of the other rights of the copyright owner under
Section 106.

Copyright Exhaustion and Parallel Importation
Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013)
Justice BREYER delivered the opinion of the Court.
Section 106 of the Copyright Act grants “the owner of copyright under this title”
certain “exclusive rights,” including the right “to distribute copies ... of the
copyrighted work to the public by sale or other transfer of ownership.” 17 U.S.C. §
106(3). These rights are qualified, however, by the application of various limitations
set forth in the next several sections of the Act, §§ 107 through 122. Those sections,
typically entitled “Limitations on exclusive rights,” include, for example, the principle
of “fair use” (§ 107), permission for limited library archival reproduction, (§ 108),
and the doctrine at issue here, the “first sale” doctrine (§ 109).
Section 109(a) sets forth the “first sale” doctrine as follows:
“Notwithstanding the provisions of section 106(3) [the section that grants the
owner exclusive distribution rights], the owner of a particular copy or
phonorecord lawfully made under this title ... is entitled, without the authority of the
copyright owner, to sell or otherwise dispose of the possession of that copy or
phonorecord.” (Emphasis added.)

Thus, even though § 106(3) forbids distribution of a copy of, say, the copyrighted
novel Herzog without the copyright owner’s permission, § 109(a) adds that, once a
copy of Herzog has been lawfully sold (or its ownership otherwise lawfully
transferred), the buyer of that copy and subsequent owners are free to dispose of it as
they wish. In copyright jargon, the “first sale” has “exhausted” the copyright owner’s
§ 106(3) exclusive distribution right.
What, however, if the copy of Herzog was printed abroad and then initially sold with
the copyright owner’s permission? Does the “first sale” doctrine still apply? Is the
buyer, like the buyer of a domestically manufactured copy, free to bring the copy into
the United States and dispose of it as he or she wishes?
To put the matter technically, an “importation” provision, § 602(a)(1), says that
“importation into the United States, without the authority of the owner of copyright
under this title, of copies ... of a work that have been acquired outside the United
States is an infringement of the exclusive right to distribute copies ... under section
106....” 17 U.S.C. § 602(a)(1) (emphasis added).

Thus § 602(a)(1) makes clear that importing a copy without permission violates the
owner’s exclusive distribution right. But in doing so, § 602(a)(1) refers explicitly to
the § 106(3) exclusive distribution right. As we have just said, § 106 is by its terms
“subject to” the various doctrines and principles contained in §§ 107 through 122,
including § 109(a)’s “first sale” limitation. Do those same modifications apply — in
particular, does the “first sale” modification apply — when considering whether §
602(a)(1) prohibits importing a copy?
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In Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 523 U.S. 135, 145
(1998), we held that § 602(a)(1)’s reference to § 106(3)’s exclusive distribution right
incorporates the later subsections’ limitations, including, in particular, the “first sale”
doctrine of § 109. Thus, it might seem that, § 602(a)(1) notwithstanding, one who
buys a copy abroad can freely import that copy into the United States and dispose of
it, just as he could had he bought the copy in the United States.
But Quality King considered an instance in which the copy, though purchased abroad,
was initially manufactured in the United States (and then sent abroad and sold). This
case is like Quality King but for one important fact. The copies at issue here were
manufactured abroad. That fact is important because § 109(a) says that the “first sale”
doctrine applies to “a particular copy or phonorecord lawfully made under this
title.” And we must decide here whether the five words, “lawfully made under this
title,” make a critical legal difference.
Putting section numbers to the side, we ask whether the “first sale” doctrine applies
to protect a buyer or other lawful owner of a copy (of a copyrighted work) lawfully
manufactured abroad. Can that buyer bring that copy into the United States (and sell
it or give it away) without obtaining permission to do so from the copyright owner?
Can, for example, someone who purchases, say at a used bookstore, a book printed
abroad subsequently resell it without the copyright owner’s permission?
In our view, the answers to these questions are, yes. We hold that the “first sale”
doctrine applies to copies of a copyrighted work lawfully made abroad.
I
A
Respondent, John Wiley & Sons, Inc., publishes academic textbooks. Wiley obtains
from its authors various foreign and domestic copyright assignments, licenses and
permissions — to the point that we can, for present purposes, refer to Wiley as the
relevant American copyright owner. Wiley often assigns to its wholly owned foreign
subsidiary, John Wiley & Sons (Asia) Pte Ltd., rights to publish, print, and sell
Wiley’s English language textbooks abroad. Each copy of a Wiley Asia foreign
edition will likely contain language making clear that the copy is to be sold only in a
particular country or geographical region outside the United States. 654 F.3d, at 213.
For example, a copy of Wiley’s American edition says, “Copyright © 2008 John
Wiley & Sons, Inc. All rights reserved.... Printed in the United States of America.” J.
Walker, Fundamentals of Physics, p. vi (8th ed. 2008). A copy of Wiley Asia’s Asian
edition of that book says:
“Copyright © 2008 John Wiley & Sons (Asia) Pte Ltd. All rights reserved. This book
is authorized for sale in Europe, Asia, Africa, and the Middle East only and may be
not exported out of these territories. Exportation from or importation of this book
to another region without the Publisher’s authorization is illegal and is a violation of
the Publisher’s rights. The Publisher may take legal action to enforce its rights....
Printed in Asia.”

Both the foreign and the American copies say:

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“No part of this publication may be reproduced, stored in a retrieval system, or
transmitted in any form or by any means ... except as permitted under Sections 107
or 108 of the 1976 United States Copyright Act.”

The upshot is that there are two essentially equivalent versions of a Wiley textbook,
each version manufactured and sold with Wiley’s permission: (1) an American
version printed and sold in the United States, and (2) a foreign version manufactured
and sold abroad. And Wiley makes certain that copies of the second version state
that they are not to be taken (without permission) into the United States.
Petitioner, Supap Kirtsaeng, a citizen of Thailand, moved to the United States in
1997 to study mathematics at Cornell University. He paid for his education with the
help of a Thai Government scholarship which required him to teach in Thailand for
10 years on his return. Kirtsaeng successfully completed his undergraduate courses at
Cornell, successfully completed a Ph.D. program in mathematics at the University of
Southern California, and then, as promised, returned to Thailand to teach. While he
was studying in the United States, Kirtsaeng asked his friends and family in Thailand
to buy copies of foreign edition English-language textbooks at Thai book shops,
where they sold at low prices, and mail them to him in the United States. Kirtsaeng
would then sell them, reimburse his family and friends, and keep the profit.
B
In 2008 Wiley brought this federal lawsuit against Kirtsaeng for copyright
infringement. Wiley claimed that Kirtsaeng’s unauthorized importation of its books
and his later resale of those books amounted to an infringement of Wiley’s § 106(3)
exclusive right to distribute as well as § 602’s related import prohibition. Kirtsaeng
replied that the books he had acquired were “‘lawfully made’” and that he had
acquired them legitimately. Thus, in his view, § 109(a)’s “first sale” doctrine
permitted him to resell or otherwise dispose of the books without the copyright
owner’s further permission.
The District Court held that Kirtsaeng could not assert the “first sale” defense
because, in its view, that doctrine does not apply to “foreign-manufactured goods”
(even if made abroad with the copyright owner’s permission). The jury then found
that Kirtsaeng had willfully infringed Wiley’s American copyrights by selling and
importing without authorization copies of eight of Wiley’s copyrighted titles. And it
assessed statutory damages of $600,000 ($75,000 per work).
On appeal, a split panel of the Second Circuit agreed with the District Court. It
pointed out that § 109(a)’s “first sale” doctrine applies only to “the owner of a
particular copy ... lawfully made under this title.” And, in the majority’s view, this
language means that the “first sale” doctrine does not apply to copies of American
copyrighted works manufactured abroad. A dissenting judge thought that the words
“lawfully made under this title” do not refer “to a place of manufacture” but rather
“focus on whether a particular copy was manufactured lawfully under” America’s
copyright statute, and that “the lawfulness of the manufacture of a particular copy
should be judged by U.S. copyright law.”
We granted Kirtsaeng’s petition for certiorari to consider this question in light of
different views among the Circuits.

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II
We must decide whether the words “lawfully made under this title” restrict the scope
of § 109(a)’s “first sale” doctrine geographically. The Second Circuit, the Ninth
Circuit, Wiley, and the Solicitor General (as amicus) all read those words as imposing
a form of geographical limitation. The Second Circuit held that they limit the “first sale”
doctrine to particular copies “made in territories in which the Copyright Act is
law,” which (the Circuit says) are copies “manufactured domestically,” not “outside
of the United States.” Wiley agrees that those five words limit the “first sale”
doctrine “to copies made in conformance with the [United States] Copyright
Act where the Copyright Act is applicable,” which (Wiley says) means it does not apply to
copies made “outside the United States” and at least not to “foreign production of a
copy for distribution exclusively abroad.” Similarly, the Solicitor General says that
those five words limit the “first sale” doctrine’s applicability to copies ”‘made subject
to and in compliance with [the Copyright Act],’” which (the Solicitor General says)
are copies “made in the United States.”
Under any of these geographical interpretations, § 109(a)’s “first sale” doctrine would
not apply to the Wiley Asia books at issue here. And, despite an American copyright
owner’s permission to make copies abroad, one who buys a copy of any such book or
other copyrighted work — whether at a retail store, over the Internet, or at a library
sale — could not resell (or otherwise dispose of) that particular copy without further
permission.
Kirtsaeng, however, reads the words “lawfully made under this title” as imposing
a non-geographical limitation. He says that they mean made “in accordance with” or
“in compliance with” the Copyright Act. In that case, § 109(a)’s “first sale” doctrine
would apply to copyrighted works as long as their manufacture met the requirements
of American copyright law. In particular, the doctrine would apply where, as here,
copies are manufactured abroad with the permission of the copyright owner. See §
106 (referring to the owner’s right to authorize).
In our view, § 109(a)’s language, its context, and the common-law history of the
“first sale” doctrine, taken together, favor a non-geographical interpretation. We also
doubt that Congress would have intended to create the practical copyright-related
harms with which a geographical interpretation would threaten ordinary scholarly,
artistic, commercial, and consumer activities. We consequently conclude that
Kirtsaeng’s nongeographical reading is the better reading of the Act.
A
The language of § 109(a) read literally favors Kirtsaeng’s nongeographical
interpretation, namely, that “lawfully made under this title” means made “in
accordance with” or “in compliance with” the Copyright Act. The language of §
109(a) says nothing about geography. The word “under” can mean “in accordance
with.” 18 Oxford English Dictionary 950 (2d ed. 1989). See also Black’s Law
Dictionary 1525 (6th ed. 1990) (“according to”). And a nongeographical
interpretation provides each word of the five-word phrase with a distinct purpose.
The first two words of the phrase, “lawfully made,” suggest an effort to distinguish
those copies that were made lawfully from those that were not, and the last three
words, “under this title,” set forth the standard of “lawful[ness].” Thus, the
623

nongeographical reading is simple, it promotes a traditional copyright objective
(combatting piracy), and it makes word-by-word linguistic sense.
The geographical interpretation, however, bristles with linguistic difficulties. It gives
the word “lawfully” little, if any, linguistic work to do. (How could a book be un
lawfully “made under this title”?) It imports geography into a statutory provision that
says nothing explicitly about it. And it is far more complex than may at first appear.
To read the clause geographically, Wiley, like the Second Circuit and the Solicitor
General, must first emphasize the word “under.” Indeed, Wiley reads “under this
title” to mean “in conformance with the Copyright Act where the Copyright Act is
applicable.” Wiley must then take a second step, arguing that the Act “is applicable”
only in the United States.
One difficulty is that neither “under” nor any other word in the phrase means
“where.” It might mean “subject to,” but as this Court has repeatedly acknowledged,
the word evades a uniform, consistent meaning.
A far more serious difficulty arises out of the uncertainty and complexity
surrounding the second step’s effort to read the necessary geographical limitation
into the word “applicable” (or the equivalent). Where, precisely, is the Copyright Act
“applicable”? The Act does not instantly protect an American copyright holder from
unauthorized piracy taking place abroad. But that fact does not mean the Act
is inapplicable to copies made abroad. As a matter of ordinary English, one can say
that a statute imposing, say, a tariff upon “any rhododendron grown in Nepal”
applies to all Nepalese rhododendrons. And, similarly, one can say that the American
Copyright Act is applicable to all pirated copies, including those printed overseas.
Indeed, the Act itself makes clear that (in the Solicitor General’s language) foreignprinted pirated copies are “subject to” the Act.
The appropriateness of this linguistic usage is underscored by the fact that § 104 of
the Act itself says that works “subject to protection under this title” include unpublished
works “without regard to the nationality or domicile of the author,” and works “first
published” in any one of the nearly 180 nations that have signed a copyright treaty
with the United States. Thus, ordinary English permits us to say that the Act “applies”
to an Irish manuscript lying in its author’s Dublin desk drawer as well as to an
original recording of a ballet performance first made in Japan and now on display in
a Kyoto art gallery.
… In sum, we believe that geographical interpretations create more linguistic
problems than they resolve. And considerations of simplicity and coherence tip the
purely linguistic balance in Kirtsaeng’s, nongeographical, favor.
B
Both historical and contemporary statutory context indicate that Congress, when
writing the present version of § 109(a), did not have geography in mind. [Discussion
omitted.]
C
A relevant canon of statutory interpretation favors a nongeographical reading.
“When a statute covers an issue previously governed by the common law,” we must
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presume that “Congress intended to retain the substance of the common
law.” Samantar v. Yousuf, 130 S.Ct. 2278, 2289-2290, n. 13 (2010). See also Isbrandtsen
Co. v. Johnson, 343 U.S. 779, 783 (1952) (“Statutes which invade the common law...
are to be read with a presumption favoring the retention of long-established and
familiar principles, except when a statutory purpose to the contrary is evident”).
The “first sale” doctrine is a common-law doctrine with an impeccable historic
pedigree. In the early 17th century Lord Coke explained the common law’s refusal to
permit restraints on the alienation of chattels. Referring to Littleton, who wrote in
the 15th century, Gray, Two Contributions to Coke Studies, 72 U. CHI. L.REV. 1127, 1135
(2005), Lord Coke wrote:
“If a man be possessed of ... a horse, or of any other chattell ... and give or sell his
whole interest ... therein upon condition that the Donee or Vendee shall not alienate
the same, the condition is void, because his whole interest ... is out of him, so as he
hath no possibility of a Reverter, and it is against Trade and Traffic, and bargaining
and contracting between man and man: and it is within the reason of our Author
that it should ouster him of all power given to him.” 1 E. Coke, Institutes of the
Laws of England § 360, p. 223 (1628).

A law that permits a copyright holder to control the resale or other disposition of a
chattel once sold is similarly “against Trade and Traffic, and bargaining and
contracting.” Ibid.
With these last few words, Coke emphasizes the importance of leaving buyers of
goods free to compete with each other when reselling or otherwise disposing of
those goods. American law too has generally thought that competition, including
freedom to resell, can work to the advantage of the consumer. See, e.g., Leegin Creative
Leather Products, Inc. v. PSKS, Inc., 551 U.S. 877, 886 (2007) (restraints with “manifestly
anticompetitive effects” are per se illegal; others are subject to the rule of reason).
The “first sale” doctrine also frees courts from the administrative burden of trying to
enforce restrictions upon difficult-to-trace, readily movable goods. And it avoids the
selective enforcement inherent in any such effort. Thus, it is not surprising that for at
least a century the “first sale” doctrine has played an important role in American
copyright law.
The common-law doctrine makes no geographical distinctions; nor can we find any
in Bobbs-Merrill (where this Court first applied the “first sale” doctrine) or in §
109(a)’s predecessor provision, which Congress enacted a year later. See supra, at
1360. Rather, as the Solicitor General acknowledges, “a straightforward application
of Bobbs-Merrill” would not preclude the “first sale” defense from applying to
authorized copies made overseas. And we can find no language, context, purpose, or
history that would rebut a “straightforward application” of that doctrine here.
D
Associations of libraries, used-book dealers, technology companies, consumer-goods
retailers, and museums point to various ways in which a geographical interpretation
would fail to further basic constitutional copyright objectives, in particular
promoting the Progress of Science and useful Arts. U.S. Constitution, Art. I, § 8, cl. 8.

625

The American Library Association tells us that library collections contain at least 200
million books published abroad (presumably, many were first published in one of the
nearly 180 copyright-treaty nations and enjoy American copyright protection under
17 U.S.C. § 104, see supra, at 1359); that many others were first published in the
United States but printed abroad because of lower costs; and that a geographical
interpretation will likely require the libraries to obtain permission (or at least create
significant uncertainty) before circulating or otherwise distributing these books.
How, the American Library Association asks, are the libraries to obtain permission to
distribute these millions of books? How can they find, say, the copyright owner of a
foreign book, perhaps written decades ago? They may not know the copyright
holder’s present address. Brief for American Library Association 15 (many books
lack indication of place of manufacture; “no practical way to learn where [a] book
was printed”). And, even where addresses can be found, the costs of finding them,
contacting owners, and negotiating may be high indeed. Are the libraries to stop
circulating or distributing or displaying the millions of books in their collections that
were printed abroad?
Used-book dealers tell us that, from the time when Benjamin Franklin and
Thomas Jefferson built commercial and personal libraries of foreign books,
American readers have bought used books published and printed abroad. Brief for
Powell’s Books Inc. et al. as Amici Curiae (citing M. Stern, Antiquarian Bookselling in
the United States (1985)). The dealers say that they have operated for centuries under
the assumption that the “first sale” doctrine applies. But under a geographical
interpretation a contemporary tourist who buys, say, at Shakespeare and Co. (in
Paris), a dozen copies of a foreign book for American friends might find that she
had violated the copyright law. The used-book dealers cannot easily predict what the
foreign copyright holder may think about a reader’s effort to sell a used copy of a
novel. And they believe that a geographical interpretation will injure a large portion
of the used-book business.
Technology companies tell us that “automobiles, microwaves, calculators, mobile
phones, tablets, and personal computers” contain copyrightable software programs
or packaging. Many of these items are made abroad with the American copyright
holder’s permission and then sold and imported (with that permission) to the United
States. A geographical interpretation would prevent the resale of, say, a car, without
the permission of the holder of each copyright on each piece of copyrighted
automobile software. Yet there is no reason to believe that foreign auto
manufacturers regularly obtain this kind of permission from their software
component suppliers, and Wiley did not indicate to the contrary when asked.
Without that permission a foreign car owner could not sell his or her used car.
Retailers tell us that over $2.3 trillion worth of foreign goods were imported in 2011.
Brief for Retail Litigation Center 8. American retailers buy many of these goods after
a first sale abroad. And, many of these items bear, carry, or contain copyrighted
“packaging, logos, labels, and product inserts and instructions for [the use of]
everyday packaged goods from floor cleaners and health and beauty products to
breakfast cereals.” The retailers add that American sales of more traditional
copyrighted works, “such as books, recorded music, motion pictures, and magazines”
likely amount to over $220 billion. See also id., at 10 (electronic game industry is $16
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billion). A geographical interpretation would subject many, if not all, of them to the
disruptive impact of the threat of infringement suits.
Art museum directors ask us to consider their efforts to display foreign-produced
works by, say, Cy Twombly, Rene Magritte, Henri Matisse, Pablo Picasso, and others.
A geographical interpretation, they say, would require the museums to obtain
permission from the copyright owners before they could display the work,— even if
the copyright owner has already sold or donated the work to a foreign museum.
What are the museums to do, they ask, if the artist retained the copyright, if the artist
cannot be found, or if a group of heirs is arguing about who owns which copyright?
These examples, and others previously mentioned, help explain why Lord Coke
considered the “first sale” doctrine necessary to protect “Trade and Traffic, and
bargaining and contracting,” and they help explain why American copyright law has
long applied that doctrine.
Neither Wiley nor any of its many amici deny that a geographical interpretation could
bring about these “horribles” — at least in principle. Rather, Wiley essentially says
that the list is artificially invented. It points out that a federal court first adopted a
geographical interpretation more than 30 years ago. Yet, it adds, these problems have
not occurred. Why not? Because, says Wiley, the problems and threats are purely
theoretical; they are unlikely to reflect reality.
We are less sanguine. For one thing, the law has not been settled for long in Wiley’s
favor. The Second Circuit, in its decision below, is the first Court of Appeals to
adopt a purely geographical interpretation. The Third Circuit has favored a
nongeographical interpretation. The Ninth Circuit has favored a modified
geographical interpretation with a nongeographical (but textually unsustainable)
corollary designed to diminish the problem. And other courts have hesitated to
adopt, and have cast doubt upon, the validity of the geographical interpretation.
For another thing, reliance upon the “first sale” doctrine is deeply embedded in the
practices of those, such as booksellers, libraries, museums, and retailers, who have
long relied upon its protection. Museums, for example, are not in the habit of asking
their foreign counterparts to check with the heirs of copyright owners before
sending, e.g., a Picasso on tour. That inertia means a dramatic change is likely
necessary before these institutions, instructed by their counsel, would begin to
engage in the complex permission-verifying process that a geographical
interpretation would demand. And this Court’s adoption of the geographical
interpretation could provide that dramatic change. These intolerable consequences
(along with the absurd result that the copyright owner can exercise downstream
control even when it authorized the import or first sale) have understandably led the
Ninth Circuit, the Solicitor General as amicus, and the dissent to adopt textual
readings of the statute that attempt to mitigate these harms. But those readings are
not defensible, for they require too many unprecedented jumps over linguistic and
other hurdles that in our view are insurmountable.
Finally, the fact that harm has proved limited so far may simply reflect the reluctance
of copyright holders so far to assert geographically based resale rights. They may
decide differently if the law is clarified in their favor. Regardless, a copyright law that
can work in practice only if unenforced is not a sound copyright law. It is a law that
627

would create uncertainty, would bring about selective enforcement, and, if widely
unenforced, would breed disrespect for copyright law itself.
Thus, we believe that the practical problems that petitioner and his amici have
described are too serious, too extensive, and too likely to come about for us to
dismiss them as insignificant — particularly in light of the ever-growing importance
of foreign trade to America. The upshot is that copyright-related consequences along
with language, context, and interpretive canons argue strongly against a geographical
interpretation of § 109(a).
[Justice Breyer rejected arguments that the Court’s Quality King decision and the
Copyright Act’s legislative history supports supported a geographical interpretation
of Section 109.]
Wiley and the dissent claim that a nongeographical interpretation will make it
difficult, perhaps impossible, for publishers (and other copyright holders) to divide
foreign and domestic markets. We concede that is so. A publisher may find it more
difficult to charge different prices for the same book in different geographic markets.
But we do not see how these facts help Wiley, for we can find no basic principle of
copyright law that suggests that publishers are especially entitled to such rights.
The Constitution describes the nature of American copyright law by providing
Congress with the power to “secure” to “authors” “for limited times” the “exclusive
right to their ... writings.” Art. I, § 8, cl. 8. The Founders, too, discussed the need to
grant an author a limited right to exclude competition. But the Constitution’s
language nowhere suggests that its limited exclusive right should include a right to
divide markets or a concomitant right to charge different purchasers different prices
for the same book, say to increase or to maximize gain. Neither, to our knowledge,
did any Founder make any such suggestion. We have found no precedent suggesting
a legal preference for interpretations of copyright statutes that would provide for
market divisions.
To the contrary, Congress enacted a copyright law that (through the “first sale”
doctrine) limits copyright holders’ ability to divide domestic markets. And that
limitation is consistent with antitrust laws that ordinarily forbid market divisions.
Cf. Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990) (per curiam) (“Agreements
between competitors to allocate territories to minimize competition are illegal”).
Whether copyright owners should, or should not, have more than ordinary
commercial power to divide international markets is a matter for Congress to decide.
We do no more here than try to determine what decision Congress has taken.
IV
For these reasons we conclude that the considerations supporting Kirtsaeng’s
nongeographical interpretation of the words “lawfully made under this title” are the
more persuasive. The judgment of the Court of Appeals is reversed, and the case is
remanded for further proceedings consistent with this opinion.
[Justice Kagan concurred, joined by Justice Alito. Justice Ginsburg dissented, joined
by Kennedy and by Scalia in part.]

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Notes and Questions
(1) In Kirtsaeng, the majority held that the words “lawfully made under this title” in Section
109 indicated a principle of international exhaustion. Based on “§109(a)’s language, its
context, and the common-law history of the “first sale” doctrine” the majority of the
Supreme Court declined to limit the first sale doctrine to works made in the United States.
(2) What is the purpose of the first sale doctrine? Justice Breyer (at 538) says that one
purpose of the first sale doctrine is to manifest the “common law’s refusal to permit
restraints on the alienation of chattels.” He identifies another purpose as well (at 539), to
“free[ ] courts from the administrative burden of trying to enforce restrictions upon difficultto-trace, readily movable goods” and “avoid[ ] the selective enforcement inherent in any
such effort.”
(3) In Equity’s Unstated Domain: The Role of Equity in Shaping Copyright Law, 163 University of
Pennsylvania Law Review 1859, 1880-81 (2015), Shyamkrishna Balganesh and Gideon
Parchomovsky emphasize and defend the pragmatism of the Court’s decision: “despite
offering a linguistic rationale for its holding, the Court drew on the common law basis of the
first sale doctrine and its importance in commerce.” Do you agree?
(4) The Court’s decision was met with considerable relief by libraries, museums, used
bookstores, and technology companies. As the majority noted, “museums, for example, are
not in the habit of asking their foreign counterparts to check with the heirs of copyright
owners before sending, e.g., a Picasso on tour.” The Court was particularly concerned that
copyrighted software in consumer products and copyrighted packaging of consumer
products could be used to control secondary markets.
(5) Contractual restraints on the first sale doctrine are addressed in a subsequent chapter.

Limits to the first sale doctrine in a digital world
The conventional understanding of Copyright’s first sale doctrine is that it prevents restraints
on the transfer of lawfully acquired copies of works by limiting the scope of the distribution
right (the modern equivalent of the right to “vend” in earlier incarnations of the Copyright
Act). The first sale doctrine guaranteed significant freedom of action for the purchasers of
copyrighted works in the print-era, but its relevance in the digital era is questionable.
The Copyright Act gives copyright owners the right to control the reproduction, distribution,
public performance and public display of their works. It also gives the copyright owner the
right to control the making of derivative works based upon the copyrighted works. The first
sale doctrine—at least as embodied in Section 109 of the Act—substantially limits the
distribution right, but it does not address any of these other rights.
Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018)
Circuit Judge Leval
Defendant ReDigi, Inc. and its founders, Defendants Larry Rudolph and John
Ossenmacher, appeal from the judgment of the United States District Court for the
Southern District of New York (Richard J. Sullivan, J.) in favor of Plaintiffs, Capitol

629

Records, LLC, Capitol Christian Music Group, Inc., and Virgin Records IR Holdings,
Inc. (“Plaintiffs”), finding copyright infringement. Defendants had created an
Internet platform designed to enable the lawful resale, under the first sale doctrine,
of lawfully purchased digital music files, and had hosted resales of such files on the
platform. The district court concluded that, notwithstanding the “first sale” doctrine,
codified in the Copyright Act of 1976, 17 U.S.C. § 109(a), ReDigi’s Internet system
version 1.0 infringed the Plaintiffs’ copyrights by enabling the resale of such digital
files containing sound recordings of Plaintiffs’ copyrighted music. We agree with the
district court that ReDigi infringed the Plaintiffs’ exclusive rights under 17 U.S.C. §
106(1) to reproduce their copyrighted works. We make no decision whether ReDigi
also infringed the Plaintiffs’ exclusive rights under 17 U.S.C. § 106(3) to distribute
their works.
BACKGROUND
I. Facts
Plaintiffs are record companies, which own copyrights or licenses in sound
recordings of musical performances. Plaintiffs distribute those sound recordings in
numerous forms, of which the most familiar twenty years ago was the compact disc.
Today, Plaintiffs also distribute their music in the form of digital files, which are sold
to the public by authorized agent services, such as Apple iTunes, under license from
Plaintiffs. Purchasers from the Apple iTunes online store download the files onto
their personal computers or other devices.
ReDigi was founded by Defendants Ossenmacher and Rudolph in 2009 with the
goal of creating enabling technology and providing a marketplace for the lawful
resale of lawfully purchased digital music files. Ossenmacher served as ReDigi’s
Chief Executive Officer and Rudolph, who spent twelve years as a Principal
Research Scientist at the Massachusetts Institute of Technology, served as ReDigi’s
Chief Technical Officer. During the period addressed by the operative complaint,
ReDigi, through its system version 1.0, hosted resales of digital music files containing
the Plaintiffs’ music by persons who had lawfully purchased the files from iTunes.
Considering the evidence in the light most favorable to ReDigi, ReDigi’s system
version 1.0 operates as follows.
1. Music Manager: A person who owns a digital music file lawfully purchased from
iTunes and intends to employ ReDigi’s system to resell it (the “user”) must first
download and install onto her computer ReDigi’s “Music Manager” software
program (“Music Manager”). Once Music Manager has been installed, it analyzes the
digital file intended for resale, verifies that the file was originally lawfully purchased
from iTunes, and scans it for indications of tampering. If the file was lawfully
purchased, Music Manager deems it an “Eligible File” that may be resold.4
Footnote 4: Music Manager will deem a file “Eligible” if it was purchased by the user from iTunes or
it was purchased by the user through ReDigi, having been originally purchased lawfully by another
from iTunes.

2. Data Migration: The ReDigi user must then cause the file to be transferred to
ReDigi’s remote server, known as the “Cloud Locker.” To effectuate this transfer,
ReDigi developed a new method that functions differently from the conventional file

630

transfer. The conventional process is to reproduce the digital file at the receiving
destination so that, upon completion of the transfer, the file exists simultaneously on
both the receiving device and on the device from which it was transferred. If
connectivity is disrupted during such a standard transfer, the process can be repeated
because the file remains intact on the sender’s device.
Under ReDigi’s method—which it calls “data migration”—ReDigi’s software begins
by breaking the digital music file into small ‘blocks’ of data of roughly four thousand
bytes in length. Once the file has been broken into blocks of data (“packets”),
ReDigi’s system creates a “transitory copy” of each packet in the initial purchaser’s
computer buffer. Upon copying (or “reading”) a packet into the initial purchaser’s
computer buffer, ReDigi’s software sends a command to delete that packet of the
digital file from permanent storage on the initial purchaser’s device. ReDigi’s
software then sends the packet to the ReDigi software to be copied into the buffer
and deleted from the user’s device. During the data migration process, the digital file
cannot be accessed, played, or perceived. If connectivity is disrupted during the data
migration process, the remnants of the digital file on the user’s device are unusable,
and the transfer cannot be re-initiated. In such circumstances, ReDigi (according to
its brief) bears the cost of the user’s loss.
Once all the packets of the source file have been transferred to ReDigi’s server, the
Eligible File has been entirely removed from the user’s device. The packets are then
re-assembled into a complete, accessible, and playable file on ReDigi’s server.
ReDigi describes its primary technological innovation using the metaphor of a train
(the digital file) leaving from one station (the original purchaser’s device) and arriving
at its destination (in the first instance, ReDigi’s server). Under either the typical
method or ReDigi’s method, packets are sent sequentially, such that, conceptually,
“each packet is a car” moving from the source to the destination device. Once all the
packets arrive at the destination device, they are reassembled into a usable file. At
that moment, in a typical transfer, the entire digital file in usable form exists on both
devices. ReDigi’s system differs in that it effectuates a deletion of each packet from
the user’s device immediately after the “transitory copy” of that packet arrives in the
computer’s buffer (before the packet is forwarded to ReDigi’s server). In other
words, as each packet “leaves the station,” ReDigi deletes it from the original
purchaser’s device such that it “no longer exists” on that device. As a result, the
entire file never exists in two places at once.
After the file has reached ReDigi’s server but before it has been resold, the user may
continue to listen to it by streaming audio from the user’s Cloud Locker on ReDigi’s
server. If the user later re-downloads the file from her Cloud Locker to her computer,
ReDigi will delete the file from its own server.
3. Resale: Once an Eligible File has “migrated” to ReDigi’s server, it can be resold by
the user utilizing ReDigi’s market function. If it is resold, ReDigi gives the new
purchaser exclusive access to the file. ReDigi will (at the new purchaser’s option)
either download the file to the new purchaser’s computer or other device
(simultaneously deleting the file from its own server) or will retain the file in the new
purchaser’s Cloud Locker on ReDigi’s server, from which the new purchaser can

631

stream the music. ReDigi’s terms of service state that digital media purchases may be
streamed or downloaded only for personal use.
4. Duplicates: ReDigi purports to guard against a user’s retention of duplicates of her
digital music files after she sells the files through ReDigi. To that end, Music
Manager continuously monitors the user’s computer hard drive and connected
devices to detect duplicates. When a user attempts to upload an Eligible File to
ReDigi’s server, ReDigi “prompt[s]” her to delete any pre-existing duplicates that
Music Manager has detected. If ReDigi detects that the user has not deleted the
duplicates, ReDigi blocks the upload of the Eligible File. After an upload is complete,
Music Manager continues to search the user’s connected devices for duplicates. If it
detects a duplicate of a previously uploaded Eligible File, ReDigi will prompt the
user to authorize ReDigi to delete that duplicate from her personal device and, if
authorization is not granted, it will suspend her account.
Plaintiffs point out, and ReDigi does not dispute, that these precautions do not
prevent the retention of duplicates after resale through ReDigi. Suspension of the
original purchaser’s ReDigi account does not negate the fact that the original
purchaser has both sold and retained the digital music file after she sold it. So long as
the user retains previously-made duplicates on devices not linked to the computer
that hosts Music Manager, Music Manager will not detect them. This means that a
user could, prior to resale through ReDigi, store a duplicate on a compact disc,
thumb drive, or third-party cloud service unconnected to the computer that hosts
Music Manager and access that duplicate post-resale.6
Footnote 6: Defendants do not dispute that, under Apple iCloud’s present
arrangements, a user could sell her digital music files on ReDigi, delete Music
Manager, and then redownload the same files to her computer for free from the
Apple iCloud. Apple’s iCloud service allows one who has purchased a file from
iTunes to re-download it without making a new purchase.
While ReDigi’s suspension of the original purchaser’s ReDigi account may be a
disincentive to the retention of sold files, it does not prevent the user from retaining
sold files.
II. Proceedings Below
On January 6, 2012, Plaintiffs brought this action, originally solely against ReDigi,
Inc., alleging inter alia, that in the operation of ReDigi’s system version 1.0, it
infringed Plaintiffs’ copyrights by unauthorized reproduction and distribution of
Plaintiffs’ copyrighted works. The parties cross-moved for summary judgment. On
March 30, 2013, the district court granted partial summary judgment in Plaintiffs’
favor finding infringement. On June 6, 2016, the district court entered a final
judgment awarding damages to Plaintiffs in the amount of three million five hundred
thousand dollars ($3,500,000) and permanently enjoining Defendants from operating
the ReDigi system.
DISCUSSION
I. The First Sale Doctrine
The primary issue on appeal is whether ReDigi’s system version 1.0 lawfully enables
resales of its users’ digital files. Sections 106(1) and (3) of the Copyright Act
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respectively grant the owner of a copyright the exclusive right to control the
reproduction and the distribution of the
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