1. Copyright Law Ronald W. Staudt Class 19 October 31, 2013

2. Class Overview zQuick Review of Derivative Right and VARA zDistribution Right and First Sale Doctrine ySects. 106(3) and 109 zImportation Right ySect 602 and Quality King and Kirtsaeng

3. Derivative Works- Limitations zFamily Movie Act ySanifilms hypothetical, p. 668 zSoftware Adaptations - Sect. 117

4. Moral Rights zGilliam v ABCGilliam ywork? yLanham Act yDastar and list of cases pp. 676-7 zVARA yPainting, drawing, print, sculpture, photograph yNOT- movies, magazines, posters, databases, ads, books, diagrams, models, works for hire etc.

5. 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.

7. PhillipsPhillips v. Pembroke Real Estate zSite-specific v. plop art, a park as a sculpture zPublic presentation zState’s MAPA- broader and constitutional Eastport Park

8. § 106. Exclusive rights in copyrighted works “Subject to sections 107 through 121, the owner of a 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; (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; “

9. § 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.

10. Distribution Right - 106(3) zDigital technologies, p. 706 yPlayboy cases and RTC v. Netcom y“Making available” & music sharing xElectra Ent Group and London-Sire Records “MediaSentry, posing as just another peer-to-peer user, can easily verify that copyrighted material has been made available for download from a certain IP address. Arguably, though, MediaSentry's own downloads are not themselves copyright infringements because it is acting as an agent of the copyright holder, and copyright holders cannot infringe their own rights. If that argument is accepted, MediaSentry's evidence cannot alone demonstrate an infringement.” London-Sire Records 542 F. Supp. 2d 153, 166 (DC Mass 2008)

11. Electra Ent. V. Barker - publication and distribution z“Having accepted that the definition of "distribute" is synonymous with the definition of "publication," however, liability under Section 106(3) requires that Plaintiffs -- to be faithful to the statute -- affirmatively plead that Defendant made an offer to distribute, and that the offer to distribute was for the purpose of further distribution, public performance, or public display…. Thus, because Congress did not expressly equate the act of "offering to distribute... for the purposes of further distribution" to the act of "making available," Plaintiffs' allegations -- insofar as Plaintiffs wish to hold Defendant liable for acts of infringement other than actual downloading and/or distribution -- fail to state a claim.” 551 F. Supp. 2d 234, 244-5 (DC SD NY 2008)Section 106(3)

12. London-Sire Records “Making available” & music sharing— “Plainly, "publication" and "distribution" are not identical. …In this context, that means that the defendants cannot be liable for violating the plaintiffs' distribution right unless a "distribution" actually occurred. …The Court can draw from the Complaint and the current record a reasonable inference in the plaintiffs' favor -- that where the defendant has completed all the necessary steps for a public distribution, a reasonable fact-finder may infer that the distribution actually took place. … Per the plaintiffs' pleadings, each individual Doe defendant connected to the peer-to-peer, network in such a way as to allow the public to make copies of the plaintiffs' copyrighted recordings…Through their investigator, the plaintiffs have produced evidence that the files were, in fact, available for download. They have also alleged that sound recordings are illegally copied on a large scale, supporting the inference that the defendants participated in the peer-to-peer network with the intent that other users could download from the defendants copies of the plaintiffs' copyrighted material….At least at this stage of the proceedings, that is enough. The plaintiffs have pled an actual distribution and provided some concrete evidence to support their allegation.”” 542 F. Supp. 2d 153, 169 (DC Mass 2008)

13. Publication 17 U.S.C. 101 z“Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

14. Making available zElektra Ent.- distribution = publication but P did not allege “offering to distribute..for the purposes of further distribution.” zLondon-Sire Records– electronic file transfers fit within def. of distribution; Media Sentry proves feasibility of distribution, allegations and proof raise circumstantial inference of at least one download zCapitol Records– WCT and WPPT are not self executing. ”The Court's examination of the use of the term "distribution" in other provisions of the Copyright Act, as well as the evolution of liability for offers to sell in the analogous Patent Act, lead to the conclusion that the plain meaning of the term "distribution" does not including making available and, instead, requires actual dissemination. “

15. First Sale Doctrine - what is a sale? zVernor v. Autodesk yFacts re Autocad 14 and eBay yOwner v. Licensee xWise Factors Labeled a license, retain title, return/destruction of prints, no duplication, licensee to retain copies during agreement. xMAI trio (117 essential step doctrine) xRule of this case: It’s a license if Labeled a license Significant transfer restrictions Notable use restrictions yPolicy arguments xTiered pricing, increased sales, lower prices, less piracy xD says restrains alienation, ignores economic reality, upsets ALA

16. First Sale Doctrine – what is a sale? zUMG Recordings v. Augusto yFacts re promotional cds xNo fee, unsolicited, marked with label “promotional statement” xOwner v. licensee for 109 purposes? No prior arrangement Not numbered or identified or tracked No explicit acceptance by recipients of license status Vernor factors? Return of CD not required. zDigital First Sale– ReDigi in supp. @ p. 77

17. 109(b) – record rental exception zNotwithstanding the provisions of subsection (a), unless authorized by the owners of copyright in the sound recording and in the musical works embodied therein, the owner of a particular phonorecord may not, for purposes of direct or indirect commercial advantage, dispose of, or authorize the disposal of, the possession of that phonorecord by rental, lease or lending. zBrilliance Audio ySoundrecordings of musical works or any soundrecording??? Are audio books covered? yContext and legislative history – Congress intended to protect only sound recordings of musical works.

18. § 602. Infringing importation of copies or phonorecords (a) Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.

19. § 501. Infringement of copyright (a) Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 or of the author as provided in section 106A(a), or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright or right of the author, as the case may be.

20. § 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.

21. John Wiley v. KirtsaengKirtsaeng zFacts yFriends and family buy textbooks in Thailand, ship them to D in California and he sells them on eBay. yDC rejects sect 109 defense y$600,000--$75,000/each of 8 titles z“lawfully made under this title…” y109 v. 602 and Quality King

22. Inportation Right & First Sale zQuality King Distributors v. L’Anza Research yThe first sale doctrine is applicable to imported copies- facts presented are round trip copies made in US and reimported. y602(a), importation right y106(3), distribution right y109(a) first sale doctrine yUnanimous but J. Ginsburg round trip gloss

23. John Wiley v. Kirtsaeng-- below zMajority decision: “The first sale doctrine does not apply to copies manufactured outside the United States…” zJ. Murtha dissent yStatute does not say manufactured in the United States, it says “lawfully made under this Title.” yPolicy reasons and economic justifications yQuality King gloss??

24. John Wiley v. Kirtsaeng-majority zHolding: reversed--first sale doctrine applies to copies of a copyrighted work lawfully made abroad. y“Lawfully made under this title” x2 nd, 9 th, Wiley and SG—refers to geography xBrief for US as Amicus Curiae 5 and 9 th say it refers to copies made in US or made outside US and sold with permission in US yD and majority say nongeographic interpretation is better fit with language, context, c/l history and practical consequences..

25. John Wiley v. Kirtsaeng zLanguage_ geographic interpretation creates problems, simplicity and coherence favor D’s interpretation zContext- 1909 language and 109(c) 109(e) 110(1) and introduction to 106 cannot support geographic interpretation zc/l history in Bobbs-Merrill does not preclude d’s interpretation zALA, used book dealers, tech companies, consumer goods comps and museums.—list of horribles yP says not likely and didn’t follow Scorpio yHere, we are not sanguine, law has been unsettled, 9 th circuit gloss (which cannot be located in the statute) etc yDownstream control over authorized imports (no first sale applicable)

26. John Wiley v. Kirtsaeng zQuality King dicta about author giving US and British distribution rights to two different publishers: only the US edition would be “lawfully made under this title…”—dicta and wrong. zMarket segmentation now in trouble??? y109 undermines domestic segmentation yAnti trust law disfavors segmentation yIf Congress wants this interest favored, needs to speak more clearly yPerpetual downstream control worse than lack of market segmentation yQuality King concession that it is unlikely Congress would write into the law an incentive for oversees manufacuturing

27. John Wiley v. Kirtsaeng zKegan and Alito- if there is a problem now it was caused by Quality King which imposed 109 limits on 602. If Quality King were reversed, we would not be faced with the choice between perpetual downstream control v. destruction of market segmentation. Lawful owners of copies made abroad could resell but not import.

28. John Wiley v. Kirtsaeng zDissent by Ginsburg, Kennedy and Scalia (interesting alliance?) yQuality King dicta better result. xTitle 17 has no extraterritorial application xText exp. Word “under” favors P, consistent with 602(a)(3) c exceptions xHistory supports P xInternational exhaustion?—US takes national exhaustion position in trade talks. xAntitrust, horribles- where are they?