1. COPYRIGHT LAW FALL 2006 CLASS 10 PROFESSOR FISCHER THE CATHOLIC UNIVERSITY OF AMERICA September 25, 2006

2. CLASS OUTLINE 1. Wrap-Up Points 2. Goals for this class: –A. To be able to analyze the copyrightability of pictorial, graphic, and sculptural works

3. TEST FOR ORIGINALITY FOR DERIVATIVE WORK According to the Batlin majority, what is the proper test for originality for a derivative work? There must be a “distinguishable variation” that is more than “merely trivial.”

4. TEST FOR ORIGINALITY FOR DERIVATIVE WORK Is Batlin really distinguishable from Alva Studios v. Winninger (the “Hand of God” case)?

5. TEST FOR ORIGINALITY FOR DERIVATIVE WORK Why does Meskill CJ dissent? Do you agree with the dissent?

6. Derivative Works: Harassment Fears Batlin majority: “To extend copyrightability to miniscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain works.” Is this fear justified, in your view? Why or why not?

7. Durham v. Tomy (2d Cir. 1980) CB p. 171 What is a more than trivial variation? Did the 2d Circuit find that the Tomy authorized reproductions of Mickey Mouse were original? Why or why not?

8. INCONSISTENT APPLICATION OF BATLIN IN THE SECOND CIRCUIT? Is TOMY consistent with the EDEN TOYS case, the SHERRY case, or the ERG case? How can we reconcile these cases?

9. Gracen v. Bradford Exchange CB p. 174 What was the issue in this case? What test for originality did the 7th circuit apply? What was the 7 th Circuit afraid of?

10. MIRAGE v. Albuquerque A.R.T. (9th Cir. 1988) Mirage published Nagel/owns coyrights Albuquerque bought books and mounted them on tiles Were they derivative works? If so, infringed Mirage’s rights

11. 9th Circuit: A Lesser Test for Originality for Derivative Works Seems to follow Catalda case, which required only a modest grade of originality (a de minimis standard). Batlin seems to suggest some higher standard of creativity required. See e.g. cases like the Mirage case - mounting artworks on tiles found to be a derivative work (856 F. 2d. 1341 (1988))

12. GRACEN COURT “[I]f the difference between the original and A’s reproduction is slight, the difference between A’s and B’s reproduction will also be slight, so that if B had access to A’s reproductions, the trier of fact will be hard-pressed to decide whether B was copying A or copying the Mona Lisa itself.”

13. Retreat from Gracen standard By Judge Posner in Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923 (7 th Circ. 2003). Stated “the only “originality” required for the new [derivative] work to be copyrightable...is enough expressive variation from public-domain or other existing works to enable to new work to be readily distinguished from its predecessors.” Called the requirement “undemanding.”

14. Mona Lisa Reproductions

15. Ets-Hokin v. Skyy Spirits, 323 F.3d 763 Did the first photographer’s photograph have enough originality to be copyrightable? (see photos on p. 176 of Supp) Did the second photograph infringe?

16. Sufficient Originality? Photographs of fabric designs? Color transparencies which reproduced famous public domain artworks?

17. WRAP UP: DERIVATIVE WORKS In determining whether a derivative work is original enough to be copyrightable, the Second and Seventh Circuits have been motivated by a fear of harassment by the person or entity claiming copyright in the derivative work. The fear is that that person would use its copyright in the derivative work to improperly claim copyright in a public domain work, or to effectively prevent or greatly limit the licensor in relicensing a copyrighted work to someone else. The Ninth Circuit is less worried about this, and has accepted a lesser standard of originality for derivative works than the Second/Seventh Circuits.

18. PICTORIAL, GRAPHIC AND SCULPTURAL WORKS What is a pictorial, graphic or sculptural work, according to the Copyright Act of 1976? What are some examples of such a work?

19. PICTORIAL GRAPHIC AND SCULPTURAL WORKS “...include two-dimensional and three- dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned.” 17 U.S.C. § 101.

20. EXAMPLES Maps (protected since 1790) - though not place names on a map or arbitrary symbols on a map Photographs Paintings or Sculpture Prints Art Reproductions (as derivative works - need consent to use underlying works) Charts Diagrams Drawings (including technical, building plans)

21. Does It Matter If A Work is Useful? (Applied Art) Can a doll be copyrightable? Can a bank in the shape of a dog be copyrightable? Can a Christmas decoration be copyrightable?

22. PICTORIAL GRAPHIC AND SCULPTURAL WORKS “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.” - from definition of pictorial, graphic and sculptural works in 17 U.S.C. § 101

23. USEFUL ARTICLES What’s a useful article?

24. USEFUL ARTICLES What’s a useful article? Section 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.” Is that a circular definition?

25. A LITTLE HISTORY ON COPYRIGHTABILITY OF USEFUL ARTICLES Long protected by design patents Until 1954 assumption was that design patent was ONLY way to protect the design of a useful article Much criticism of this situation (e.g. Barbara Ringer’s Report from 1975) - why was there criticism? Why has copyright law traditionally been hostile to protecting the design of useful articles?

26. Design Protection Legislation After Registrar Ringer’s report, there were many attempts to enact design protection legislation Narrow but complete design protection does currently exist to prevent copying the 3-D shape of certain kinds of useful articles. What are these? No general design protectionlegislation otherwise H.R. 5055 : what does this piece of legislation propose?

27. Design Protection Legislation Narrow but complete design protection for 1. Vessel Hulls (s. 1301) 2. Architectural Works (s. 102(a)(8)) 3. Computer “mask” works

28. MAZER v. STEIN (1954) Involved dancer lamp not dissimilar to one on left What is the holding of this case? How was this case a “radical change”? Is it constitutional?

29. MASKS AND COSTUMES Are costumes copyrightable? Are nose masks copyrightable?

30. MASKS AND COSTUMES Are costumes copyrightable? Generally no – useful articles Are nose masks copyrightable? Yes – not useful articles (see masquerade (3d Cir. 1990) CB p. 228

31. TESTS FOR CONCEPTUAL SEPARABILITY Paul Goldstein: Of the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectable pictorial, graphic and sculptural works and unprotectable elements of industrial design.” See Pivot Point (7 th Cir. 2004) CB p. 234

32. TAXIDERMY FORMS Are taxidermy forms copyrightable? Should they be treated similarly to human mannequins?

33. PHOTOGRAPHS Originality: compare Mannion (CB p. 206) and Diadato (CB p. 218)