1. CS-202: Law For Computer Science Professionals Class 7: More Copyright Law David W. Hansen, Instructor November 30, 2006 © 2006 Skadden, Arps, Slate, Meagher & Flom LLP

2. Fair Use

3. The fair use doctrine is an equitable rule of reason that allows the use of copyrighted materials in limited circumstances. 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. (17 U.S.C.§107)

4. Fair Use Section 107 does not provide an exclusive list of fair use factors. Rather, the fair use doctrine: –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. The fair use doctrine cannot be "simplified with bright-line rules," and instead "calls for case-by-case analysis. The fair use copier must copy no more than is reasonably necessary to enable him or her to pursue an aim that the law recognizes as proper

5. Eldred v. Ashcroft (US 2003) The fair use defense allows the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances. Section 107 provides that fair use doctrine protects against copyright infringement for such things as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research. Fair use affords considerable latitude for scholarship and comment, and even for parody.

6. Parody: A "literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule." Campbell v. Acuff-Rose (US 1994)

7. Roy Orbison 2 Live Crew – Luther Campbell

8. Campbell v. Acuff-Rose (US 1994) 2 Live Crew was sued for copyright infringement based on its parody of Roy Orbisons Oh, Pretty Woman. 2 Live Crew claimed that its song,Pretty Woman," was intended, "through comical lyrics, to satirize the original work...." 2 Live Crew's manager informed Acuff-Rose that they: –They had written a parody of "Oh, Pretty Woman. –They would afford all credit for ownership and authorship of the original song to Acuff-Rose, Orbison and Dees (co-author). –They were willing to pay a fee for the use they wished to make of it.

9. Campbell v. Acuff-Rose (US 1994) Acuff-Rose's agent refused, stating: –"I am aware of the success enjoyed by 'The 2 Live Crew', but I must inform you that we cannot permit the use of a parody of 'Oh, Pretty Woman.'" Nonetheless 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.

10. Campbell v. Acuff-Rose (US 1994) Almost a year later, after nearly a quarter 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 Supreme Court held that the 2 Live Crew parody may be a protected fair use within the meaning of §107. The burden is on the purported fair user to establish what otherwise would be a copyright infringement.

11. Campbell v. Acuff-Rose (US 1994) First factor: The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes. –parody has an obvious claim to transformative value – adds something new, with a further purpose of different character, altering the first work with new expression, meaning, or message. –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. Parody is thus eligible to claim fair use under § 107 even if the parody is for commercial gain.

12. Campbell v. Acuff-Rose (US 1994) First factor (cont.): –If a parody whose wide dissemination in the market runs the risk of serving as a substitute for the original or licensed derivatives, 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 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.

13. Campbell v. Acuff-Rose (US 1994) Second factor: The nature of the copyrighted work. –Draws on Justice Story's expression, the value of the materials used. –Some works are closer to the core of intended copyright protection than others, and as a consequence, fair use is more difficult to establish. –Orbisons original creative expression falls within the core of the copyrights protective purposes. –This fact, however, is not much help in this case... Since parodies almost invariably copy publicly known, expressive works.

14. Campbell v. Acuff-Rose (US 1994) Third factor: The amount and substantiality of the portion used in relation to the copyrighted work as a whole. –In Justice Story's words, the quantity and value of the materials used. –Parody's humor/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.

15. Campbell v. Acuff-Rose (US 1994) Third factor (cont.): –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 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. –Suffice it to say here that, as to the lyrics, we think... 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.

16. Campbell v. Acuff-Rose (US 1994) Fourth factor: The effect of the use upon the potential market for or value of the copyrighted work. –Court must 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. –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.

17. Digital Sampling (fair use and de minimis infringement)

18. The Beastie Boys Newton v. Diamond (9 th Cir. 2004)

19. The appeal involved: –the difficult and important issue of whether the incorporation of a short segment of a musical recording into a new musical recording, i.e., the practice of sampling, requires a license to use both the performance and the composition of the original recording. The sample – a 6 second, 3 note segment from Choir, written and recorded by jazz flutist James Newton. The samplers – Beastie Boys. Used in Pass the Mic – looped as a background element throughout. License: –Obtained a license to sample the sound recording from ECM Records. –No license from Newton to use the underlying composition.

20. Newton v. Diamond (9 th Cir. 2004) District court: –No license was required because the notes in question (C, D flat, C – over a held C) lacked sufficient originality to merit copyright protection. –Alternatively, use of a brief segment was a de minimis use of the composition and thus not actionable. Ninth Circuit: –We affirm on the ground that the use was de minimis. –The sampled segment was simple, minimal and insignificant to the work as a whole. –An average audience would not discern Newtons hand as a composer, apart from his talent as a performer, from the Beastie Boys use of the sample.

21. Newton v. Diamond (9 th Cir. 2004) Actionable infringement requires significant or substantial copying. Trivial copying not enough for actionable infringement. –Reflects the legal maxim de minimis non curat lex (the law does not concern itself with trifles.) Issue: Would an average audience recognize the appropriation? If not, the use is de minimis.

22. Newton v. Diamond (9 th Cir. 2004) The infringement focuses on the notes Newton wrote in the score. –Must filter the particulars of Newtons creative performance since licensed. Fragmented literal similarity –A high degree of similarity/limited scope of copying. –Does the copying go to trivial or substantial elements? Substantiality –Measured by considering the qualitative and quantitative significance of the copied portion of the work relative to the work as a whole. –So much taken that the value of the original is sensibly diminished. –Importance to infringers work irrelevant.

23. Newton v. Diamond (9 th Cir. 2004) No reasonable juror could find the sampled portion of the composition to be a quantitatively or qualitatively significant portion of the composition as a whole. Quantitatively –The three-note sequence appears only once in Newtons composition. –The segment lasts only 6 seconds and is roughly two percent of the 4- 1/2 minute recording, Qualitatively –The section is no more significant than any other section. –Does not represent the heart or the hook of the work.

24. N.W.A. Bridgeport Music (6 th Cir. 2004)

25. Case involved the use of a sample from the composition and sound recordingGet Off Your Ass and Jam by George Clinton, Jr. and the Funkadelics. The sample was used in the rap song100 Miles and Runnin which was included in the sound track of the movie I Got the Hook Up (Hook Up). Get off opens with a 3 note combination solo guitar riff that lasts 4 seconds. 100 Miles contains a 2 second sample from the guitar solo. The sample lowered the pitch and looped the copied portion for 16 beats. The sample appeared in 100 Miles in five places for a total of 35 seconds.

26. Bridgeport Music (6 th Cir. 2004) The analysis for determining infringement of a musical composition copyright is not the analysis that is to be applied to determine infringement of a sound recording. The decision only addressed sampling as relates to sound recording copyrights.

27. Bridgeport Music (6 th Cir. 2004) Advances in technology coupled with the advent of the popularity of hip hop or rap music have made instances of digital sampling extremely common and have spawned a plethora of copyright disputes and litigation. The music industry, as well as the courts, are best served if something approximating a bright-line test can be established. Not necessarily a "one size fits all" test, but one that, at least, adds clarity to what constitutes actionable infringement with regard to the digital sampling of copyrighted sound recordings.

28. Bridgeport Music (6 th Cir. 2004) Benefits of a bright-line test: –Ease of enforcement: Get a license or do not sample. –The market will control the license price and keep it within bounds. –Sampling is never accidental. No de minimis taking of a copyrighted sound recording: –Under§ 114(b), the copyright owner has the exclusive right to sample his own recording. –Even when a small part of the sound recording is sampled, the part taken is something of value. –A de minimis test would involve mental, musicological, and technical gymnastics.

29. Reverse Engineering (Fair Use)

30. Sega v. Accolade (9 th Cir. 1992) Accolade used a two-step process to make its video games compatible with Segas Genesis console: –First, Accolade reverse engineered Segas video game programs in order to discover the requirements for compatibility with Genesis. Accolade: Disassembled the object code in commercially available copies of Segas game cartridges into source code. Used the disassembled code to discover the interface specifications. Created a manual that contained functional descriptions of the interface requirements and did not include any of Segas code. –Second, Accolade created its own games for Genesis. No copying of Sega code. Relied only on information in the manual.

31. Sega v. Accolade (9 th Cir. 1992) The Issue: The case presented the following difficult question of first impression: –Whether the Copyright Act permits persons who are neither copyright holders or licensees to disassemble a copyrighted computer program in order to gain an understanding of the unprotected functional elements of the program. The Holding: –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.

32. Sega v. Accolade (9 th Cir. 1992) Preliminary Issues: –Intermediate copying. The computer file generated by the disassembly program, the printouts of the disassembled code, and the computer files containing Accolades modifications of the code all satisfy the copy requirement (fixed in some tangible form). –Copyrightability of object code. Although some scholarly authority supports the view that object code is not entitled to a full range of copyright protection, this view previously rejected by the 9 th Circuit.

33. Sega v. Accolade (9 th Cir. 1992) Fair use: First factor –The fact that the copying was for a commercial purpose weighs against fair use; this is only a matter of degree, not an absolute. –The use was an intermediate one only and any commercial exploitation was indirect and derivative. –Accolades purpose was simply to study the functional requirements for Genesis compatibility so that it could modify existing games and make them useable with Genesis. –There was no other method for studying those requirements. –Accolade copied the code for a legitimate, essentially non-exploitive purpose, and the commercial aspect of its use can best be described as of minimal significance. –Public benefit – increase in number of independently designed Genesis cartridges.

34. Sega v. Accolade (9 th Cir. 1992) Fair use: Second factor –Not all copyrighted works are entitled to the same level of protection. –Computer programs pose unique problems for the application of the idea/expression distinction. To the extent that there are many possible ways of accomplishing a given task or fulfilling a particular market demand, the programmers choice of a program structure and design may be highly creative and idiosyncratic. Computer programs are, however 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.

35. Sega v. Accolade (9 th Cir. 1992) Fair use: Second factor (cont.) –Because of the hybrid nature of computer programs, there is no settled standard for identifying what is protected expression and what is unprotected idea.

36. Sega v. Accolade (9 th Cir. 1992) Fair use: Third factor –Accolade disassembled entire programs written by Sega. –This factor weighs against Accolade but does not preclude a finding of fair use. –In fact, where the ultimate (as opposed to direct) use is as limited as it was here, the factor is of limited weight.

37. Sega v. Accolade (9 th Cir. 1992) Fair use: Fourth factor –A use that effectively usurped the market for the copyrighted work would preclude a fair use finding. –Not true of a use which simply enables the copier to enter the market. –Accolade did not attempt to scoop Segas release of games, but sought only to become a legitimate competitor in the field of Genesis-compatible video games. –Accolades market entry undoubtedly affected the market. –No basis for concluding the Accolade games affected the market for Sega games – a consumer might easily purchase both. –Attempting to monopolize the market by making it impossible for others to compete runs counter to the statutory purpose of promoting creative expression. –Disassembly of the object code was necessary in order to understand the functional requirements for Genesis compatibility. –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. –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.

38. Kelly v. Arriba Soft (9 th Cir.)

39. Kelly v. Arriba Soft (9 th Cir. 2003) The Plaintiff: Leslie Kelly, a professional photographer who has copyrighted many of his images of the American West. Brought suit for copyright infringement. The Defendant: Arriba Soft, now Ditto.com, operated an Internet search engine that displayed results in the form of low resolution thumbnails of pictures obtained by web crawlers. Once the thumbnails were created, the full-sized originals were deleted from Arribas servers. Although users could copy thumbnails, the resolution of the thumbnails could not be increased; enlargement resulted in a loss of clarity.

40. Kelly v. Arriba Soft (9 th Cir. 2003) Between January and June 1999: –Clicking on the thumbnail produced an "Images Attributes" page, which used in-line linking to import the original full-sized picture and incorporate the image in a page with text describing the size of the image, a link to the original web site, the Arriba banner, and Arriba advertising. From July 1999 to August 2000: –The results page contained thumbnails accompanied by two links: Source and "Details The "Details" link produced a screen similar to the Images Attributes page but with a thumbnail rather than the full-sized image. Clicking the "Source" link or the thumbnail resulted in two new windows on top of the Arriba page, include a page that contained the full-sized image. After August 2000: –Clicking on the thumbnail results in a window of the home page of the image appearing on top of the Arriba page. There is no window just containing the image.

41. Kelly v. Arriba Soft (9 th Cir.)

42. Kelly v. Arriba Soft (9 th Cir. 2003) Arriba conceded that Kelly had established a prima facie case of infringement of his reproduction rights. The only issue on appeal was whether Arribas display of the thumbnails was a protected fair use.

43. Kelly v. Arriba Soft (9 th Cir. 2003) 1. Purpose and character of the use: is the use for commercial purposes –Although commercial, the use of Kellys images was more incidental and less exploitative in nature than more traditional types of commercial use. –Arriba was neither using Kelly's images to directly promote its web site nor trying to profit by selling Kelly's images. –Kelly's images were among thousands of images in Arriba's search engine data- base. –Because the use of Kelly's images was not highly exploitative, the commercial nature of the use weighs only slightly against a finding of fair use.

44. Kelly v. Arriba Soft (9 th Cir. 2003) 1. Purpose and character of the use: is the use transformative –Although Arriba made exact replications of Kelly's images, the thumbnails were much smaller, lower-resolution images that served an entirely different function than Kelly's original images. –Kelly's images are artistic works intended to inform and to engage the viewer in an aesthetic experience. –Arriba's use of Kelly's images is unrelated to any aesthetic purpose but rather serves as a tool to help index and improve access to images on the internet and their related web sites. –Users are unlikely to enlarge the thumbnails and use them for artistic purposes because they are of much lower-resolution than the originals and lose clarity when enlarged making them inappropriate for display.

45. Kelly v. Arriba Soft (9 th Cir. 2003) 2. Nature of the copyrighted work: –Works that are creative in nature are closer to the core of intended copyright protection than are more fact-based works. –Photographs like Kelly's are generally creative in nature. –Published works like Kelly's are more likely to qualify as fair use because the first appearance of the artist's expression has already occurred. Considering both of these elements, the Court found that this factor weighs only slightly in favor of Kelly.

46. Kelly v. Arriba Soft (9 th Cir. 2003) 3. Amount and substantiality of portion used: –While wholesale copying does not preclude fair use per se, copying an entire work militates against a finding of fair use. –The extent of permissible copying varies with the purpose and character of the use. –If the secondary user only copies as much as is necessary for his or her intended use, then this factor will not weigh against him or her. This factor neither weighs for nor against either party –Arriba needed to copy the entire image so that users could recognize it and decide whether to pursue more information about the image or the originating web site.

47. Kelly v. Arriba Soft (9 th Cir. 2003) 4. Effect of the use upon the potential market for or value of the copyrighted work: –A transformative work is less likely to have an adverse impact on the market of the original than a work that merely supersedes the copyrighted work. –Arriba's thumbnails do not harm the market for Kelly's images or the value of his images. –Arribas thumbnails guide users to Kelly's web site rather than away from it. –The thumbnails do not substitute for the full- sized images because they lose their clarity when enlarged. Because Arriba's creation and use of the thumbnails does not harm the market for or value of Kelly's images, this factor weighs in favor of Arriba.

48. Kelly v. Arriba Soft (9 th Cir. 2003) Arribas creation and use of the thumbnails in the search engine is a fair use. Arriba's use of Kelly's images promotes the goals of the Copyright Act and the fair use exception. The thumbnails do not stifle artistic creativity because they are not used for illustrative or artistic purposes and therefore do not supplant the need for the originals. In addition, they benefit the public by enhancing information-gathering techniques on the internet. The 9 th Circuit remanded for a determination of whether Arribas display of full size images (pre-September 2000) was a fair use.

49. Perfect 10 v. Google (C.D. Cal.) Perfect 10 operates adult website. Sued Google for copyright infringement based on thumbnails displayed on Google Image Search. District court granted Perfect 10 injunction in February 2006. No fair use since Google thumbnails compete commercially with Perfect 10 cell phone image business. Amazon s A9.com search to be addressed in separate order.

50. Google Print

59. McGraw Hill, et. al. v. Google Copyright infringement lawsuit filed in Manhattan by a number of publishers, including McGraw Hill and Penguin Publishers. The Authors Guild raised similar concerns in a separate complaint it filed against Google in September. The Complaint alleges that the Copyright Act "squarely put[s] the burden on Google" to obtain permission to copy the books, and not on the publisher to tell Google which particular titles ought not to be copied. The Complaint alleges that a copyright owner is under no duty to self-identify which among its works it does not want infringed.

60. "Both the Google Library Project and Google's pronouncement that publishers must provide to Google detailed lists of books that they wish to be excluded are contrary to the black letter requirements of the Copyright Act. The publishers advised Google before the Complaint was filed that none of their works should be copied, and that it was incumbent on Google to search the libraries' bibliographic records to identify the pertinent titles to be excluded. In response to complaints, Google suspended work on the project to give publishers a few months to identify specific titles in the libraries' collections that should not be scanned. The deadline to submit those lists is Nov. 1. McGraw Hill, et. al. v. Google

61. The publishers claim that Google is attempting to harness their copyrighted works as a draw for more users to visit the search engine. They argue that the ultimate goal is to generate more ad revenue from sponsored links keyed to search terms. The publishers fear that Google's program is "likely to usurp [their] present and future business opportunities" for exploiting the works digitally. Unlike the thumbnail images at issue in Kelly v. Arriba Soft, Google is only displaying a small portion of the work not the entire work. Fair use? We will see. McGraw Hill, et. al. v. Google