Module 5_Week 5_ Copyright Registration, Searching, Notice, and Infringement_Intellectual Property Law

Module 5

A. The Application for Copyright Registration

In the United States, copyright protection exists from the time a work is created.

Thus, applying for and securing a copyright registration is not a condition of copyright

protection. Nevertheless, copyright registration provides several benefits, such as

establishing a public record of the claim of copyright, allowing a claim of infringement to

be brought in federal court, and making available statutory damages and attorneys’ fees if

a registered work is infringed. The Copyright Office provides all forms necessary for

registration, and the process typically takes about 12 weeks (for electronically filed

applications). The Copyright Office website allows searching of records, and its

information specialists will help conduct searches of records for a fee. Although notice of

“Copr.”), the year of first publication of the work, and the name of the copyright owner.

when it is fixed in a copy or phonorecord for the first time. Although not required to

provide copyright protection for a work, registration of copyright with the Copyright

Office is inexpensive, easy, and provides several advantages, chiefly, that registration is a

condition precedent for bringing an infringement suit for works of U.S. origin. The

relative ease with which works may be registered is chiefly due to the fact that there is no

substantive examination of applications for registration of copyrights (as there is for

trademarks and patents). To register a work, the applicant must send the following three

elements to the Copyright Office: a properly completed application form, a filing fee, and

a deposit of the work being registered. Registration may be made at any time within the

life of the copyright.

Although there are three different methods of applying for registration, the

information required of an applicant is nearly identical whether one files electronically

(using eCO), one uses the fill-in form, or one uses a paper application form. Generally,

there are several sections or “fields” that must be completed. In order to obtain the

information needed for the copyright application, many law firms ask clients to complete

an application using eCO, various links and prompts are provided. For example, if one is

unsure whether one’s work is published, the system provides a link to an explanation of

the term “published.” Similarly, the system shows applicants what they have completed

and what parts of the application are incomplete.

The application must indicate if the author’s contribution is anonymous or

pseudonymous. An author’s contribution to a work is anonymous if a natural person is

not identified on the copies or phonorecords of the work. An author’s work is

pseudonymous if the author is identified under a fictitious name, such as the books

written by Stephen King under the pseudonym Richard Bachman. If the author is dead,

the application requires that the date of death be given (because copyright protection for

most works lasts for life plus 70 years, the author’s date of death determines copyright

duration). The author’s birth date is requested, although it is not required. If the work is

one made for hire, the date of birth space should be left blank. The author’s citizenship

and domicile must be given in all cases.

The Copyright Office is authorized by 17 U.S.C. § 708 to charge fees. Effective

August 1, 2009, the nonrefundable fee for filing an application using eCO is $35, the

filing fee for using the fill-in CO form is $50, and the filing fee for filing a paper

application is $65. Check the Copyright Office website or call (202) 707-3000 for the

latest fee information. If the application is submitted online, payment may be made by

credit or debit card, by using Pay.gov (the secure Web-based application operated by the

U.S. Treasury), by electronic funds transfer, or by using a deposit account. Credit cards

are not accepted for applications sent by mail although checks may be used. Cash is not

accepted. Individuals and law firms that engage in numerous transactions throughout the

year typically establish a deposit account with the Copyright Office (much the same way

that one may establish a deposit account with the USPTO). One must make a minimum

deposit of $450 and maintain that amount as a minimum balance against which fees will

be charged.

B. Deposit Materials

Section 407 of the Copyright Act requires that the owner of copyright or of the

exclusive right of publication in a work published in the United States deposit, within

three months after publication, two complete copies of the best edition of the work.

Deposits are to be made to the Library of Congress so that it can continue its tradition of

cataloging and collecting works published in the United States by ensuring that it

receives copies of every copyrightable work published in the United States. The

deposit requirement can be fulfilled through an application for copyright registration

(because deposit materials are required to be submitted with the application), the

requirement is mandatory whether or not an application is ever filed (although certain

works, including greeting cards, postcards, stationery, speeches, technical drawings,

works published and available only online, and advertising materials, are exempt).

Failure to deposit the materials does not cause a loss of copyright protection, but it may

subject a party to a fine (presently, $250) if the Copyright Office requests the deposit and

the copyright owner fails to supply the materials within three months. The deposit

requirements in the United States are similar to those in other countries.

The Copyright Act requires that copies or phonorecords deposited be of the best

edition of the work. The “best edition” requirement is intended to discourage inferior

deposit materials and encourage deposit materials of high quality. Generally, the best

edition is one that is larger rather than smaller; in color rather than black and white; and

printed on archival quality rather than less permanent paper. For example, for books,

hardcover rather than softcover copies are the best edition, and sewn rather than glue-

only binding is preferred; for photographs, unmounted rather than mounted photographs

are the best edition; for phonorecords, compact digital discs rather than vinyl discs are the

best edition; for motion pictures, films rather than videotape formats are the best edition.

depositor cannot deposit the best edition, a request for special relief may be made, stating

why the applicant cannot send the required deposit (generally, because of cost or undue

burden) and what the applicant wishes to submit in place of the required deposit.

After the best application method has been selected and the appropriate form

completed and the correct deposit materials have been identified, the application may be

filed with the U.S. Copyright Office. For electronic filers, when payment is complete a

“Payment Successful” screen will be shown, and an e-mail verification will be sent to the

applicant to confirm the filing of the application. Moreover, each eCO application is

assigned a Case Number, which can be used to track the status of the application.

Paper or fill-in form applications may be sent by regular or express mail, with

specific types of work being sent to unique zip code extensions. Despite the apparent

complexity of the various filing methods and deposit requirements, for those with

familiarity with copyright law and procedure, completing the application form often takes

30 minutes or less. Although not required, it is a good idea to send a cover letter

accompanying an application sent by mail. The cover letter can confirm the contents of

the package and provide the name and phone number of a person to contact in the event

the Copyright Office has questions. Many applicants also include a “come-back” card, a

self-addressed and stamped postcard so the Copyright Office can confirm the filing of the

application because the Copyright Office itself does not issue any acknowledgment that a

paper application has been received.

The Copyright Office will assign the application to a specialist; however, the

examination of the application is not substantive, as is the case with trademark and patent

applications. Generally, a copyright application is examined only to ensure that the

material in which the copyright is claimed is copyrightable (e.g., a copyright claim in

facts, a recipe, or a blank form will be refused) and that the material deposited complies

with statutory requirements. The examiner will review the application to ensure all

information is complete and compare the application and deposit for consistency. It is

nearly impossible to determine the status of a paper application that has been filed. The

information, but such information is typically provided only upon payment of applicable

fees.

After examination, the Copyright Office will either issue a certificate of

registration or contact the applicant by letter or phone asking for additional information

or explaining why the application has been rejected. If the Copyright Office has

questions, the applicant usually has 120 days to respond. Failure to respond within the

time required generally results in the closing of the file without further notification. If

registration is later desired, a new application, deposit, and fee must be submitted. If the

application is acceptable, the Copyright Office will register the copyright by issuing a

registration. Copyright registration is effective on the date the Copyright Office receives

a complete application package in acceptable form, regardless of how long it may take to

process the application.

In general, Copyright Office policy is to resolve questionable cases in favor of the

applicant under its rule of doubt, meaning that although the Copyright Office has doubts

about copyrightability, it will resolve doubts in favor of the applicant and allow a court to

make a final determination in the future if questions arise regarding copyrightability.

Because Copyright Office records are a matter of public record, once a copyright is

registered or a document is recorded, other third parties may view it and access it, and the

records may then appear on Internet search engines such as Google, complete with the

name, address, and telephone number of the copyright claimant, causing a loss of privacy

to the copyright claimant.

If registration is refused by the Copyright Office, reconsideration can be

requested. The applicant “appeals” the adverse decision by making a written request for

reconsideration and paying the fee of $250 within three months after refusal. A response

in writing will be made by the examining division. A second request for reconsideration

may be directed to the Copyright Office Board of Review upon payment of an additional

fee of $500. If registration is still refused, the applicant may seek judicial review in the

U.S. District Court for the District of Columbia. Because copyright registration is a

prerequisite for an infringement suit for works originating in the United States, refusal of

registration would put a party who believes his or her work has been infringed in the

untenable situation of being unable to initiate action in federal court for infringement.

Thus, if registration has been applied for and refused, the applicant may still file an

infringement action but must provide notice of the action and a copy of the complaint to

the Register of Copyrights. The Register may become a party to the court action but only

with regard to the registrability of the work. The Copyright Office can cancel a

registration if it is determined that a work is not copyrightable or the check for the filing

fee is returned for insufficient funds. Prior to cancellation, the Copyright Office will

provide notice to the registrant so the registrant has an opportunity to respond to the

cancellation procedure.

If information in a registration is incorrect or incomplete, an application may be

filed for supplementary copyright registration to correct the error or amplify the

information given. Supplementary registration can be made only if a basic copyright

registration for the same work has already been issued. Paper Form CA must be used, and

the filing fee is $100. No deposit materials should be included. Supplementary

registration is not necessary for minor typographical errors or omission of articles, such

as the word the.

A new procedure in the Copyright Office (pursuant to the 2005 Family

Entertainment and Copyright Act, 17 U.S.C. § 408(f)) allows preregistration for certain

classes of works that have a history of prerelease infringement. Preregistration allows a

commercial release, often to obtain injunctive relief to stop threatened or actual

infringement. To qualify for preregistration, the work must be unpublished, it must be in

the process of being prepared for commercial distribution, and it must be a certain type of

work (namely, a motion picture, sound recording, musical composition, literary work,

computer programs including video games, or advertising or marketing photographs).

Preregistration is not a substitute for regular registration but is simply an indication of an

intent to register a work once it is completed or published.

If a work has been preregistered, the copyright owner must register the work

within one month after the owner becomes aware of the infringement and no later than

three months after the first publication in order to preserve the right to sue for

infringement in federal court. To pre-register, the copyright owner must apply online (no

paper application form is available). Only an application and fee are required. No deposit

is required; however, a more detailed description of the work is required. For example,

for a movie, the applicant should describe its subject matter, provide a summary of the

plot, identify the director and principal actors, and so forth. In fiscal year 2009, the

C. Searching Copyright Office Records

It may become necessary to determine whether a copyright for a work has been

registered or what copyrights are registered to a company or individual. For example, if a

company is selling all of its assets to another, the buyer will typically conduct due

diligence and review records of the USPTO and the Copyright Office to determine what

patents, trademarks, and copyrights are registered in the seller’s name so these can then

be transferred to the buyer. Conducting searches prior to applying for copyright

registration is not nearly as critical as conducting searches prior to applying for trademark

or patent protection. Because copyright protection exists once a work is created and

independent creation is permissible, the fact that another party has a copyright

registration for a work will not preclude registration for another similar or identical work

(as long as the works do not copy from each other). Moreover, although titles are not

copyrightable, an author may wish to select a unique title for a book or movie, and a

search would reveal similar or identical titles, which might confuse consumers.

The records of the Copyright Office are open for inspection and searching by the

public. The Copyright Office, however, cannot give legal advice, answer questions on

possible infringement, recommend publishers, or enforce contracts. The records freely

available to the public at the Copyright Office itself consist of an extensive card catalog

(for registrations from 1870 through 1978) that provides an index to more than 70 million

registered copyrights and other records. Searching can be done by the title of the work,

author(s), claimant(s), date of publication, or registration number.

The Copyright Office itself will conduct searches for $165 per hour. The Records,

Research, and Certification Section of the Copyright Office will conduct a search and

provide a factual report on the results of the search. Searches can be initiated by writing

to this section or by calling (202) 707-6850. The Copyright Office will estimate the total

search fee (for a fee of $115) and initiate the search upon receiving the fee. Upon

payment of additional fees, the search can be expedited. A search request form is

provided in Copyright Office Circular 22.

D. Obtaining Copyright Office Records and Deposit Materials

Upon request, the Records, Research, and Certification Section of the Copyright

Office will prepare certified or uncertified copies of certain public records. Applications,

registrations, assignments, licenses, and other documents pertaining to copyrights can be

obtained. Generally, these records can be obtained for minimum fees (e.g., $35 for an

additional copy of a certificate of registration). Certified copies are usually requested as

evidence of the authenticity of a document when litigation involving the copyright is

involved. Upon payment of additional fees, expedited service is possible. Obtaining

copies of deposit materials is considerably more difficult than obtaining copies of

records. Moreover, not all deposits are retained.

The Copyright Office policy is to retain deposits for published and registered

works for five years (10 years for works of visual arts). Unpublished deposits are

generally kept for the full copyright term. Registrants who wish to ensure the Copyright

Office retains their published deposits for the duration of a copyright term must pay a fee

of $470 to cover storage costs. Rather than providing the actual deposit material, the

reproduction of a sound recording. A fee will be quoted by the Copyright Office when the

request for deposit material is made.

E. Copyright Notice

Before March 1, 1989 (the date of adherence by the United States to the Berne

Convention), the use of a notice of copyright (usually the symbol © together with the

year of first publication and copyright owner’s name) was mandatory. Since that date, the

notice is no longer mandatory, although it is recommended and offers some advantages.

Use of the notice informs the public that the work is protected by copyright, identifies the

infringed, if a proper notice of copyright appears on a published work to which the

defendant had access, the defendant cannot assert that the infringement was innocent. (A

successful innocent infringement defense may result in a reduction of damages.) Use of

the notice is the responsibility of the copyright owner and does not require advance

permission from or registration of copyright with the Copyright Office.

Works published before January 1, 1978, are governed by the 1909 Copyright

Act. Under that Act, if a work was published under the copyright owner’s authority

without a proper notice of copyright, all copyright protection for that work was

permanently lost in the United States. Many works fell into the public domain merely

because the owner failed to include the copyright notice. To align the United States with

the laws of most other foreign countries, the United States joined the Berne Convention

in 1989 and agreed to eliminate any requirement for copyright notice. With regard to

works published between January 1, 1978, and March 1, 1989, omission of a notice was

generally excused if the notice was omitted from a small number of copies or registration

was made within five years of publication and a reasonable effort was made to add the

notice after discovery of its omission.

Because audio recordings such as audiotapes and phonograph discs are not

“copies” but are “phonorecords” under the Copyright Act, the form of the copyright

notice is different from that used for visually perceptible copies. Copyright in a sound

recording protects the particular series of sounds fixed in the recording against

unauthorized reproduction, revision, and distribution. Phonorecords may be records (such

as LPs and 45s), audiotapes, cassettes, or discs.

Under the 1909 Copyright Act (and until March 1, 1989), copyright notices were

mandatory; failure to give the notice resulted in permanent loss of copyright. There were

no provisions to cure omissions of notice. The 1976 act attempted to lessen the harshness

of prior law and allowed for the cure of omissions of notice or certain errors as long as

the cure occurred within five years of publication. For works published after March 1,

1989 (the effective date of the Berne Convention Implementation Act), use of the notice

of copyright is optional, and omissions and errors in the notice are less important. There

may, however, still be issues such as the defense of innocent infringement where the

question of proper notice may be a factor in assessing damages in infringement actions.

Some errors are considered so serious that they are viewed as equivalent to omitting the

notice entirely. These errors include failing to include the symbol ©, the word

“Copyright,” or the abbreviation “Copr.”; dating a notice more than one year later than

the date of publication; giving a notice without a name or date; and locating a notice so

that it does not give reasonable notice of the claim of copyright.

The omission of a notice does not affect copyright protection, and no corrective

action is required if the work was published after March 1, 1989. Under Section 406, if

an error in the date occurs for works distributed after January 1, 1978, and before March

1, 1989, it may affect copyright duration. For example, if a work for hire is published in

1985 and yet the copyright notice gives the year as 1984, the term will be measured from

1984 and the copyright will last until 2079 (95 years from 1984). If the year date in the

notice is more than one year later than the year of publication, the work is considered to

be published without any notice.

Many copyright owners and publishers place notices or information in addition to

the three elements of a copyright notice. For example, the following information is often

be reproduced, displayed, broadcast, or disseminated in any form without prior written

consent.” Such additional information may be included in the copyrighted work;

however, it is mere surplusage and provides no rights beyond those already provided for

commonly used in many foreign countries. Surplusage should never take the place of the

actual copyright notice and serves primarily to offer a certain level of comfort to the

author or copyright owner.

F. Copyright Infringement

A copyright owner who has a registered copyright may bring an action for

infringement when any of his or her exclusive rights have been infringed by another.

Generally, to prevail in an infringement action, a plaintiff must show ownership of

the defendant had access to the work and that the defendant’s work is substantially

similar to that of the copyright owner. There are various defenses a defendant may assert

in an infringement action. One of the most common defenses is that the defendant’s use

of the work is a “fair use.” Fair use is generally used for news reporting, scholarship,

research, or educational purposes. Courts examine four factors in determining whether a

defendant’s use of a copyrighted work is fair use: the purpose and character of the use,

including whether the use is of a commercial nature or is for nonprofit educational work;

the nature of the copyrighted work (with factual works receiving less protection than

works of fiction or fantasy); the amount and substantiality of the portion taken by the

defendant; and the effect of the defendant’s use on the market for the plaintiff’s work.

Other defenses include laches, unclean hands, and the statute of limitations, which is

three years from the infringing act.

Registration (or preregistration) of a copyright is a requirement for initiating an

action for infringement, 17 U.S.C. § 411, although registration is not required for works

not originating in the United States. Moreover, prompt registration is a prerequisite for

certain remedies for infringement. 17 U.S.C. § 412. Thus, although registration is not

required to obtain copyright protection for a work, the failure to register will preclude a

refused by the Copyright Office, an action for infringement may still be brought if the

author notifies the Copyright Office of the action. The Register of Copyrights then has

the right to become a party to the action with respect to the issue of registrability of the

who violates any of the exclusive rights of a copyright owner (rights of reproduction,

adaptation, distribution, performance, and display), or of the author (as provided in the

Visual Artists Rights Act), or who imports copies or phonorecords into the United States

in violation of copyright law, is liable for direct infringement of the copyright or right of

the author. For example, the following may constitute infringement: playing copyrighted

music in a large department store without permission; failing to provide attribution for a

painting or other work covered by the Visual Artists Rights Act; and photocopying

material from a copyrighted book.

G. Elements of Infringement

To prevail in an infringement action, a plaintiff must prove two things: his or her

ownership of a valid copyright and copying or some other impermissible invasion by the

defendant of one of the exclusive rights afforded to copyright owners. Ownership is

usually more easily established than copying. A party may prove ownership by

demonstrating that he or she is the author of the work or that the copyright in the work

has been transferred to him or her. A certificate of copyright registration (made before or

within five years of the first publication of the work) will establish prima facie evidence

in court of the validity of the copyright and of the facts stated in the certificate, including

the identity of the author or copyright owner.

Ownership issues often arise in the context of work-made-for-hire disputes,

particularly when a party claims he or she is not an employee and thus work cannot be

owned by an employer or when a party claims there was no written agreement relating to

the status of a specially commissioned work and thus he or she has retained copyright

ownership. Remember that the author of a work made for hire is the employer or the

commissioning party. Thus, such employer or commissioning party would be the proper

plaintiff in an action relating to infringement of a work made for hire. If the copyright has

been transferred to another, that party is now the owner of the transferred rights and has

the right to protect the work by an infringement action. For example, if a copyright author

has transferred (in writing) exclusive rights to perform a work to another and the work is

infringed by impermissible performance, the transferee’s rights have been infringed.

Courts will insist the plaintiff prove the transfer and show how the plaintiff

acquired rights. Additionally, the plaintiff must have been the owner at the time his or her

rights were infringed. If a copyright owner has transferred a work to another and yet

retains some connection with the work, for example, by receiving periodic royalty

payments, the owner, as well as the transferee’s rights, have been infringed because both

are affected by an infringement that would reduce the value of the work; therefore, both

have the standing to initiate an infringement suit. Upon introduction of the registration (or

transfer of copyright) into evidence, the court will presume that the work is protected

under copyright law (although that presumption can be rebutted or defeated by the

defendant) and that the plaintiff has ownership rights in the work such that he or she is

the proper party to bring the infringement action.

Copying may be proven by direct or indirect evidence. Direct evidence exists

when the defendant admits copying or an eyewitness can testify that copying took place.

Because it is usually very difficult to show direct evidence of copying, most cases rely on

indirect or circumstantial evidence of copying, which requires proof of two elements: that

the defendant had access to the copyrighted work and that there is substantial similarity

between his or her work and that of the defendant. An independently created work cannot

infringe even if it is identical to the copyrighted work.

Access is generally interpreted to mean that a party has a reasonable opportunity

to perceive or review a work, either directly or indirectly. Access can be inferred if the

copyrighted work has been widely disseminated. Moreover, if the two works are identical

or nearly so, it may be presumed that the defendant had access to the plaintiff’s work.

Generally, the greater the similarity between two works, the less access must be shown.

Conversely, if the works are entirely dissimilar, no amount of access will result in a

finding of copying.

As noted, because it is seldom possible to prove copying by direct evidence (such

as testimony from a witness who saw the defendant copy from the plaintiff’s book),

copying is usually proven through indirect or circumstantial evidence. Thus, infringement

is usually shown by demonstrating that the allegedly infringing work is substantially

similar to the copyrighted work. In some instances, map makers and directory authors

purposely include fictitious entries in their works; when the same erroneous matter is

found in a defendant’s work, copying is generally found to exist. The test used by most

courts, often referred to as the ordinary reasonable observer test, focuses on whether the

accused work is so similar to the copyrighted work that an ordinary reasonable person or

lay observer would recognize that the copyrighted work was appropriated by the

defendant. The lay observer test has been refined to take into account the intended market

for the works.

Thus, where infringement of a video game was alleged, and the target market was

young men, a court found that the intended purchasers (17½-year-old males) were a

knowledgeable and discerning group and would not regard the works as substantially

similar. Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988). Another

refinement of the lay observer test occurs when the works are complex, such as computer

programs. In such cases, expert testimony is usually used to prove or disprove substantial

similarity inasmuch as computer programs are highly technical and unfamiliar to most of

the general public. Many courts use a two-step analysis to determine if infringement has

occurred. The first step analyzes whether there has been copying. Once copying has been

established, the second step requires that a determination be made as to whether the

copying constitutes an impermissible appropriation, namely, whether the copying of the

protected material was so extensive that it rendered the offending and copyrighted works

substantially similar. In the first stage, some courts compare the works element by

element and create lists of similarities and dissimilarities, in essence, “dissecting” the

works. Other courts criticize dissection and prefer to focus on the overall similarities or

the “total concept and feel” of the works, especially when only some of the work is

protectable.

If part of a work is copied or taken, courts usually examine not only the quantity

of the work taken but also its characteristics and the nature of the work itself.

Infringement has been found even if language is not identical when recognizable

paraphrases have been taken. There is no precise answer to the question “How much is

too much?” In one case, the taking of fragments from three sentences in a book of more

than 200 pages was found to be an infringement. Moreover, if the part taken is the “heart”

of the material, there may be an infringement. It is not necessary that a large portion of

material be copied; it is sufficient if a material and significant part is taken even though

that may be a small part of the whole. Thus, a love story about lovers from different

economic classes with a tragic ending might not infringe the book Love Story; however,

using the well-known line, “Love means never having to say you’re sorry,” might well

constitute an infringement because the statement is an important portion of or the “heart”

of the work copied.

Once copying is shown, the examination must focus on whether the elements

taken were protected by copyright. It is permissible to take ideas but impermissible to

appropriate expression of those ideas. Works in the public domain may be examined, and

the defendant may attempt to prove that both the plaintiff’s work and the defendant’s

work share elements and similarities with works in the public domain. If all similarities

arise from the use of common ideas or works in the public domain, there can be no

infringement.

Some of the newer issues involving copyright infringement relate to the Internet.

For example, in March 2007, entertainment giant Viacom sued Google’s YouTube for

contributory copyright infringement, alleging that the video website did little or nothing

to prevent users from posting copyrighted videos on its site. Viacom asked for $1 billion

in damages, noting that clips from popular shows such as South Park are routinely posted

on YouTube, which in the past has removed offending clips upon a “takedown” request

by copyright owners. In mid-2010, a federal judge ruled in favor of YouTube, agreeing

that because YouTube complies with the takedown provisions of the Digital Millennium

that infringing activity occurs on YouTube is not sufficient to impose responsibility on

service providers such as YouTube. (Note that this approach is highly similar to the

ruling in the trademark case Tiffany (NJ) Inc. v. eBay Inc., discussed in Chapter 6.) At

the time of the writing of this text, Viacom had appealed the lower court’s decision.

H. Contributory Infringement and Vicarious Infringement

Courts have held persons and companies liable for the infringing acts of others. If

a person, with knowledge of an infringing activity, induces, causes, or contributes to

infringing conduct, he or she will be liable for infringement as a contributory infringer.

Contributory infringement occurs when photo shops reproduce or duplicate photographs

bearing a copyright notice when copy shops reproduce or allow customers to photocopy

books and other protected materials, when operators of flea markets or swap meets allow

pirated works to be sold, or when an individual sells specially formatted blank cassettes

and tape duplicating equipment to pirates with knowledge they are engaging in acts of

infringement. Generally, contributory infringement requires either personal conduct that

furthers the infringement or the contribution of goods or machinery that provides the

means of infringement. If the equipment supplied is capable of significant non-infringing

uses, no contributory infringement will be found unless there is clear intent to bring about

infringement.

The Court held that time-shifting did not constitute infringement and that the sale

of copying equipment, like the sale of other staple articles of commerce, does not

constitute contributory infringement if the product is widely used for legitimate and

unobjectionable purposes or if it is capable of substantial non-infringing uses. Sony was

held not liable for contributory infringement. By contrast, in Elektra Records Co. v. Gem

Electric Distributors, Inc., 360 F. Supp. 821 (E.D.N.Y. 1973), the defendant stores sold

blank tapes and for a fee loaned customers prerecorded tapes containing copyrighted

songs. Customers would then duplicate the entire tapes on the defendants’ Make-A-Tape

systems at the stores. The defendants were held liable for contributory infringement

because they supplied all means necessary to infringe. Moreover, the defendants had a

financial interest in the infringement.

Cases involving Internet service providers frequently approach the issue of

Goldwyn-Meyer Studios Inc. v. Grokster Ltd., 545 U.S. 913 (2005) held that one who

distributes a device with the object of promoting its use to infringe copyright as shown by

a clear expression or other affirmative steps to foster infringement is liable for the

infringing acts of third parties. In Grokster, the defendants, who made and distributed

computer software that enabled peer-to-peer file sharing over the Internet, were liable

because their users used the software primarily to infringe copyrighted music and movies

on a massive scale.

Vicarious infringement typically occurs when one party is responsible for

infringement conducted by another when the two parties share a special relationship, such

as that of employer-employee. One who is in a position to control the use of copyrighted

works by others and has a financial interest in the exploitation of the copyrighted works

will be liable for vicarious infringement, even if he or she had no knowledge the

infringement was occurring. For example, universities may be held liable for the

infringing activities of teachers who photocopy copyrighted materials for distribution to

students. The universities are in a position to control and direct the activities of teachers

and should implement policies refusing photocopying unless the teachers obtain

swap meet was held vicariously liable for the sale of counterfeit recordings by a vendor

who rented space from the operator on the basis that the operator had the right and ability

to supervise the direct infringer and derived a financial benefit from the infringer’s

activities.

I. Defenses to Infringement

Section 107 of the Copyright Act provides that the fair use of a copyrighted work

for purposes such as criticism, comment, news reporting, teaching, scholarship, or

research is not an infringement. Fair use is thus a privilege to use copyrighted material

without permission of the copyright owner. The rationale for allowing certain uses of

copyrighted material is to benefit the public and promote the arts and sciences. The fair

use defense is the most important defense to an allegation of copyright infringement. The

first factor considered by courts focuses on the purpose for which reproduction,

adaptation, distribution, performance, or display of a copyrighted work is undertaken and

the use that is made of it. Generally, use for comment, criticism, and so forth is

acceptable because it benefits the public and advances the public good; however, if a for-

profit motive underlies any of these purposes, a different conclusion may be reached.

Although commercial use will not automatically defeat a defense of fair use, use of

another’s work for a commercial purpose is less likely to be permitted than use for a

noncommercial purpose. Thus, commercial use tends to weigh against a finding of fair

use. Courts also examine whether the defendant’s use adds something new with a new

purpose or different character. The addition of new material or productive use benefits

the public. The more transformative a work is, the less significant are other factors (such

as commercial use). Failure to transform a work in any way weighs against a finding of

fair use. Finally, a use that is merely incidental is more likely to be determined to be a fair

use.

Courts consider the degree of creativity in the copyrighted work in determining

whether a use is fair. Generally, the more creative the work, the more protection it is

afforded against allegedly infringing works. Conversely, the more informational or

factual the work, the less protection it receives. Thus, the fact that a second work is

factual or informational in nature tends to support a finding of fair use. Once again, the

use and dissemination of factual and informational material tends to advance research and

scholarship and is thus encouraged. Whether the work is published or unpublished is

important. Unauthorized use of an owner’s work prior to publication severely affects the

owner’s right to determine the timing of entry into the market and be the first “on the

scene.” Thus, works that are unpublished generally receive more protection than those

that have been published. Nevertheless, 17 U.S.C. § 107 specifically provides that the

fact that a work is unpublished shall not itself bar a finding of fair use.

In determining whether the use of another’s copyrighted work is fair, courts

consider the quantitative as well as the qualitative portion of the work that is reproduced.

Generally, it is not a fair use to reproduce an entire work. When less than all of a work is

reproduced, whether the use is fair depends on the importance of the portion used,

namely, whether the reproduced portion is the essence or “heart” of the copyright

owner’s work. Even when the amount taken is quantitatively small, the use may still be

impermissible if what is taken is the central or pivotal portion of the work.

Pursuant to Section 108 of the Copyright Act, libraries can reproduce a work for

distribution and for preservation purposes. Similarly, libraries are protected from liability

for infringement for unpermitted photocopying by their patrons as long as a notice is

displayed on the photocopy equipment that the making of copies may be subject to

agreement regarding permissible educational uses of copyrighted material. The result was

the “Agreement on Guidelines for Classroom Copying in Not-for-Profit Educational

Institutions with Respect to Books and Periodicals.” These guidelines were made part of

the legislative history of the 1976 act.

Module 5_Week 5_ Copyright Registration, Searching, Notice, and Infringement_Intellectual Property Law

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