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Question 1 (5%)In 1976, Peter John composed “Don’t Go Breaking My Heart” and released his recording of it, complying with all necessary formalities. On March 5, 1982, Sony Films licensed the musical work for use in a film, Best Friends. Cher performed the song over a montage of two characters charmingly falling in love. In 2012, John sent Sony Films a termination notice for “Don’t Go Breaking My Heart,” specifying January 1, 2018 as the effective date of termination. Will the termination notice be effective?What, if anything, may Sony continue to do with the work, and for how long?(1) This is a post-1978 transfer of a pre-1978 work; § 203 applies. (There is a wrinkle that might bring the pre-1978 rules in: Since the song is a pre-1978 work, it does have an initial term and a renewal term. If John only granted Sony rights in the first term and didn’t specify that he was licensing the renewal term, then the license would have ended when the first term did, in 2004. [It is vanishingly unlikely that Sony would have taken such a license.] I gave credit for that answer, but you didn’t need that to get full credit. Also, § 304 can’t apply: it only covers pre-1978 transfers of the renewal term. Any post-1978 transfer, even of a pre-1978 work, is covered by § 203.)(1) March 5, 1982 + 35 years = March 5, 2017 is when the 5-year window opens. Notice may be given up to 10 years before the termination (and no less than 2). January 1, 2018 is within the window, and the notice is given within the notice window. So the termination notice will be effective for whatever can be terminated.(3) Sony can continue to use the work as is until Jan. 1, 2018. After that, it can only continue to use the work (without renegotiating with John) if the film is “[a] derivative work prepared under authority of the grant before its termination” and if it complies with the terms of the original grant. One could argue that the film is not a derivative work of the musical work in that the musical work hasn’t been transformed, adapted, etc.; rather, the musical work is reproduced in the film. But you can bet the movie studios will disagree: their best argument is that the sound recording incorporated into the film is a derivative work of the musical work, and that the film inherits this status for purposes of §203. See 17 U.S.C. §101 (“A ‘derivative work’ is a work based upon one or more preexisting works, such as a … sound recording ….”). Credit was given for recognizing the issue and taking a stab at the answer (deeper stab, more credit). Compulsory licensing under §115 isn’t available since that’s just for phonograms, not other copies (such as audiovisual works), though if Sony has released the soundtrack it can continue to exploit the soundtrack under §115.Question 2 (5%)Emily Bennett, who died in 1909, wrote a book of 100 spells, which was kept in the family. The spells were more than lists of ingredients; they included narratives explaining how Emily came up with the spells, how she used them, and other commentary. In 1950, the local newspaper, the Mystic Falls Gazette, published one of the spells, including Emily’s commentary, with permission from the heirs and with proper notice in the newspaper’s name. The Mystic Falls Gazette timely filed for renewal. In 1970, Emily Bennett’s descendant Sheila Bennett self-published a selection of her 10 favorite spells from the book (including all of Emily’s commentary). This book, Spells from My Grandmother, was distributed only to family members. It did not bear any notice. Sheila Bennett died in 2009. In 1990, Sheila’s daughter, Abby Bennett Wilson, followed in her mother’s footsteps and self-published Spells from My Great-Grandmother, which was distributed to family members and also sold in the local Mystic Falls bookstore (which sold 50 copies). Spells from My Great-Grandmother contained 10 different spells from Emily Bennett’s original spellbook, with her commentary, and bore no copyright notice. Abby Wilson died in 2010. In 2010, Abby Wilson’s daughter, Bonnie Bennett, put online a PDF of Spells of the Bennett Family, her own selection of her 10 favorite spells, including Emily Bennett’s commentary. Spells of the Bennett Family included 2 spells that had been in Spells from My Grandmother and 2 that had been Spells from My Great-Grandmother. Bonnie Bennett is still alive (for now).When did or will the copyright in Emily Bennett’s spells expire? (Assume that each of the spells, with commentary, meet the originality standard.)(1) The copyright in the spell published in the MFG in 1950 will last until 12/31/2045: publication + 95, running to the end of the year. (Some people suggested that the paper didn’t have the right to renew the copyright in the spell; only the heirs did. The paper could certainly renew its compilation copyright, which would cover the spell at least as part of the compilation. The rules governing pre-1978 works, which we didn’t go into in full brain-melting detail, mean that the paper should also be able to renew the copyright in the individual contribution, both because the work was a posthumous one (in which the heirs, not the author, transferred rights) and because it was part of a composite work. However, I gave credit for the “needed the heirs to renew” answer – just be aware that it’s not true.)(1) The 10 spells in SB’s 1970 book probably weren’t generally published—distribution only to family members seems like a limited publication. Thus, they were still governed by the rules for unpublished works: life + 70, or until 12/31/2002 if that was longer, which it was. The copyright in all such unpublished works, including the other never-published spells and the ones published after 2003, expired at the end of 2002. (If you flag the publication issue and consider it a general publication, you’re probably wrong, but I’d give you credit for offering a reason for why it would be a general publication and thus in the public domain for lack of notice; likewise below.)(1) The 10 spells in ABW’s 1990 book, however, were published before 2003, and thus get the benefit of §303; the copyright lasts until 12/31/2047.When did or will the copyright in Sheila Bennett’s Spells from My Grandmother expire?(1) The compilation copyright, as distinct from the copyright in the spells, would last for life + 70 (again, this was a limited publication, so lack of notice shouldn’t matter; it’s an unpublished pre-1978 work for duration purposes). The copyright would last until 2079.When did or will the copyright in Abby Wilson’s Spells from My Great-Grandmother expire?(.5) AW published in 1990, when notice was no longer required. Life + 70 = 2080.When did or will the copyright in Bonnie Bennett’s Spells of the Bennett Family expire?(.5) 70 years after she dies (running to the end of the year).Question 3 (25%)Your managing partner passes on this email to you and asks you to draft a memo in response:Client: I run CollegeFiles, a cloud storage service. Cloud storage means that users upload their files to private “lockers.” We offer a limited free service with 2 gigabytes of storage, and 100 gigabytes or more of storage to paying customers. Users can download their files from any internet-enabled device, and they can share links to specific files, for example if they’re working on a class project together and want to share relevant articles they’ve found or drafts of a joint project they’re all writing. If an account holder shares a link with another account holder, we automatically add that file to the second account holder’s files (as long as there’s still space in the second person’s account). Our marketing has been targeted towards college students, with the slogan, “Your music. Your files. Anywhere you want.” Our internal measures show that almost all files are only accessed from 2-3 locations, which we think represents individuals using a laptop, a mobile phone, and maybe a desktop or tablet. However, it’s not at all uncommon for files—especially music and video files--to be accessed from 10-25 locations, and sometimes those files will then be added to someone else’s account. Users can also create “public” links; anyone who has the link will be able to get the particular file associated with that link. That’s useful when one of our users wants to send a file to someone who doesn’t have an account without the hassle of big email attachments. We discourage public posting of links, and we also will cut off the ability for non-account holders to access a particular file if it’s seeing really heavy traffic—we don’t want people to use the service as a free distribution platform for their indie film or a place to share pirated copies of The Dark Knight; we want them to buy accounts! If they buy accounts, they can use their space any way they want.In order to save space, we employ “deduplication,” which is just what it sounds like: if two account holders have the same file, we store one master copy of that file, and each account will have a pointer to that file. Because of the way encoding works, if two different people each rip mp3s from the same CD, their mp3s won’t be identical and won’t be deduplicated. But if they each got their copies from the same source, whether it’s a ripped CD or a Bittorrent download, we will deduplicate that even if user 1 didn’t share her copy with user 2. And we deduplicate files like iTunes and Amazon music and video downloads. Using our app, users can stream any music files stored in their accounts to their mobile devices. (They can also download them, but some of our users don’t want to fill up their phone storage with music.)I’m getting calls and emails from the MPAA, something called the CCC, something else called ASCAP, music publishers, and record labels. They all say I need to pay them money to keep operating, and the MPAA wants me to subscribe to some sort of filtering service that costs $250,000 a year for a license and blocks files identified by the MPAA and other copyright owners who participate in it, which is sure to anger my users. I don’t want to do that unless I absolutely have to.More generally, I may be able to scrounge up some cash, but these guys are talking about millions of dollars in total! I’d go out of business if I paid them all. I did file a notice with the Copyright Office designating a DMCA agent, but we’ve never received any takedown notices. Can you explain what copyright-related legal claims these guys might make, what the risks to my business are, and whether there are things I should be doing to reduce my risks? Key issues: The rights at issue are relevant insofar as they may bring in ASCAP/BMI etc. and the digital public performance right, since the music-related companies are the only ones who split the rights up; for everyone else, it really doesn’t matter whether what’s happening is reproduction or public performance, since they own all the exclusive rights. (Some people discussed distribution; there doesn’t seem to be any transfer of copies going on, so the distribution right is arguably not implicated, but there’s no need to invoke it given all the reproduction.)There’s clearly lots of reproduction going on, and likely public performance through streaming, though there’s a strong argument that CF isn’t engaged in public performance because it doesn’t trigger any of the performances even if individual users do so; given the statutory exemptions for nonprofit public performances, the users aren’t going to be liable for those public performances (at least unless they’re streaming dramatic musical works) and therefore CF can’t be liable for enabling them. Some people suggested that deduplication turned otherwise private performances made from unique copies into public performances, as in Cartoon Network, which is a good reason to suggest the inefficient solution of ending deduplication.Direct liability: unlikely under Netcom unless the master copy counts as separate volitional conduct. Another reason to give up on deduplication.Secondary liability. You should be able to distinguish between contributory liability (knowledge + substantial contribution/inducement) and vicarious liability (financial benefit + right and ability to control). Vicarious liability is quite easy to satisfy online. CF seems to benefit by using the ability to share without limit as a “draw” to paid accounts; even though that benefit accrues whether users share authorized (their own indie films) or unauthorized (Batman) files, a court is still likely to count that as direct financial benefit, stretching the meaning of “direct.” And because CF is operating the service, it has the right and ability to control, unlike a credit card processor that can’t just push a button and delete infringing files on someone else’s servers.Contributory liability: General knowledge that infringement is occuring might or might not be enough to constitute knowledge for traditional secondary liability, but you needed to discuss the level of knowledge and not just assume that generalized knowledge was sufficient. In particular, the fact that files are big does not mean that CF should know they’re infringing; there are plenty of legitimate reasons that authorized copies might be (1) big and (2) popular, like many authorized videos on YouTube are. Substantial contribution is easy to satisfy since CF controls the files. CF’s slogan, however, should not be problematic from an inducement perspective: many of you seemed to think that “your music” encouraged infringement, but “your” does not mean “get unlawful copies of.” There are plenty of lawfully acquired sources of digital music, and it’s hard to see why backing them up would be a problem—even if the terms of service for iTunes etc. didn’t allow you to make multiple personal copies, there’s a decent argument that personal backups are fair use.Thus, CF’s key hope is DMCA coverage. Things to discuss include the other parts of §512 protection, such as a policy to terminate repeat infringers. The fact that copyright owners aren’t sending notices doesn’t itself render CF’s policy ineffective, but CF will most reduce its risk by getting its DMCA house in order. Is anything said here sufficient to constitute “red flag” knowledge? Probably not, if red flags require knowledge of specific infringements; there’s general knowledge of what looks like infringement, but nothing specific. Courts have been clear that, for §512 purposes, general knowledge is insufficient, or the whole notice & takedown scheme would lose its structure. Is anything here sufficient to constitute direct financial benefit + control for purposes of §512? Direct financial benefit is so easy to satisfy that a plaintiff could at least allege a “draw” from particular files, especially if people are invited to learn about the service from exposure to a shared infringing file. Control is trickier; here, the fact that CollegeFiles cuts off access to specific files if they’re too heavily used suggests more control than average for an online service, but it’s only after the fact. Is that enough? Previous DMCA cases suggest that after-the-fact control is insufficient, since it’s always present and counting it would render the 512(c) a nullity.The DMCA specifically says that OSPs aren’t required to filter in order to be entitled to the safe harbor, so CollegeFiles doesn’t have to subscribe to the MPAA’s filtering service in order to be safe from monetary liability under the DMCA. Moreover, the filtering service wouldn’t help against all the other people knocking on the door; although one could argue that the anger of customers is worth the price of peace, it’s a dubious bet at best, especially since a customer’s file may be perfectly lawful as long as she’s only using it herself and become unlawful when she shares the link widely. A better strategy might be to consider design features that make it harder to share with multiple people, though there are plenty of legitimate uses for sharing (e.g., class projects) that might justify keeping the present system. Deduplication. Is deduplication covered by the DMCA? Arguably not, since it’s not a natural consequence of storage; on the other hand, the Viacom court recognized that things like transcoding files from one format to another in order to make playback easier was within the scope of the DMCA’s user-directed storage provision. Deduplication arguably serves similar purposes—though transcoding makes playback easier and thus helps users while deduplication saves space and thus helps CollegeFiles. Deduplication has both infringing and noninfringing uses (it is reasonable for CF to assume that Amazon and iTunes downloads are generally lawful; in general, there are many ways that multiple people could lawfully acquire the same copy of a file).Question 4 (20%)Skechers is a shoe company. Beginning in 2005, Skechers hired Richard Rahl, a photographer, to conduct several photo shoots in connection with Skechers's marketing efforts. Prior to each photo shoot, Skechers explained to Rahl the type of images Skechers hoped to capture. These explanations included storyboards and photographic examples, as well as drawings depicting particular poses for Skechers' selected models. During the shoots, Rahl posed models, arranged lighting and props, and otherwise directed the photography sessions. Rahl delivered raw photographs to Skechers at the conclusion of each photo shoot. Rahl stated that his goal was to do a “great job,” defined as “capturing great moments” that “Skechers could use in its advertising and marketing materials.” Upon receiving the photographs from Rahl, Skechers employees proceeded to modify the images for use in Skechers advertisements. The alterations varied with each image, and ranged from slight modifications in models' skin tone to the substitution of models' body parts and the addition of substantial graphic effects. These enhanced images were then used in Skechers ads. No raw, unaltered photograph was ever incorporated into a finished advertisement. Skechers paid Rahl $20,000 per day of photography, with an additional payment of $2000 for each photo that made it into the final ads.Skechers routinely sent Rahl copies of the final ads. Rahl never asked for changes to be made in an ad. When Rahl received samples of the finished ads, he stated, “These came out great! Love the art direction in the graphics!!”The parties never executed a written agreement. The relationship soured when Skechers sent a cease and desist letter telling Rahl not to use images of the final ads—with the Skechers trademark on them—on his personal webpage. Rahl (after securing registrations for his photos) sued for infringement based on Skechers’ continued use of the ads.The photos and ads on the following pages are representative of the photos and ads more generally.Skechers argues that it is a joint author of the photos. Evaluate this argument.Regardless of your answer to the first question, assume that the court decides that Skechers is not a joint author of the photos. Who is the author(s) of the ads, and what is the correct legal characterization of the ads in relation to the photos?General note: People who had trouble with this question tended to have trouble keeping the copyright in the photos separate from the copyright in the ads. It was possible to argue that the photos were always supposed to be part of the ads and therefore shouldn’t be entitled to a separate copyright, but that’s difficult; we usually recognize copyright in parts intended to be merged into a greater whole (think of a book written with a movie deal—a plan to create a derivative work--already in hand).(a) This is not a work for hire case. On these facts, there’s no chance that Rahl was an employee as opposed to an independent contractor, and there was no written WFH agreement. If WFH is relevant at all, it suggests that Rahl is the sole author: the point of a WFH agreement is to change the default rule that an independent contractor owns the copyright in works he creates on behalf of a client, even if he then grants the client a license. By negative implication, without a WFH agreement, Rahl is an author and probably the sole author, unless Skechers totally controlled the creative process. Joint authorship: First, did Skechers contribute copyrightable creativity, not just ideas? Without that, the cases won’t recognize joint authorship at all, despite what some commentators advocate. You’d be reasonable to say that it’s hard to tell without actually seeing the storyboards and drawings (which themselves would be copyrightable—but did any copyrightable elements end up in the final photos?).Skechers is arguing that there was an intent (by the “master mind,” whoever that was) to create the works together. Since a corporation can be an author, it’s at least thinkable that there could be joint authorship between a corporation and a human (indeed, that’s what the Malcolm X case contemplated, and though the plaintiff there lost the court gave no indication that this type of joint authorship was impossible, though one could argue that its awkwardness counsels against joint authorship treatment). So a key issue is: who was the master mind whose intent to share or not share authorship counts? Rahl fulfilled many of the core functions we think of as “authorial”: he was the one directing the sessions. On the other hand, he was translating Skechers’ storyboards into pictures, arguably following directions similar to the underwater photographers in the Titanic case. His goal was always to serve Skechers’ interests—which maybe counts as intent to be a joint author, though it’s also not really a statement of intent about authorship as such. Did Skechers intend to be a joint author? That’s a weird question to ask, as noted above, but again one could reasonably go either way. Skechers certainly intended to control the artistic content of the photos, but it largely left Rahl—not an employee—to create the actual photos themselves. Reasonable arguments could be made both ways.(b) N.B. If Skechers is the sole author of the photos (unlikely), the analysis is easier, though for various reasons we still want to know whether the ads are distinct from the photos. If Rahl is the author of the photos, Rahl has clearly given them to Skechers in order to create … something. Most likely the ads constitute derivative works of the photos rather than mere reproductions; they do seem to involve transformation/adaptation in the ordinary sense. If they are derivative works, then they are independently copyrightable and they have an author or authors. If they aren’t, there’s no authorship in the ads as such; they’re just reproductions with no authorship distinct from that in the photos. Some people discussed compilations/collective works; since the art elements weren’t preexisting, and since it was hard to see multiple elements in the ads rather than just one or two added to the photos, this would be a hard argument to sustain, but it could be worth trying and again would result in a new work with separate authorship. Some people argued that at least some of the ads lacked sufficient creativity to sustain derivative work status, and thus there was no authorship in the ads as such; I accepted that argument.Is Rahl a joint author of the derivative work based on his photos? Almost certainly not—he just handed his photos over to Skechers, expecting them to be incorporated into ads. His comments on the ads don’t suggest any kind of control. While he’s an author of the photos, he’s not an author of the derivative work. Instead, Skechers is the author (because its employees created the ads, clearly within the scope of their employment). However, if the parties always expected the photos to turn into ads, one could argue that the expectation counts as intent to jointly author the resulting ads, with Rahl providing the photographic creativity and Skechers providing the rest.We’re not done characterizing the legal relationship of the photos to the ads yet, though: The ads are (or at least were) authorized derivative works created under an implied license. Rahl deliberately created the photos and handed them over to Skechers, for payment, with the clear intent that they be used in ads. (Depending on the reasoning adopted by the circuit in which the case is heard, Rahl may be successful in terminating his grant or not.)Here is a sample answer, making the best possible use of the work-for-hire alternative (though one could argue that the mere existence of WFH as a possibility should not be counted against Skechers if there really was sufficient intent):Skechers is not a joint author. The definition of 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." §101. Rahl's contribution is obvious: he set up and took the photo. See Burrow-Giles. Skechers argues that its contribution is the ideas, storyboards, and sketches of poses. First, we look to intent of the authors, though we do not have much evidence of their intent at the time (which is the relevant time to look at -- obviously both sides will state different intentions now). Rahl stated that he wanted to "capture great moments" and give the company material it could use in its ads. This does not show an intent to create a joint work; rather it shows intent to create an individual work that will be used by Skechers. Skechers did not show an intent either. It is notable that Skechers did not get a work for hire agreement (which needs to be in writing) to become the author. See §101. This evidences an intent to license photos from Rahl. The payment schedule is also instructive: the per day fee might be evidence that Rahl was like the cameraman in Lindsey, acting at the direction of Skechers who is an author. However Rahl had much more control than just pressing a button, and Skechers was not there to set up the scenes. The per photo fee shows an intent to license specific photos. Second, Erickson instructs us to consider the Goldstein copyrightability test: each author's contribution must be copyrightable. Skechers' contributions were mere ideas that were not fixed in any expression in the photos. Again, the Lindsey argument that they acted through the conduit of the cameraman is unavailing because Rahl exercised creative control over the camera. Thus, I do not think that Skechers' contributions are copyrightable standing alone, so they fail the Goldstein test. Note: they would pass the Nimmer test because the joint effort is copyrightable, but Erickson was right to note that this test is wrong because it gives authors an incentive not to take suggestions.This case is more like Aalmuhammed and Thomson v. Larson in that Skechers made some creative contributions but there was no intent to make them joint authors. Skechers argues that this is different than those cases because Skechers was the primary actor or the one that initiated the project as opposed to an advisor that was added on. However I am not impressed by this economic/functional argument because if Skechers really intended to have authorship of the photos, they would have gotten a work for hire contract rather than waiting to make a contrived joint authorship argument. 4(b) The ads are derivative works of the photos because they recast or transform the preexisting photo in an original manner. §101. The originality required for a derivative work is greater than the tiny creative spark Feist requires for other works, but it still not a tremendously high bar. See Batlin (requiring substantial variation). In Batlin, the derivative work was not original because it made trivial changes that were based on functionality, such as type of material. However here the changes were based on artistic considerations, such as what shoes look good in the background, what colors and graphics complement the photo, and how high the boy's arms should be in the jumping photo. This is sufficient originality even for Batlin's higher standard. Concerns of giving a de facto monopoly on the type of derivative work and strike suits from the Durham test (see ERG) and Gracen do not apply here because this is not a very close derivative work. There are ways that other derivative works can use the photos without infringing on Skechers' ads.The fact that they are ads is not a barrier to copyrightability under Bleistein and Holmes' non-discrimination principle. Skechers is the author of the ads because they created the derivative work. The ads were made by employees within the scope of their employment (see §101), so under the work for hire doctrine, the author is Skechers.Of course, the copyright in the derivative work is invalid if use of the original is unauthorized. See Pickett. There is no written contract, but there is an implied license. Skechers requested the creation of the work (based on the facts given), Rahl created the photos and delivered them (based on the facts given), and Rahl intended that Skechers use and distribute the photos (based on his acceptance of payment and his approval when he saw the ads). Thus, Rahl gave an implied license.Exclusive licenses must be in writing, so this must be a non-exclusive license. Courts are inconsistent on how long implied licenses last. Assuming it is in effect now, that means that Rahl still has ownership of the photos and can license them to other people, but Skechers has the right to continue to use the photos in their derivative works (the ads). §103(b) says that the copyright in the derivative work (the ads) only extends to the material contributed by the author (Skechers) and not the preexisting material. Thus, Skechers' copyright in the ads does not give it the right to use the underlying photo for other things (though the implied license might give them this right).A competing answer:A. Under 17 USC sec. 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 first question that has to be answered in determining whether Skechers could be a joint author of the work is whether its contribution to the work was itself copyrightable. According to Erickson, "it is not enough simply that one contribute something to a work that is copyrightable - one's contribution standing alone must be copyrightable." Erickson further states that to qualify as a co-author, "one must supply more than mere direction or ideas." Arguably, that's all Skechers has done here - it merely "explained ... the type of images" it wanted Rahl to capture." In addition, it was Rahl who did the work that, under Sarony, was considered indicative of authorship - posing models and arranging lighting and props, and generally directing the photography sessions. The key case, here, however, appears to be Lindsay. In Lindsay, the plaintiff did not actually take the photos. Instead, he created story boards, provided drawings, and engaged in other general "directorial" work. The court held that he was the author because he had "exercised such a high degree of control" that the "final product duplicate[d] his conceptions and visions" of what the final product should look like, notwithstanding the fact that he didn't actually do the filming. Here, Skechers did many of the same things - including storyboarding, providing photographic examples of what they wanted, and drawing poses for models whom Skechers had selected. All of this suggests that Skechers exercised a high degree of control over the final product. In broader terms, they acted at least partially as the "inventive or master mind" of the final product. Sarony. Thus, I would argue that Skechers contribution was sufficient to establish that they contributed something to the final product that was copyrightable.However, each individual who contributes something copyrightable to a joint work is not necessarily a co-author. Lee. Rather, it is necessary that a person claiming to be an author of a joint work prove that both parties intended each other to be joint authors. Lee. The evidence that Rahl intended Skechers to be a joint author of the photos is thin. His statement that it was his job to "capture[] great moments" that Skechers could then use suggests that he considered himself the author of the work. However, in Thomson, the 2nd Circuit, in deciding whether a dramaturg could be a joint author, considered significant whether she had (1) decision making authority; (2) had sought to be billed as a co-author; and (3) whether the other party had entered into contracts as the sole author. Here, it seems that Skechers did have decision making authority over the final product. However, there's no evidence that it sought to be billed as a co-author, and there's no evidence either way regarding whether either party had entered into a contract as the sole author. Judging from Lee and Thomson, however, and the importance they placed on an "author" having significant control over the final product, I think that Skechers should probably qualify as a joint author.(My personal opinion is that the first answer is more persuasive, but that may just be reflexive bias towards the individual photographer; I do think courts often show such bias.)Question 5 (20%)Jones Soda puts short sayings, collected from various sources, on the inside of its bottle caps. Jones Soda is sold in six-packs (though individual bottles are also sold at fast-food outlets and convenience stores). Each flavor has its own set of bottlecaps, so that each six-pack comes with the same six bottlecaps as every other six-pack of that flavor.These are the sayings on the Grape Soda bottlecaps:A distant romance will begin to look more promising.Fear creates danger and courage dispels it.Your job needs more concentration. Success will be achieved.Get excited over nothing.Listen.Forget your watch.Jones Soda has obtained registration for the six sayings above as a literary work.A competitor, Bones Soda, copies the same sayings on the label of its grape soda. Jones Soda sues for copyright infringement. Evaluate the parties’ claims and defenses and explain who should win. Do not consider fair use.This question centered on questions of fixation and protectability. First, should a “work” on six different bottlecaps be recognized as fixed in a tangible medium of expression? (In the alternative, should we consider each bottlecap its own fixation of one of the six sayings? The answer here is clearly yes, but considering each cap separately leads to substantial—I think insurmountable—difficulties with respect to protectability, as discussed immediately below.)Second, is the work sufficiently creative to be protected? The facts say that the “short sayings” come from various sources, indicating that they’re not original to Jones Soda. In addition, the general rule is that words and short phrases aren’t protectable. That means that the protection, if any, must come from the selection, coordination and arrangement of the sayings.Given the potentially infinite number of short sayings conveying fortune-cookie-type slogans, the selection alone is likely to be sufficient to constitute copyrightable creativity. This is a good thing for Jones Soda, since it’s hard to say that there’s much in the way of “coordination” or “arrangement” here. Thus, if there is sufficient fixation such that a group of six bottlecaps constitutes a “work,” then Jones Soda should win, since on the facts there was complete reproduction of the “work.” If there is not sufficient fixation, JS should lose. I can see decent arguments either way.Here’s one good answer:Nature of Jones's Copyright. Jones registration of its bottle caps serves as prima facie evidence of its ownership of a valid copyright (§ 410). But we still must define the nature of that copyright. Because Jones draws the sayings from other sources, it has no copyright claim to the text that appears inside its bottle caps (indeed, those sayings might even be "short phrases" like "slogans" under 37 CFR § 202.1(a)). Nonetheless, it may have a valid claim to the compilation of a particular set of six sayings included in each six-pack (note that it has included six elements in its arrangement, more than the Copyright Office-required minimum of four). Indeed, under Feist, § 103(a), and § 101's definition of a "compilation," Jones may seek protection for its original selection, coordination, and arrangement of preexisting materials, which selection, coordination, and arrangement constitutes an original work of authorship. Here, Jones has selected six preexisting sayings (out of the whole world of such aphorisms) and arranged them together in a six-pack of soda. Jones probably meant to convey some message of courage, confidence, and calm with its selection, given the somewhat consistent theme; at least nothing in the selection appears to have been completely random and attributable to constraints or forces external to Jones. Compare Feist. It's not the most earth shattering expression, but this selection is likely sufficient to establish originality under Feist. But the copyright that arises in this selection extends only to this selection. Jones can have no copyright in the preexisting, underlying sayings (facts, in Feist's language) themselves, as mentioned above, nor, it must be noted, in the idea of including the sayings on a bottle of soda. I take up these issues in the next section, since they deal more with the question of what elements (protected or not protected) Bones infringed. § 102(b), Baker.Perhaps one of the first defenses that Bones might try is a fixation argument under § 102(a)'s requirement that the original work of authorship be fixed in a tangible medium of expression: the sayings might be fixed on the bottle caps, but the selection of those sayings (the copyrightable work) isn't fixed. Jones occasionally sells individual bottles outside of six-packs, and a user doesn't keep a given soda bottle in the pack when she drinks it; she separates it. Indeed, many consumers may separate the bottles promptly upon buying them. This argument likely fails, however. § 101 requires only that a work's embodiment be sufficiently permanent to permit it to be perceived or communicated for a period "of more than transitory duration." Here, the collection of sayings is placed in a medium (a bound-together six-pack of soda) and remains in that medium for at least several weeks, and probably longer. In Cartoon Network and MAI Systems, the loading of electronic information into various computer storage devices was considered a sufficient embodiment for these purposes. Cartoon Network found the fixations to be transitory when they lasted for 1.2 seconds, whereas MAI found the fixation sufficiently durable when it lasted until a user turned off the computer. Physically binding bottles together for a period of some days at the absolute minimum would seem to meet both of these requirements as defined in the cases. Bones might also try to raise an originality argument. It could argue, for example, that since six-packs are an industry standard, Jones's selection of six sayings (as opposed to 20 or 30 or 2) was dictated by common industry practice, such that it shouldn't be credited as original. BAPCO; Matthew Bender. True as that argument may be, it fails to speak to the fact that Jones could have selected any six sayings at all from a universe of thousands. That it selected these six is original, even if Jones was constrained by industry practice to pick only six. The fact that Bones picked six sayings for its label might not alone be infringement given this constraint on Jones's copyright and the fact that including sayings on a bottle of soda is an idea, not protected by copyright, and not a form of expression. See § 102(b), Baker (recognizing that copyright protection extends only to expressions, not to ideas). But Bones cannot rely on these arguments to explain why it isn't liable for selecting the particular set of six that Jones already had selected. To put this another way, Jones cannot assert its copyright as protection against Bones using sayings on bottles of soda (even any one of the same sayings that Jones's used on its bottle caps), but Jones can assert its copyright to prevent Bones from copying the exact same selection of sayings that Jones used.On the other side:Jones: Jones will claim that it has a protectable compilation in the sayings as a whole. §101 defines a compilation as a "work formed by the collection and assembling of preexisting materials that are selected, arrange, or coordinated in such a way that the resulting work as a whole constitutes an original work or authorship." The sayings by themselves are almost certainly not protectable since they are too short and/or scenes a faire. Regardless, Jones isn't the author of the sayings, which were collected from various sources. Thus, Jones must argue that its creative contribution lies in how it selected, arranged, or coordinated the sayings to produce the work as a whole (Feist). Looking at the sayings next to each other, it is hard to tell what they have in common other than being structured as imperatives/predictions to the reader. While the combination certainly appears to be original and not predictable, Jones probably needs to demonstrate exactly why it selected these particular quotes and put them together in this particular arrangement with grape soda. Cases such as MacLean Hunter and Kapes that have found sufficiently original selection/arrangement principles have done so because those principles were identifiable in some way. While Alfred Bell may stand for the proposition that expressing anything in a way not done before and not copied is sufficiently creative, Feist appears to require more. In the compilation context, MacLean Hunter and Kapes require a showing that the author used its judgment in coming up with the original selection/arrangement principle. Here, Jones certainly used its judgment in some fashion in putting the sayings together, it's just not obvious how. It may argue that its selection criteria was 1) brevity enough to fit on a bottle cap and 2) communicating mysterious predictions and/or commands.Alternatively, even if its selection was random (arbitrary), Jones can argue it still used its judgment and there is no way that Bones would have come up with the same 6 sayings put together on its own. No matter what the idea underlying their selection was, it was most certainly infused with Jones' tastes and opinions (Kregos). Bones: Bones may argue that, even if the sayings collection would otherwise qualify as a compilation, combining only six preexisting elements comes perilously close to the Copyright Office's requirement that there be at least four. However, it should not rest its case on this since the number of sayings is indeed above the minimum. A better argument for Bones is that six sayings on six individual bottle caps in a six pack is not a compilation at all. §101 requires that the elements of a compilation be "selected, arranged, or coordinated in such a way that the resulting work as a whole constitutes an original work or authorship." (emphasis added). §102(a) requires that a work be "fixed in any tangible medium of expression ... from which they can be perceived, reproduced, or otherwise communicated." Bones can quite plausibly argue that, while the sayings themselves are fixed ("sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration" §101) on each individual bottle cap, there is no plausible point at which all six sayings arranged as a whole are fixed in a way that they would be perceived together as constituting a single work of authorship. To presume such would be to assume that people at some point see or perceive the sayings together. This would be likely if the sayings were on the top of the bottle caps (so someone would pick up the six pack and see all the sayings aligned next to each other), but not when the sayings are on the bottom and hence not accessible until the bottles are opened, which is not likely to all be at the same time, much less lead to someone arranging all the caps next to each other. Even if a purchaser were to arrange all the bottle caps together, this work itself is likely to be ephemeral and not of sufficient duration, since it is as easily (and likely to be) wiped away as a sand drawing.By contrast, if Jones had done as Bones has done and put all the sayings together on one label on one soda, fixation would not be an issue.Question 6 (25%)Farhad Manjoo, sad that his recent negative review of iTunes 11 had received such negative attention from Apple fans, posted an article on Slate (an online, ad-supported news site), “Stop Calling Me a Troll.” Wikipedia defines “troll” in the internet context as “someone who posts inflammatory, extraneous, or off-topic messages in an online community, such as a forum, chat room, or blog, with the primary intent of provoking readers into an emotional response or of otherwise disrupting normal on-topic discussion.”The article was illustrated with the following photo:The caption was “Author photo?”The copyright in the troll doll was restored under §104A. The copyright owner, Dam Things, sues Slate for infringement. Evaluate Slate’s fair use defense.Both Slate and Dam Things have plausible arguments. One good answer:Fair use has four factors (§107), which I will consider in turn and then conclude with the result.(1) purpose and character of the work: Slate is a commercial site because it is supported by ads, however as Harper and Row notes, most news is commercial. The question Harper and Row asks rearding commercial nature is whether the user stands to profit from exploitation without paying the customary price (discussed at the end of the factor).The other inquiry here is whether the use was transformative. Nunez discusses how a photo can be transformed from being used as a modeling agency tool to news. The distinction here is that this is not news: First, it is a commentary on iTunes and perhaps internet review etiquette, but it is not hard news. Second, the troll doll has nothing to do with the commentary. Unlike Nunez, the article is not about the photo or the troll doll in the photo. Thus, it is hard to say there this is a transformative use: the photo of the troll doll is being used to evoke its name, which happens to also have another meaning. While §107 specifically notes that commentary can be fair use, I do not think that applies here. Unlike the parodic song in Campbell v. Acuff-Rose that commented on the copyrighted work, this article comments on something completely different. This, the distinction the court in Campbell makes between parody (commenting on the underlying work) and satire (using the work to comment on something else) seems implicated. Though this is not satire, the same reasoning applies. There is no need to use the troll doll to make the commentary. This factor seems to only slightly favor Dam Things. There is no transformativeness, but I'm also not sure if there is commerciality. While I'm not sure that there is a customary price for such a use, usually there is some price to be paid when using an image of a copyrighted work and there is no transformativeness. 2: nature of the copyrighted work: This factor is about the nature of the troll doll. The fact that this is a picture of a the work rather than the actual work should not matter for this factor, since we are considering the nature of the underlying copyrighted work.Creative works gets more protection, which weighs in favor of Dam Things. See Bill Graham Archives v. Dorling Kindersley. The published/unpublished distinction doesn't help much here since troll dolls are not thought to be published. This might weigh in Slate's favor because they have not deprived Dam Things of the right to decide when and how to release their work to the world. See Harper and Row and Perfect 10 v. Amazon (discussing the importance of giving the author the right to decide when and how to published).An interesting question is whether the fact that this is a restored work should weigh into the fair use analysis. If so, factor 2 is where it would matter. The argument against considering it would be that Congress already provided separate rules for how holders of restored copyrights can be protected and how reliance parties are protected, so it should not weigh into the analysis of a different defense. The argument for considering it is that fair use is an equitable concept and Congress intended to codify the common law, suggesting that the court should be free to consider the totality of the circumstances. If considered, here's how I think it would affect the factor: It is unlikely that Slate is a reliance party because iTunes 11 (and thus the article) just came out, while a quick internet search suggests that the troll doll copyright was restored in 2005. Unless Slate had the photo before Dam Things' country became an eligible country (see §104A(h)(4)(B)), they do not look like a reliance party. Troll dolls may have been widely disseminated before restoration by multiple companies, so perhaps Slate thought that it was in the public domain. However ignorance of a copyright, even if it was the result of restoration, should not do much to help the infringer.This factor weighs in Dam Things favor, though case law shows that it is rarely dispositive. 3: amount and substantiality of the portion used in relation to the copyrighted work: Slate published a photo of basically an entire troll doll and half of two others. A picture of a copyrighted doll is analogous to pictures in Bill Graham, Nunez, and Perfect 10: You must use the whole image. In order to invoke the troll doll, you must use the whole image. This factor doesn't weigh in either direction. 4: effect of use upon the potential market for or value of the copyrighted work: Harper and Row tell us to look at the harm if Slate's work is widespread. Further, Castle Rock tells us to consider traditional, reasonable, or likely to be developed markets, regardless of if the copyright owner is in those markets or intends to enter them. However, I don't think the market for photos of dolls for online news/commentary is likely to be developed.It may be more helpful to look at the effect on the demand of the troll dolls. The commentary is not about troll dolls, so this is not analogous to Campbell or the L Ron Hubbard case where it was acceptable to lower demand for the work by criticism. However it is also not usurping demand (i.e. nobody looks at the Slate article and then does not buy a troll doll as a result). Dam Things' problem is probably that they do not want their work associated with the concept of an internet troll or this particular commentary article (which is written by someone who is "internet uncool"). The Chicago Board of Education case says that even though there is no market for the standardized tests that were released, releasing them still destroyed their value. However Dam Things' argument is more based on moral rights (such as the right to object to things that harm the author's reputation) than the functionality aspects of a standardized test. Factor 4 is a wash. There is no recognizable market harm to weigh in Dam Things favor, though Slate is not exactly engaged in the type of conduct like parody that is commonly recognized as fair use with regard to market harm. Conclusion: This is a close one, but a few factors weigh slightly in Dam Things' favor. Normally factors 1 and 4 carry the most weight, but they are very close here. The fact that the use is slightly commercial and not necessary for any criticism sways me against fair use. If I were the judge, I would say no fair use, but give very low damages (perhaps simply an injunction; perhaps only the lowest amount of statutory damages, which would be $750 per work. I'm not sure if that would be three -- that would depend on if each of the three depicted is a separate work).Others argued that the juxtaposition between the cheerful troll doll and the horrible image of online trolls was transformative, even if a bit hard to articulate in words, just as the contrast between Orbison’s song and 2 Live Crew’s song recontextualized the original. The troll doll fights back against the stereotype of the internet troll and also the juxtaposition reminds us that “trolls” have multiple meanings. In one answer’s words, “there is a substantial difference between posting a picture of an ‘under a bridge’ troll and a cute troll doll and the two images evoke different meanings. Therefore, Slate could not have just substituted a normal troll image.” I think this is the harder sell, but could certainly be tried.The photo was published by Flickr user Cali4beach pursuant to a Creative Commons attribution-only license, known as CC-BY, which allows any reuse as long as attribution is given, and further stipulates, “Notice — For any reuse or distribution, you must make clear to others the license terms of this work. The best way to do this is with a link to this web page.” () The photo had no metadata other than the filename. The Slate article gives Cali4beach credit for the photo, but does not link to her Flickr page (which links to the CC license) or to the CC license. When Slate used the photo, in accordance with Slate’s photo use guidelines, an editor manually changed the filename of the photo from cali4beach-trolls-cc-by.jpg to 121205_TECH_trolls.jpg, so that the filename now reflected the date the Slate article was published, the section in which it was published, and the article to which it was linked. Anyone who downloads the photo from Slate, or even just looks at the file path, sees the Slate-given filename. Cali4beach sues Slate for violating 17 U.S.C. § 1202. Evaluate her claim.Because license information is included in the definition of CMI, Slate removed CMI. The first question is whether 1201(b)(1) or 1201(b)(3) applies. Since Slate’s editor did the removing, the action should probably be attributed to Slate, triggering 1201(b)(1). Thus we would then ask whether the removal was “intentional,” and secondarily whether the final provision of 1201(b), “knowing, or … having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title,” applies to 1201(b)(1) or only to 1201(b)(3). The removal was clearly intentional in the ordinary sense: the editor intended to remove the CMI and substitute the Slate-standardized filename and deliberately acted to produce that result. But there’s no particular reason to think that the editor knew that the CMI was, in fact, CMI, though discovery might give more there—if the editor recognized the CC-BY language, then it’s easier to say that the removal was “intentional.” If you argued that “intentional” had to include an understanding that what was being removed was CMI (even in the absence of an understanding that removing CMI was against the law), I accepted that, though it’s a nonstandard meaning for “intentional.”If you’re over that hurdle, then there are two possibilities: either 1201(b)(1) includes the requirement of a relationship to infringement, the way 1201(b)(3) clearly does, or it doesn’t. As long as you noted the issue and proceeded accordingly, you got credit. If you did think a relationship to infringement was required: It would be very hard to say that the removal was done with the knowledge (or reasonable grounds to know) that it would facilitate etc. infringement. True, the removal of the Creative Commons license information made Slate violate the requirements of the license, but the removal itself didn’t facilitate Slate’s unauthorized use—it was simply the reason that the use was unauthorized. Plus, Slate gave Cali4Beach explicit credit, which is inconsistent with a desire to facilitate etc. infringement; Slate didn’t claim copyright in the image itself, so people who want to license the image still know whose permission is required. The same analysis would apply to 1201(b)(3), which definitely has the knowledge/reason to know standard and applies to Slate’s distribution of copies via the internet (assuming that counts as distribution).Example answer:§ 1202(b)(1) prohibits intentionally removing or altering any copyright management information (CMI), and 1202(b)(3) prohibits distributing or publicly performing a copy of a work knowing that CMI has been removed or altered. The provision contains a scienter requirement (knowing, or having reasonable grounds to know, that it will induce, enable, facilitate, or conceal infringement), although it is unclear whether it applies only 1202(b)(3) or if it applies to 1202(b) as a whole.CMI is information that identifies the copyright owner and the terms of use of the work. The Creative Commons license is part of the terms of use of the work. But the question is whether Slate has removed or altered CMI, or publicly performed a copy of a work knowing that CMI has been removed or altered. The only CMI attached to the photo itself was in its filename, since it contained no metadata. The original filename contained both the name of the author and the designation "CC-BY," indicating a specific type of Creative Commons license. By renaming the file and thereby deleting this information, it does seem clear that Slate has removed the CMI from this photo. If 1202(b(1) is strict liability, Slate has violated this provision. However, if we attach the scienter requirement to 1202(b)(1), Slate must have done so with knowledge or reasonable grounds to know that it would induce, enable, facilitate, or conceal infringement. There was no metadata to begin with, so Slate did not remove anything else. Slate uses standard file-naming conventions, and it did attribute the photo to Cali4beach elsewhere, so it's unclear that the mere act of removal is itself a violation.Of course, by displaying the renamed photo on their website, Slate may have violated 1202(b)(3). Slate does know that the CMI has been removed, even if the removal itself was not necessarily a violation of 1202(b)(1). More importantly, Slate knows that the work is subject to a Creative Commons license that requires not just attribution, but also making clear to others the license terms. While Slate has attributed the photo properly, there is no longer any indication of its license terms. There's no link to the CC-BY page or to Cali4beach's Flickr, there's no statement of the license terms in the article itself, and there is no longer even the tag "CC-BY" in the photo's file name. Slate might have reason to know that, absent any indicia of the licensing terms, its use of the photo without CMI would induce, enable, facilitate, or conceal an infringement.Slate's best argument is that by properly attributing the photo to Flickr4beach, anyone that wanted to use the photo would then be able to seek out Cali4beach to obtain permission to use the photo. If they did that, they would discover her Flickr page and would be alerted to the terms of the Creative Commons license. Thus, anyone that tried to go through the proper channels to use the photos would find those terms. Anyone that didn't bother to try to obtain permission wouldn't, in any real sense, be aided by Slate's failure to make the terms of the license clear. Thus, while Slate did not comply with the terms of the CC license, it would not have violated 1202 because it did not have reasonable grounds to know that infringement would result. The success of this argument will depend on how strictly the scienter requirement is construed, but it seems likely that it could prevail on this point. Thus Slate is not guilty of violating 1202(b)(1), and is probably not be guilty of 1202(b)(3) because it would still not have reasonable grounds to know that infringement would result. ................
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