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Assignments of Copyright

Effects Associates, Inc. v. Cohen, (9th Cir. 1990)

A standard practice in the movie industry that ignored the written assignment clause of the US Copyright Act was insufficient to avoid the written assignment requirement of 17 USC 204.

Konigsberg Intern. Inc. v. Rice, (9th Cir. 1994)

The written assignment requirement of 17 USC 204 is not satisfied by a writing written after the oral agreement would have terminated.

Compilations and Databases (originality requirement of Feist).

Feist Publications v. Rural Telephone Service Co. (6th Cir. 1996)

In Feist, the Supreme Court rejected the "sweat of the brow" doctrine that provided copyright protection for databases and compilation based upon the effort use to created the compilation. Instead, the court decided that compilations and databases are protected by copyright only when they are arranged and selected in an original manner. Although the level of originality needed is not very high, the white pages of a phone books are not protectable because the selection of the data (all customers in a geographic area) and the arrangement of the data (in alphabetical order) were not sufficiently original as to come under the protection of the Copyright Act. Consequently, the competing telephone directory publisher was allowed to extract all of the data from the white pages without liability for copyright infringement.

Fair Use:

Sony Corp. of America v. Universal City Studios (Supreme Court 1984)

The Supreme Court ruled that Sony's Betamax video recorder did not infringe on the copyright that Universal held in its movies. The Court ruled that time-shifting (recording a video at one time and then playing it at another) constitute a fair use.

Harper & Row, Publishers, Inc. v. Nation Enterprises (Supreme Court 1985)

The Supreme Court held that The Nation magazine's unauthorized publication of excerpts from President Gerald Ford’s unpublished memoirs was not a fair use. The case arose after Harper & Row contracted with Time Magazine for the exclusive first serialization rights to the memoir. Before Time could publish, The Nation obtained a pre-publication copy and published approximately 300 words from the manuscript, including verbatim quotes detailing Ford’s controversial pardon of Nixon. As a result, Time canceled its agreement, and Harper & Row sued for copyright infringement. The Court ruled in favor of Harper & Row, emphasizing that the right of first publication is a core right of copyright law. Although the excerpt was short, the Court found that it contained the “heart” of the work, making the third factor (amount and substantiality) weigh against fair use. Crucially, the Court treated the unpublished status of the work as a key factor, holding that the author's decision whether and when to publish is a protected interest. The fourth factor—market effect—also weighed heavily against The Nation, since its actions caused the loss of a valuable licensing deal.

Sega Enterprises Ltd. v. Accolade, Inc., (9th Cir. 1992)

The Ninth Circuit Court of Appeals addressed whether Accolade's reverse engineering of Sega's video game software to create compatible games constituted fair use under the Copyright Act. Accolade had disassembled Sega's object code to understand the functional elements necessary for compatibility with the Genesis console, subsequently developing its own games without copying Sega's code. The court evaluated this practice under the four statutory fair use factors. Balancing these factors, the court concluded that Accolade's reverse engineering was a fair use, as it served a legitimate purpose of fostering competition and innovation without unfairly exploiting Sega's copyrighted material.

Campbell v. Acuff-Rose Music, Inc. (Supreme Court 1994)

The Court found in that a commercial parody of the song "Pretty Woman", made without consent of the song's author (Roy Orbison) constituted a fair use and was not copyright infringement. The Court emphasized the transformative nature of the new work made by 2 Live Crew.

Princeton University Press v. Michigan Document Services, Inc. (6th Cir. 1996)

In this case, a photocopying service was sued for copyright infringement for making "coursepacks" for students at the University of Michigan. Coursepacks are a grouping of readings assigned by a professor that are copied and bound together by a commercial copyshop. Although a system is available for the payment of copyright fees to publishers that allow the copying of materials in a coursepack, the copyshop in this case refused to pay such fees. In response to the claim of copyright infringement, the copyshop owner claimed that the creation of coursepacks for students was a fair use under the Copyright Act. The Sixth Circuit, in an en banc opinion, analysed the fair use factors and found that there was NO fair use.

Sony Computer Entertainment v. Connectix Corp. (9th Cir. 2000)

The Ninth Circuit found that Connectix's reverse engineering of Sony's PlayStation BIOS to create the Virtual Game Station (VGS)—an emulator enabling PlayStation games to run on personal computers—was a fair use. Connectix had copied Sony’s BIOS software to understand its functional elements but did not include any of Sony’s code in its final product. Applying the fair use factors, the court found Connectix's use to be transformative, as it enabled games to be played on a new platform, provided a legitimate competitive product, and served a beneficial public purpose by promoting innovation. Although Connectix had copied Sony's entire BIOS temporarily during development, this was essential to access functional elements not protected by copyright. Additionally, the emulator did not harm the market for Sony's copyrighted works but instead expanded the audience for PlayStation games.

Perfect 10, Inc. v. Amazon. com, Inc. (9th Cir. 2007)

In this case, an adult entertainment publisher sued Google, alleging that Google's image search engine infringed on copyrighted photographs by creating and displaying thumbnail images without authorization. The plaintiff argued that these thumbnails, along with Google's practice of linking to third-party websites hosting infringing full-size images, constituted direct and contributory copyright infringement. The United States Court of Appeals for the Ninth Circuit examined whether Google's use of thumbnail images qualified as fair use under 17 U.S.C. § 107. The court determined that Google's use was highly transformative, as it provided a new and socially beneficial function by improving access to information on the internet. The court also noted that while Google's use was commercial, the transformative nature of the use outweighed the commercial aspect. Regarding the potential market harm, the court found that the plaintiff failed to show significant market harm resulting from Google's use of the thumbnails.

Authors Guild v. Google, Inc. (2nd Cir. 2016)

The Second Circuit affirmed the district court's finding that the Google Book initiative, which digitized millions of books to create a searchable database, was not liable for copyright infringement because Google's digitization and snippet display were transformative and constituted fair use. The court highlighted that Google's actions provided a public service by enhancing the availability of information without violating intellectual property law. The court also addressed concerns about potential security risks and the distribution of digital copies to participating libraries, concluding that these factors did not outweigh the fair use determination.

Google LLC v. Oracle America, Inc. (Supreme Court 2021)

The Supreme Court determined that Google's use of the declaratory code that Oracle/Sun created as part of the API for Java was a fair use. This was true even though the code was implemented as part of the Android operating system, which was a huge commercial success for Google. The Supreme Court was influenced by the desire felt by Google to make it easier for Java programmers to learn Android. The Court seemed to apply only thin copyright protection for this user interface code, and used the fair use doctrine to keep this protection thin.

Andy Warhol Foundation Visual Arts v. Goldsmith (Supreme Court 2023)

The Supreme Court held that the Warhol Foundation's licensing of Warhol's "Orange Prince" image to Condé Nast did not qualify as fair use under copyright law. The majority opinion emphasized that both Warhol's work and Goldsmith's original photograph served substantially similar commercial purposes—as magazine portraits depicting Prince—rendering Warhol's use insufficiently transformative. The Court underscored that simply adding new expression to an existing work does not automatically confer fair use protection, particularly in commercial contexts where the works compete.

Idea/Expression Dichotomy (no copyright for facts):

Baker v. Selden (Supreme Court 1880)

This is the fundamental case in which the Supreme Court clearly distinguished between copyrightable expression and uncopyrightable ideas. The Court ruled that the forms or "blanks" in book outlining a new accounting system were unprotectable ideas.

The National Basketball Association v. Motorola, Inc. (2nd Cir. 1997)

The Second Circuit confirmed that statistics from an NBA game are facts, and therefore are not subject to copyright law.

Implied Licenses Under Copyright Law:

Effects Associates, Inc. v. Cohen, (9th Cir. 1990)

Implied license was found in connection the creation of special effects footage used in a commercial movie. No written contract was signed by the special effects company, thus there was no assignment of copyright to the producer of the film in which the special effects footage was used. However, the court found that an implied license was created because the copyright owner intended that the defendant copy and distribute the footage. It did not matter that the copyright owner was not fully paid for the work. The owner retains the right to sue for breach of contract for the unpaid amount.

Foad Consulting Group, Inc. v. Azzalino, (9th Cir. 2001)

Implied license was found in connection with a copyright on architectural drawings. In particular, the Ninth Circuit found that federal Copyright law does allow for the existence of an implied (non-written) copyright license. However, state contract law governs the question about whether or not a particular fact situation gives rise to the implied license.

Internet and OnLine Service Liability:

Playboy Enterprises v. Frena., (M.D. Fla. 1993)

In this case, a BBS operator whose bulletin board contained copyrighted photographs owned by Playboy was found liable of violating the right to display and publish the photographs. This was true even though the BBS operator did not make the copies himself, and in fact was never proven to have knowledge of their existence. In effect, this case held the BBS operator liable merely for providing a means by which copies (made by others) could be distributed to the public. The rule in this case was effectively superceded by the court in <em>RTC v. Netcom</em>, and the Digital Millennium Copyright Act addition of <a href="../../17usc/512.html">Section 512</a> to the Copyright Act. </p>

Preemption:

The National Basketball Association v. Motorola, Inc. (2nd Cir. 1997)

The Second Circuit held in this case that certain New York misappropriation laws were preempted by the Copyright Act. Specifically, the Court analyzed the "hot news" misappropriate common law rights in light of the 1976 amendments to the Copyright Act. Under the preemption provisions of that Act, only a narrow "hot news" misappropriate right remained. Therefore, the claims by the NBA against Motorola which involved transmitting live information about NBA games to pagers were dismissed.

Software: Copyrightable Elements:

Lotus Development Corp. v. Borland Intern., Inc. (1st Cir. 1995)

The 1st Circuit held that user interfaces (in particular the command character sequence) used to program Lotus 1-2-3 macros) was not protectable under U.S. Copyright law.

Oracle v. Google (Fed. Cir. 2014)

The Federal Circuit (applying the law of the 9th Circuit) held that the API used to access the packages and methods in Java were eligible for copyright protection. More specifically, held that the 9th Circuit did not follow the rule set forth in Lotus v. Borland. As a result, user interfaces are copyrightable in the 9th Circuit. The Federal Circuit also rejected the argument that the merger doctrine applied to the words used in the API. As for Google's fair use defense, the original jury was hung on this issue. Because of the factual nature of the fair use analysis, the Federal Circuit remanded this back the trial court (see Oracle v. Google II (Fed. Cir. 2018))

Software: Non-literal Infringement:

Computer Associates International, Inc. v. Altai, Inc., (2nd Cir. 1992)

The second Circuit adopted the "abstraction-filtration-comparison" three part test to analyze non-literal infringement claims in computer software. Utilizing this process, the Court found that in this instance, there was no copyrightable expression copied, so there is no copyright infringement.

Engineering Dynamics, Inc. v. Structure Software, Inc. (5th Cir. 1994)

The Fifth Circuit also adopted the "abstraction-filtration-comparison" test to analyze whether computer input and output forms are subject to copyright protection. The court rejects the summary argument that input or output forms should never be protected under copyright law.

Software: Shrinkwrap Licenses:

ProCD Inc. v. Zeidenberg (7th Cir. 1996)

In ProCD, the Seventh Circuit found that a shrink wrap license is an enforceable software license.

Term Extension

Eldred v. Ashcroft (7th Cir. 1996)

The Supreme Court upheld the constitutionality of the Copyright Term Extension Act of 1998 (CTEA), which extended the duration of existing and future copyrights by 20 years. The majority rejected the argument that the extension violated the “limited Times” requirement in the Copyright Clause of the Constitution or that it infringed upon the First Amendment. Writing for the Court, Justice Ginsburg held that Congress has broad authority to define the duration of copyrights, as long as it does not make them perpetual. The fact that the CTEA extended existing copyrights, rather than only prospective ones, did not render it unconstitutional. The Court also rejected the First Amendment challenge, emphasizing that the idea/expression dichotomy and the fair use doctrine provide adequate protection for free expression.