Chapter 9: Exclusive Rights of the Copyright Owner and Infringement

As set forth in § 106 of the 1976 Act, the owner of a copyright enjoys six exclusive rights with respect to the copyrighted work. This means that the copyright owner not only has the right to exercise the rights personally, or authorize others to exercise the rights, but also has the right to exclude others from exercising the rights. A copyright owner can exercise its right to exclude others by means of a copyright infringement lawsuit in the federal courts. A successful copyright infringement lawsuit can result in an award of remedies to the copyright owner in the form of money damages and/or an injunction against further infringing actions. Copyright infringement is generally characterized as a matter of strict liability, with no requirement of scienter, although in some relatively recent decisions involving the Internet courts have required some element of volition on the part of the accused infringer, as exemplified by the Netcom decision, discussed in more detail later in this casebook.

The six exclusive rights of the copyright owner are as follows:

(1) to reproduce the copyrighted work in copies or phonorecords [the reproduction right];

(2) to prepare derivative works based upon the copyrighted work [the derivative works right];

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending [the distribution right];

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly [the public performance right];

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly [the public display right]; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission [the digital public performance right].

Note that while the first three rights are available for all copyrighted works, the other three rights are only available for certain categories of works. The public performance right, for example, is not available for sound recordings. Sound recordings do enjoy a digital public performance right, which is limited to digital transmission, e.g., over the Internet, and does not encompass conventional analog radio transmissions or live performance. As another example, the public display right does not apply to architectural works.

Section 106 specifically states that all of the exclusive rights are “[s]ubject to sections 107 through 122” of the Copyright Act, which impose a host of limitations on the rights of copyright owners, including, most significantly for our purposes, the fair use defense, a discussion of which appears later in this book.

A. The Reproduction Right

The most fundamental and long-standing right of the copyright owner is the reproduction right, i.e., the right to make copies. Infringement of the reproduction right can be either literal or non-literal. Literal infringement of the reproduction right involves the unauthorized production of an exact copy of the copyrighted work, or at least a substantial portion of the copyrighted work, through verbatim copying. It is usually relatively easy to determine whether literal infringement has occurred, at least compared to deciding whether a copyright has been non-literally infringed. In the case of non-literal infringement, the infringing copy is not identical to the copyrighted work, and might in fact be very different from the copyrighted work in many ways. Nonetheless, if a court finds that the accused work was the product of copying from the copyrighted work, and that the degree of similarity between the works is substantial enough to constitute “improper (i.e., unlawful) appropriation,” then the copyist can be held liable for non-literal copyright infringement.

Non-literal copyright infringement might occur, for example, if a movie is made that copies expressive elements from a copyrighted play, even though in many ways the movie and the play are quite different. Similarly, courts sometimes find that the composer of a popular song has committed non-literal copyright infringement by copying expressive elements of another song, even though in many ways the two songs are quite different. The following cases set forth the elements that a plaintiff must establish in order to prevail on an action for infringement of the reproduction right, and provide examples of how the courts assess these elements and use them to arrive at a final conclusion regarding infringement. Note that all of these cases involve allegations of non-literal infringement. Literal infringement is usually cut and dried, and does not lend itself to interesting judicial decisions, at least with respect to the question of whether a copyright owner’s reproduction right has been infringed.

In reading these decisions, it is important to be clear as to the general test for infringement of the reproduction right, particularly since courts sometimes fail to clearly articulate the elements a plaintiff needs to prove in order to prevail. Here is an outlined overview of the elements that the copyright plaintiff must prove, followed by an explanation:

1. Copying-in-fact

   1. Access

   2. Substantial similarity

2. Improper appropriation (courts often refer to this as “unlawful appropriation”)

The first element the copyright owner must prove is that the defendant did in fact copy from the copyrighted work. Without copying, there is no infringement of the reproduction right, no matter how similar the works are. In most cases there is no direct evidence of copying-in-fact, and the plaintiff must rely on circumstantial evidence, usually consisting of proof that the accused infringer had “access” to the copyrighted work, and that the accused work and the copyrighted works are “substantially similar.” The rationale behind this is that, without access to the work, it would be impossible for the accused infringer to have copied it. Once access to the copyright work has been established, however, the similarity of the works can provide sufficient evidence of copying. If the accused work is “substantially” similar to the copyrighted work, a court can infer that the similarity arises out of copying, rather than an independent creation that, by coincidental chance, happens to be similar to the copyrighted work. Sometimes the similarity can be so striking that the similarity itself provides the necessary proof of access.

Once copying-in-fact has been established, the copyright owner must then prove that the copying rises to the level of “improper” or “unlawful” appropriation. This is not a very instructive standard, of course, since it basically states that an accused infringer will be liable for copyright infringement when the accused infringer has appropriated more of the copyrighted work than is “proper” or “lawful,” i.e., more than is allowed by law. The point to bear in mind, however, is that not all copying constitutes copyright infringement. Ideas and facts, for example, can be freely copied. De minimis copying can also be noninfringing. In assessing whether improper appropriation has occurred, courts compare the copyrighted and accused works, and often find improper appropriation when the works are “substantially similar.” It is essentially a measure of the amount and substantiality of the copying that occurred.

The following case, Arnstein v. Porter, is a seminal copyright law decision, often cited for its explanation of the two-part test for infringement outlined above.

Some things to consider when reading Arnstein:

1. This decision is largely about the proper standard for dismissing a case on summary judgment under Rule 56, but we will focus primarily on the merits, i.e., the question of copyright infringement.
2. The court’s explanation of the two-part test for determining whether an accused work is infringing.
3. The rationale behind the court’s statement that dissection and expert testimony are often relevant with respect to the question of “copying-in-fact,” but not “improper appropriation.”
4. The guidance the court provides for assessing whether copying has risen to the level of “improper appropriation,” and why the court believes that jurors are well-suited for making this determination.

Arnstein v. Porter

154 F.2d 464 (2d Cir. 1946)

FRANK, Circuit Judge.

The principal question on this appeal is whether the lower court, under Rule 56, properly deprived plaintiff of a trial of his copyright infringement action. The answer depends on whether “there is the slightest doubt as to the facts.”  In applying that standard here, it is important to avoid confusing two separate elements essential to a plaintiff’s case in such a suit: (a) that defendant copied from plaintiff’s copyrighted work and (b) that the copying (assuming it to be proved) went so far as to constitute improper appropriation.

As to the first—copying—the evidence may consist (a) of defendant’s admission that he copied or (b) of circumstantial evidence—usually evidence of access—from which the trier of the facts may reasonably infer copying. Of course, if there are no similarities, no amount of evidence of access will suffice to prove copying. If there is evidence of access and similarities exist, then the trier of the facts must determine whether the similarities are sufficient to prove copying. On this issue, analysis (‘dissection’) is relevant, and the testimony of experts may be received to aid the trier of the facts. If evidence of access is absent, the similarities must be so striking as to preclude the possibility that plaintiff and defendant independently arrived at the same result.

If copying is established, then only does there arise the second issue, that of illicit copying (unlawful appropriation). On that issue (as noted more in detail below) the test is the response of the ordinary lay hearer; accordingly, on that issue, ‘dissection’ and expert testimony are irrelevant.

In some cases, the similarities between the plaintiff’s and defendant’s work are so extensive and striking as, without more, both to justify an inference of copying and to prove improper appropriation. But such double-purpose evidence is not required; that is, if copying is otherwise shown, proof of improper appropriation need not consist of similarities which, standing alone, would support an inference of copying.

Each of these two issues—copying and improper appropriation—is an issue of fact. If there is a trial, the conclusions on those issues of the trier of the facts—of the judge if he sat without a jury, or of the jury if there was a jury trial—bind this court on appeal, provided the evidence supports those findings, regardless of whether we would ourselves have reached the same conclusions. But a case could occur in which the similarities were so striking that we would reverse a finding of no access, despite weak evidence of access (or no evidence thereof other than the similarities); and similarly as to a finding of no illicit appropriation.

We turn first to the issue of copying. After listening to the compositions as played in the phonograph recordings submitted by defendant, we find similarities; but we hold that unquestionably, standing alone, they do not compel the conclusion, or permit the inference, that defendant copied. The similarities, however, are sufficient so that, if there is enough evidence of access to permit the case to go to the jury, the jury may properly infer that the similarities did not result from coincidence.

Summary judgment was, then, proper if indubitably defendant did not have access to plaintiff’s compositions. Plainly that presents an issue of fact. On that issue, the district judge, who heard no oral testimony, had before him the depositions of plaintiff and defendant. The judge characterized plaintiff’s story as ‘fantastic’; and, in the light of the references in his opinion to defendant’s deposition, the judge obviously accepted defendant’s denial of access and copying. Although part of plaintiff’s testimony on deposition (as to ‘stooges’ and the like) does seem ‘fantastic,’ yet plaintiff’s credibility, even as to those improbabilities, should be left to the jury. If evidence is ‘of a kind that greatly taxes the credulity of the judge, he can say so, or, if he totally disbelieves it, he may announce that fact, leaving the jury free to believe it or not.’ If, said Winslow, J., ‘evidence is to be always disbelieved because the story told seems remarkable or impossible, then a party whose rights depend on the proof of some facts out of the usual course of events will always be denied justice simply because his story is improbable.’⁶ We should not overlook the shrewd proverbial admonition that sometimes truth is stranger than fiction.

But even if we were to disregard the improbable aspects of plaintiff’s story, there remain parts by no means ‘fantastic.’ On the record now before us, more than a million copies of one of his compositions were sold; copies of others were sold in smaller quantities or distributed to radio stations or band leaders or publishers, or the pieces were publicly performed. If, after hearing both parties testify, the jury disbelieves defendant’s denials, it can, from such facts, reasonably infer access. It follows that, as credibility is unavoidably involved, a genuine issue of material fact presents itself. With credibility a vital factor, plaintiff is entitled to a trial where the jury can observe the witnesses while testifying. Plaintiff must not be deprived of the invaluable privilege of cross-examining the defendant—the ‘crucial test of credibility’—in the presence of the jury. Plaintiff, or a lawyer on his behalf, on such examination may elicit damaging admissions from defendant; more important, plaintiff may persuade the jury, observing defendant’s manner when testifying, that defendant is unworthy of belief.

With all that in mind, we cannot now say—as we think we must say to sustain a summary judgment—that at the close of a trial the judge could properly direct a verdict.

Assuming that adequate proof is made of copying, that is not enough; for there can be ‘permissible copying,’ copying which is not illicit. Whether (if he copied) defendant unlawfully appropriated presents, too, an issue of fact. The proper criterion on that issue is not an analytic or other comparison of the respective musical compositions as they appear on paper or in the judgment of trained musicians. The plaintiff’s legally protected interest is not, as such, his reputation as a musician but his interest in the potential financial returns from his compositions which derive from the lay public’s approbation of his efforts. The question, therefore, is whether defendant took from plaintiff’s works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff.

Surely, then, we have an issue of fact which a jury is peculiarly fitted to determine. Indeed, even if there were to be a trial before a judge, it would be desirable (although not necessary) for him to summon an advisory jury on this question.

We should not be taken as saying that a plagiarism case can never arise in which absence of similarities is so patent that a summary judgment for defendant would be correct. Thus suppose that Ravel’s ‘Bolero’ or Shostakovitch’s ‘Fifth Symphony’ were alleged to infringe ‘When Irish Eyes Are Smiling.’ But this is not such a case. For, after listening to the playing of the respective compositions, we are, at this time, unable to conclude that the likenesses are so trifling that, on the issue of misappropriation, a trial judge could legitimately direct a verdict for defendant.

At the trial, plaintiff may play, or cause to be played, the pieces in such manner that they may seem to a jury to be inexcusably alike, in terms of the way in which lay listeners of such music would be likely to react. The plaintiff may call witnesses whose testimony may aid the jury in reaching its conclusion as to the responses of such audiences. Expert testimony of musicians may also be received, but it will in no way be controlling on the issue of illicit copying, and should be utilized only to assist in determining the reactions of lay auditors. The impression made on the refined ears of musical experts or their views as to the musical excellence of plaintiff’s or defendant’s works are utterly immaterial on the issue of misappropriation; for the views of such persons are caviar to the general—and plaintiff’s and defendant’s compositions are not caviar.

Modified in part; otherwise reversed and remanded.

__________

Check Your Understanding – Arnstein

Question 1. According to Arnstein, under what circumstances does unauthorized copying from a copyrighted work constitute copyright infringement?

Question 2. In Arnstein, why does Judge Frank conclude that expert testimony is relevant in determining the first element of copyright infringement (i.e., whether the accused infringer copied from the copyrighted work) but not the second element (i.e., whether the copying went too far as to constitute improper appropriation)?

When courts apply Arnstein’s two-part test for infringement, the concept of “substantial similarity” arises in two distinct contexts, i.e., in determining whether copying-in-fact has occurred, and in determining whether improper appropriation has occurred. But it is important to bear in mind that “substantial similarity” is being used in two different ways in these two different contexts. With respect to copying-in-fact, “substantial similarity” is used as evidence that, more likely than not, the defendant copied from the copyrighted work. With respect to “improper appropriation,” the “substantial similarity” of the works is used as evidence that the defendant appropriated more of the copyrighted work than is allowed by law. This somewhat confusing double-use of the term “substantially similar” is discussed by the court at length below in the Rentmeester v. Nike decision.

Some things to consider when reading Rentmeester:

1. The court’s discussion of “substantial similarity,” and how the term has been used by courts to describe two distinct concepts: (1) the degree of similarity relevant to proof of copying-in-fact and (2) the degree of similarity necessary to establish unlawful (i.e., improper) appropriation. Recall that in order to establish infringement, the plaintiff must establish both copying-in-fact and unlawful appropriation.
2. The court’s discussion of the protectable elements of a copyrighted photograph.
3. The court’s analysis of whether the accused photograph is “substantially similar” to the plaintiff’s photograph, including the Ninth Circuit’s “extrinsic” and “intrinsic” tests.

Rentmeester v. Nike, Inc.

883 F.3d 1111 (9th Cir. 2018)

WATFORD, Circuit Judge:

This is a copyright infringement action brought by the renowned photographer Jacobus Rentmeester against Nike, Inc. The case involves a famous photograph Rentmeester took in 1984 of Michael Jordan, who at the time was a student at the University of North Carolina. The photo originally appeared in Life magazine as part of a photo essay featuring American athletes who would soon be competing in the 1984 Summer Olympic Games. We are asked to decide whether Nike infringed Rentmeester’s copyright when it commissioned its own photograph of Jordan and then used that photo to create one of its most iconic trademarks.

I

The allegations in Rentmeester’s complaint, which we accept as true at this stage of the proceedings, establish the following. Rentmeester’s photograph of Jordan, reproduced in the Appendix, is highly original. It depicts Jordan leaping toward a basketball hoop with a basketball raised above his head in his left hand, as though he is attempting to dunk the ball. The setting for the photo is not a basketball court, as one would expect in a shot of this sort. Instead, Rentmeester chose to take the photo on an isolated grassy knoll on the University of North Carolina campus. He brought in a basketball hoop and backboard mounted on a tall pole, which he planted in the ground to position the hoop exactly where he wanted. Whether due to the height of the pole or its placement within the image, the basketball hoop appears to tower above Jordan, beyond his reach.

Rentmeester instructed Jordan on the precise pose he wanted Jordan to assume. It was an unusual pose for a basketball player to adopt, one inspired by ballet’s grand jeté, in which a dancer leaps with legs extended, one foot forward and the other back. Rentmeester positioned the camera below Jordan and snapped the photo at the peak of his jump so that the viewer looks up at Jordan’s soaring figure silhouetted against a cloudless blue sky. Rentmeester used powerful strobe lights and a fast shutter speed to capture a sharp image of Jordan contrasted against the sky, even though the sun is shining directly into the camera lens from the lower right-hand corner of the shot.

Not long after Rentmeester’s photograph appeared in Life magazine, Nike contacted him and asked to borrow color transparencies of the photo. Rentmeester provided Nike with two color transparencies for $150 under a limited license authorizing Nike to use the transparencies “for slide presentation only.” It is unclear from the complaint what kind of slide presentation Nike may have been preparing, but the company was then beginning its lucrative partnership with Jordan by promoting the Air Jordan brand of athletic shoes.

In late 1984 or early 1985, Nike hired a photographer to produce its own photograph of Jordan, one obviously inspired by Rentmeester’s. In the Nike photo, Jordan is again shown leaping toward a basketball hoop with a basketball held in his left hand above his head, as though he is about to dunk the ball. See Appendix. The photo was taken outdoors and from a similar angle as in Rentmeester’s photo, so that the viewer looks up at Jordan’s figure silhouetted against the sky. In the Nike photo, though, it is the city of Chicago’s skyline that appears in the background, a nod to the fact that by then Jordan was playing professionally for the Chicago Bulls. Jordan wears apparel reflecting the colors of his new team, and he is of course wearing a pair of Nike shoes. Nike used this photo on posters and billboards as part of its marketing campaign for the new Air Jordan brand.

When Rentmeester saw the Nike photo, he threatened to sue Nike for breach of the limited license governing use of his color transparencies. To head off litigation, Nike entered into a new agreement with Rentmeester in March 1985, under which the company agreed to pay $15,000 for the right to continue using the Nike photo on posters and billboards in North America for a period of two years. Rentmeester alleges that Nike continued to use the photo well beyond that period.

In 1987, Nike created its iconic “Jumpman” logo, a solid black silhouette that tracks the outline of Jordan’s figure as it appears in the Nike photo. See Appendix. Over the past three decades, Nike has used the Jumpman logo in connection with the sale and marketing of billions of dollars of merchandise. It has become one of Nike’s most recognizable trademarks.

Rentmeester filed this action in January 2015. He alleges that both the Nike photo and the Jumpman logo infringe the copyright in his 1984 photo of Jordan.

The district court dismissed Rentmeester’s claims with prejudice after concluding that neither the Nike photo nor the Jumpman logo infringe Rentmeester’s copyright as a matter of law. We review that legal determination de novo.

II

To state a claim for copyright infringement, Rentmeester must plausibly allege two things: (1) that he owns a valid copyright in his photograph of Jordan, and (2) that Nike copied protected aspects of the photo’s expression.

Although our cases have not always made this point explicit, the second element has two distinct components: “copying” and “unlawful appropriation.” Proof of copying by the defendant is necessary because independent creation is a complete defense to copyright infringement. No matter how similar the plaintiff’s and the defendant’s works are, if the defendant created his independently, without knowledge of or exposure to the plaintiff’s work, the defendant is not liable for infringement. Proof of unlawful appropriation—that is, illicit copying—is necessary because copyright law does not forbid all copying. The Copyright Act provides that copyright protection does not “extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in [the copyrighted] work.” 17 U.S.C. § 102(b). Thus, a defendant incurs no liability if he copies only the “ideas” or “concepts” used in the plaintiff’s work. To infringe, the defendant must also copy enough of the plaintiff’s expression of those ideas or concepts to render the two works “substantially similar.” Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010).

When the plaintiff lacks direct evidence of copying, he can attempt to prove it circumstantially by showing that the defendant had access to the plaintiff’s work and that the two works share similarities probative of copying. Such proof creates a presumption of copying, which the defendant can then attempt to rebut by proving independent creation.

Unfortunately, we have used the same term—“substantial similarity”—to describe both the degree of similarity relevant to proof of copying and the degree of similarity necessary to establish unlawful appropriation. The term means different things in those two contexts. To prove copying, the similarities between the two works need not be extensive, and they need not involve protected elements of the plaintiff’s work. They just need to be similarities one would not expect to arise if the two works had been created independently. To prove unlawful appropriation, on the other hand, the similarities between the two works must be “substantial” and they must involve protected elements of the plaintiff’s work.

In this case, Rentmeester has plausibly alleged the first element of his infringement claim—that he owns a valid copyright. The complaint asserts that he has been the sole owner of the copyright in his photo since its creation in 1984. And the photo obviously qualifies as an “original work of authorship,” given the creative choices Rentmeester made in composing it. Rentmeester alleges that he registered his photo with the Copyright Office in 2014, which permits him to bring this suit. 17 U.S.C. § 411(a).

Rentmeester has also plausibly alleged the “copying” component of the second element. He alleges that he provided color transparencies of his photo to Nike’s creative director shortly before production of the Nike photo. That allegation establishes that Nike had access to Rentmeester’s photo, which in this context means a reasonable opportunity to view it. Nike’s access to Rentmeester’s photo, combined with the obvious conceptual similarities between the two photos, is sufficient to create a presumption that the Nike photo was the product of copying rather than independent creation.

The remaining question is whether Rentmeester has plausibly alleged that Nike copied enough of the protected expression from Rentmeester’s photo to establish unlawful appropriation. To prove this component of his claim, Rentmeester does not have to show that Nike produced an exact duplicate of his photo. But, as mentioned, he does have to show that Nike copied enough of the photo’s protected expression to render their works “substantially similar.”

In our circuit, determining whether works are substantially similar involves a two-part analysis consisting of the “extrinsic test” and the “intrinsic test.” The extrinsic test assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff’s expression. Before that comparison can be made, the court must “filter out” the unprotectable elements of the plaintiff’s work—primarily ideas and concepts, material in the public domain, and scènes à faire (stock or standard features that are commonly associated with the treatment of a given subject). The protectable elements that remain are then compared to corresponding elements of the defendant’s work to assess similarities in the objective details of the works. The intrinsic test requires a more holistic, subjective comparison of the works to determine whether they are substantially similar in “total concept and feel.” To prevail, a plaintiff must prove substantial similarity under both tests.

Only the extrinsic test’s application may be decided by the court as a matter of law, that is the only test relevant in reviewing the district court’s ruling on a motion to dismiss. Before applying the extrinsic test ourselves, a few words are in order about the filtering process that the test demands.

Certain types of works can be dissected into protected and unprotected elements more readily than others. With novels, plays, and motion pictures, for instance, even after filtering out unprotectable elements like ideas and scènes à faire, many protectable elements of expression remain that can be objectively compared. Plot, themes, dialogue, mood, setting, pace, characters, and sequence of events are elements we have previously identified.

Photographs cannot be dissected into protected and unprotected elements in the same way. To be sure, photos can be broken down into objective elements that reflect the various creative choices the photographer made in composing the image—choices related to subject matter, pose, lighting, camera angle, depth of field, and the like. But none of those elements is subject to copyright protection when viewed in isolation. For example, a photographer who produces a photo using a highly original lighting technique or a novel camera angle cannot prevent other photographers from using those same techniques to produce new images of their own, provided the new images are not substantially similar to the earlier, copyrighted photo. With respect to a photograph’s subject matter, no photographer can claim a monopoly on the right to photograph a particular subject just because he was the first to capture it on film. A subsequent photographer is free to take her own photo of the same subject, again so long as the resulting image is not substantially similar to the earlier photograph.

That remains true even if, as here, a photographer creates wholly original subject matter by having someone pose in an unusual or distinctive way. Without question, one of the highly original elements of Rentmeester’s photo is the fanciful (non-natural) pose he asked Jordan to assume. That pose was a product of Rentmeester’s own intellectual invention; it would not have been captured on film but for Rentmeester’s creativity in conceiving it. The pose Rentmeester conceived is thus quite unlike the pose at issue in Harney v. Sony Pictures Television, Inc., 704 F.3d 173 (1st Cir. 2013), which consisted of nothing more than a daughter riding piggyback on her father’s shoulders. The photographer there did not orchestrate the pose and, even if he had, the pose is so commonplace as to be part of the public domain. Id. at 187; see also Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 116 (2d Cir. 1998) (pose of a nude, pregnant woman in profile is part of the public domain).

Without gainsaying the originality of the pose Rentmeester created, he cannot copyright the pose itself and thereby prevent others from photographing a person in the same pose. He is entitled to protection only for the way the pose is expressed in his photograph, a product of not just the pose but also the camera angle, timing, and shutter speed Rentmeester chose. If a subsequent photographer persuaded Michael Jordan to assume the exact same pose but took her photo, say, from a bird’s eye view directly above him, the resulting image would bear little resemblance to Rentmeester’s photo and thus could not be deemed infringing.

What is protected by copyright is the photographer’s selection and arrangement of the photo’s otherwise unprotected elements. If sufficiently original, the combination of subject matter, pose, camera angle, etc., receives protection, not any of the individual elements standing alone. In that respect (although not in others), photographs can be likened to factual compilations. An author of a factual compilation cannot claim copyright protection for the underlying factual material—facts are always free for all to use. If sufficiently original, though, an author’s selection and arrangement of the material are entitled to protection. The individual elements that comprise a photograph can be viewed in the same way, as the equivalent of unprotectable “facts” that anyone may use to create new works. A second photographer is free to borrow any of the individual elements featured in a copyrighted photograph, so long as the competing work does not feature the same selection and arrangement of those elements. In other words, a photographer’s copyright is limited to the particular selection and arrangement of the elements as expressed in the copyrighted image.

This is not to say, as Nike urges us to hold, that all photographs are entitled to only “thin” copyright protection, as is true of factual compilations. A copyrighted work is entitled to thin protection when the range of creative choices that can be made in producing the work is narrow. When only a narrow range of expression is possible, copyright protection is thin because the copyrighted work will contain few protectable features.

Some photographs are entitled to only thin protection because the range of creative choices available in selecting and arranging the photo’s elements is quite limited. That was the case in Ets–Hokin v. Skyy Spirits, Inc., 323 F.3d 763 (9th Cir. 2003), where we held that the plaintiff’s commercial product shots of a vodka bottle were entitled to only thin protection. Given the constraints imposed by the subject matter and conventions of commercial product shots, there were relatively few creative choices a photographer could make in producing acceptable images of the bottle. As a result, subtle differences in lighting, camera angle, and background were sufficient to render the defendant’s otherwise similar-looking photos of the same bottle non-infringing.

With other photographs, however, the range of creative choices available to the photographer will be far broader, and very few of those choices will be dictated by subject matter or convention. As with any other work, the greater the range of creative choices that may be made, the broader the level of protection that will be afforded to the resulting image.

Rentmeester’s photo is undoubtedly entitled to broad rather than thin protection. The range of creative choices open to Rentmeester in producing his photo was exceptionally broad; very few of those choices were dictated by convention or subject matter. In fact, Rentmeester’s photo is distinctive precisely because he chose not to be bound by the conventions commonly followed in photographing a basketball player attempting to dunk a basketball. Such photos would typically call for a basketball court as the setting, whether indoors or out. Rentmeester chose instead to place Jordan on an open, grassy knoll with a basketball hoop inserted as a prop, whimsically out of place and seeming to tower well above regulation height. Rentmeester also departed from convention by capturing Jordan in a fanciful, highly original pose, one inspired more by ballet’s grand jeté than by any pose a basketball player might naturally adopt when dunking a basketball. These creative choices—along with the other choices Rentmeester made with respect to lighting, camera angle, depth of field, and selection of foreground and background elements—resulted in a photo with many non-standard elements. Rentmeester’s selection and arrangement of those elements produced an image entitled to the broadest protection a photograph can receive.

With those preliminary observations out of the way, we can now turn to whether Rentmeester has plausibly alleged that his photo and the Nike photo are substantially similar under the extrinsic test. As discussed, that inquiry requires us to assess similarities in the selection and arrangement of the photos’ elements, as reflected in the objective details of the two works. We do not have a well-defined standard for assessing when similarity in selection and arrangement becomes “substantial,” and in truth no hard-and-fast rule could be devised to guide determinations that will necessarily turn on the unique facts of each case. See Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). The best we can do is borrow from the standard Judge Learned Hand employed in a case involving fabric designs: The two photos’ selection and arrangement of elements must be similar enough that “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them.”

We conclude that the works at issue here are as a matter of law not substantially similar. Just as Rentmeester made a series of creative choices in the selection and arrangement of the elements in his photograph, so too Nike’s photographer made his own distinct choices in that regard. Those choices produced an image that differs from Rentmeester’s photo in more than just minor details.

Let’s start with the subject matter of the photographs. The two photos are undeniably similar in the subject matter they depict: Both capture Michael Jordan in a leaping pose inspired by ballet’s grand jeté. But Rentmeester’s copyright does not confer a monopoly on that general “idea” or “concept”; he cannot prohibit other photographers from taking their own photos of Jordan in a leaping, grand jeté-inspired pose. Because the pose Rentmeester conceived is highly original, though, he is entitled to prevent others from copying the details of that pose as expressed in the photo he took. Had Nike’s photographer replicated those details in the Nike photo, a jury might well have been able to find unlawful appropriation even though other elements of the Nike photo, such as background and lighting, differ from the corresponding elements in Rentmeester’s photo.

But Nike’s photographer did not copy the details of the pose as expressed in Rentmeester’s photo; he borrowed only the general idea or concept embodied in the photo. Thus, in each photo Jordan is holding a basketball above his head in his left hand with his legs extended, in a pose at least loosely based on the grand jeté. The position of each of his limbs in the two photos is different, however, and those differences in detail are significant because, among other things, they affect the visual impact of the images. In Rentmeester’s photo, Jordan’s bent limbs combine with the background and foreground elements to convey mainly a sense of horizontal (forward) propulsion, while in the Nike photo Jordan’s completely straight limbs combine with the other elements to convey mainly a sense of vertical propulsion. While the photos embody a similar idea or concept, they express it in different ways.

As to the other highly original element of Rentmeester’s photo—the unusual outdoor setting he chose—Nike’s photographer did not copy the details of that element either. The two photos again share undeniable similarities at the conceptual level: Both are taken outdoors without the usual trappings of a basketball court, other than the presence of a lone hoop and backboard. But when comparing the details of how that concept is expressed in the two photos, stark differences are readily apparent. Rentmeester set his shot on a grassy knoll with a whimsically out-of-place basketball hoop jutting up from a pole planted in the ground. The grassy knoll in the foreground of Rentmeester’s photo is wholly absent from the Nike photo. In fact, in the Nike photo there is no foreground element at all. The positioning of the basketball hoops is also materially different in the two photos. In Rentmeester’s photo, the hoop is positioned at a height that appears beyond the ability of anyone to dunk on (even someone as athletic as Jordan), which further contributes to the whimsical rather than realistic nature of the depiction. The hoop in the Nike photo, by contrast, appears to be easily within Jordan’s reach.

The other major conceptual similarity shared by the two photos is that both are taken from a similar angle so that the viewer looks up at Jordan’s soaring figure silhouetted against a clear sky. This is a far less original element of Rentmeester’s photo, as photographers have long used similar camera angles to capture subjects silhouetted against the sky. But even here, the two photos differ as to expressive details in material respects. In Rentmeester’s photo, the background is a cloudless blue sky; in the Nike photo, it is the Chicago skyline silhouetted against the orange and purple hues of late dusk or early dawn. In Rentmeester’s photo, the sun looms large in the lower right-hand corner of the image; in the Nike photo the sun does not appear at all. And in Rentmeester’s photo, parts of Jordan’s figure are cast in shadow, while in the Nike photo every inch of Jordan’s figure is brightly lit.

Finally, the arrangement of the elements within the photographs is materially different in two further respects. In Rentmeester’s photo, Jordan is positioned slightly left of center and appears as a relatively small figure within the frame. In the Nike photo, he is perfectly centered and dominates the frame. In Rentmeester’s photo, the basketball hoop stands atop a tall pole planted in the ground, and the hoop’s position within the frame balances Jordan’s left-of-center placement. In the Nike photo, the hoop takes up the entire right border of the frame, highlighting Jordan’s dominant, central position. The hoops are also lit and angled differently toward the viewer, further distinguishing their expressive roles in the photographs.

In our view, these differences in selection and arrangement of elements, as reflected in the photos’ objective details, preclude as a matter of law a finding of infringement. Nike’s photographer made choices regarding selection and arrangement that produced an image unmistakably different from Rentmeester’s photo in material details—disparities that no ordinary observer of the two works would be disposed to overlook. What Rentmeester’s photo and the Nike photo share are similarities in general ideas or concepts: Michael Jordan attempting to dunk in a pose inspired by ballet’s grand jeté; an outdoor setting stripped of most of the traditional trappings of basketball; a camera angle that captures the subject silhouetted against the sky. Rentmeester cannot claim an exclusive right to ideas or concepts at that level of generality, even in combination. Permitting him to claim such a right would withdraw those ideas or concepts from the stock of materials available to other artists, thereby thwarting copyright’s fundamental objective of fostering creativity. Copyright promotes the progress of science and the useful arts by encouraging others to build freely upon the ideas and information conveyed by a work.” Feist, 499 U.S. at 349–50. That is all Nike’s photographer did here.

If the Nike photo cannot as a matter of law be found substantially similar to Rentmeester’s photo, the same conclusion follows ineluctably with respect to the Jumpman logo. The logo is merely a solid black silhouette of Jordan’s figure as it appears in the Nike photo, which, as we have said, differs materially from the way Jordan’s figure appears in Rentmeester’s photo. Isolating that one element from the Nike photo and rendering it in a stylized fashion make the Jumpman logo even less similar to Rentmeester’s photo than the Nike photo itself.

AFFIRMED.

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Check Your Understanding – Rentmeester

Question 1. Which of the following doctrines does the court invoke in arriving at its decision in Rentmeester?

Question 2. In the Ninth Circuit, what role do the extrinsic and intrinsic tests play in proving copyright infringement?

The following decision involves allegations of copyright infringement in the context of a videogame.

Some things to consider when reading Atari:

1. The court’s discussion and application of the test for “substantial similarity” between the copyrighted work and the accused work, which is an element of a cause of action for copyright infringement. Pay particular attention to the role of the ordinary observer in assessing substantial similarity, and the “total concept and feel” test.
2. The court’s application of the “idea-expression dichotomy.”
3. This case provides an example of copyrighted “characters.”
4. The Seventh Circuit does what the Ninth Circuit complained about in Rentmeester, by using the same term—“substantial similarity”—to describe both the degree of similarity relevant to proof of copying and the degree of similarity necessary to establish unlawful appropriation.

Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp.

672 F.2d 607 (7th Cir. 1982)

HARLINGTON WOOD Jr., Circuit Judge.

Plaintiffs-appellants Midway Manufacturing Co. (“Midway”) and Atari, Inc. (“Atari”) instituted this action against defendants-appellees North American Philips Consumer Electronics Corp. (“North American”) and Park Magnavox Home Entertainment Center (“Park”) for copyright infringement of and unfair competition against their audiovisual game “PAC-MAN.” The district court denied plaintiffs’ motion for a preliminary injunction, and this appeal followed.

I. FACTS

Atari and Midway own the exclusive United States rights in PAC-MAN under the registered copyright for the “PAC-MAN audiovisual work.” Midway sells the popular coin-operated arcade version, and Atari recently began to market the home video version. As part of its Odyssey line of home video games, North American developed a game called “K. C. Munchkin” which Park sells at the retail level. Plaintiffs filed this suit alleging that K. C. Munchkin infringes their copyright in PAC-MAN, and that North American’s conduct in marketing K. C. Munchkin constitutes unfair competition in violation of the Illinois Uniform Deceptive Trade Practices Act and the common law. The district court denied plaintiffs’ motion for a preliminary injunction, ruling that plaintiffs failed to show likelihood of success on the merits of either claim.

Because this appeal requires us to make an ocular comparison of the two works, we describe both games in some detail.

A. The Copyrighted Work

The copyrighted version of PAC-MAN is an electronic arcade maze-chase game. Very basically, the game “board,” which appears on a television-like screen, consists of a fixed maze, a central character (expressed as a “gobbler”), four pursuit characters (expressed as “ghost monsters”), several hundred evenly spaced pink dots which line the pathways of the maze, four enlarged pink dots (“power capsules”) approximately located in each of the maze’s four corners, and various colored fruit symbols which appear near the middle of the maze during the play of the game.

Using a “joy stick,” the player guides the gobbler through the maze, consuming pink dots along the way. The monsters, which roam independently within the maze, chase the gobbler. Each play ends when a monster catches the gobbler, and after three plays, the game is over. If the gobbler consumes a power capsule, the roles reverse temporarily: the gobbler turns into the hunter, and the monsters become vulnerable. The object of the game is to score as many points as possible by gobbling dots, power capsules, fruit symbols, and monsters.

The PAC-MAN maze has a slightly vertical rectangular shape, and its geometric configuration is drawn in bright blue double lines. Centrally located on the left and right sides of the maze is a tunnel opening. To evade capture by a pursuing monster, the player can cause the central character to exit through one opening and re-enter through the other on the opposite side. In video game parlance this concept is called a “wraparound.” In the middle is a rectangular box (“corral”) which has a small opening on the upper side. A scoring table, located across the top of the maze, displays in white the first player’s score on the left, the high score to date in the middle, and the second player’s score on the right. If a player successfully consumes all of the dots, the entire maze flashes alternately blue and white in victory, and a new maze, replenished with dots, appears on the screen. When the game ends a bright red “game over” sign appears below the corral.

At the start of the game, the gobbler character is located centrally near the bottom of the maze. That figure is expressed as a simple yellow dot, somewhat larger than the power capsules, with a V-shaped aperture which opens and closes in mechanical fashion like a mouth as it travels the maze. Distinctive “gobbling” noises accompany this action. If fate (or a slight miscalculation) causes the gobbler to fall prey to one of the monsters, the action freezes, and the gobbler is deflated, folding back on itself, making a sympathetic whining sound, and disappearing with a star-burst.

The four monster characters are identical except that one is red, one blue, one turquoise, and one orange. They are about equal in size to the gobbler, but are shaped like bell jars. The bottom of each figure is contoured to stimulate three short appendages which move as the monster travels about the maze. Their most distinctive feature is their highly animated eyes, which appear as large white circles with blue irises and which “look” in the direction the monster is moving. At the start of each play, the monsters are located side-by-side in the corral, bouncing back and forth until each leaves through the opening. Unlike the gobbler, they do not consume the dots, but move in a prearranged pattern about the maze at a speed approximately equal to that of the gobbler. When the gobbler consumes a power capsule and the roles reverse, the monsters panic: a siren-like alarm sounds, they turn blue, their eyes contract into small pink dots, a wrinkled “mouth” appears, and they immediately reverse direction (moving at a reduced speed). When this period of vulnerability is about to end, the monsters warn the player by flashing alternately blue and white before returning to their original colors. But if a monster is caught during this time, its body disappears, and its original eyes reappear and race back to the corral. Once in the corral, the monster quickly regenerates and reenters the maze to resume its pursuit of the gobbler.

B. The Accused Work

North American’s K. C. Munchkin is also a maze-chase game that employs a player-controlled central character (also expressed as a “gobbler”), pursuit characters (also expressed as “ghost monsters”), dots, and power capsules. The basic play of K. C. Munchkin parallels that of PAC-MAN: the player directs the gobbler through the maze consuming dots and avoiding capture by the monsters; by gobbling a power capsule, the player can reverse the roles; and the ultimate goal is to accumulate the most points by gobbling dots and monsters.

K. C. Munchkin’s maze also is rectangular, has two tunnel exits and a centrally located corral, and flashes different colors after the gobbler consumes all of the dots. But the maze, drawn in single, subdued purple lines, is more simple in overall appearance. Because it appears on a home television screen, the maze looks broader than it is tall. Unlike that in PAC-MAN, the maze has one dead-end passageway, which adds an element of risk and strategy. The corral is square rather than rectangular and rotates ninety degrees every two or three seconds, but serves the same purpose as the corral in PAC-MAN. The scoring table is located below the maze and, as in PAC-MAN, has places on the left and right for scores for two players. But instead of simply registering the high score in the middle, the K. C. Munchkin game displays in flashing pink and orange a row of question marks where the high scorer can register his or her name.

The gobbler in K. C. Munchkin initially faces the viewer and appears as a round blue-green figure with horns and eyes. The gobbler normally has an impish smile, but when a monster attacks it, its smile appropriately turns to a frown. As it moves about the maze, the gobbler shows a somewhat diamond-shaped profile with a V-shaped mouth which rapidly opens and closes in a manner similar to PAC-MAN’s gobbler. A distinctive “gobbling” noise also accompanies this movement. When the gobbler stops, it turns around to face the viewer with another grin. If captured by a monster, the gobbler also folds back and disappears in a star-burst. At the start of each play, this character is located immediately above the corral. If successful in consuming the last dot, the munchkin turns to the viewer and chuckles.

K. C. Munchkin’s three ghost monsters appear similar in shape and movement to their PAC-MAN counterparts. They have round bodies (approximately equal in size to the gobbler) with two short horns or antennae, eyes, and three appendages on the bottom. The eyes are not as detailed as those of the PAC-MAN monsters, but they are uniquely similar in that they also “look” in the direction in which the monster is moving. Although slightly longer, the “legs” also move in a centipede-like manner as the monster roams about the maze. The similarity becomes even more pronounced when the monsters move vertically because their antennae disappear and their bodies assume the more bell jar-like shape of the PAC-MAN monsters. Moreover, the monsters are initially stationed inside the corral (albeit in a piggyback rather than a side-by-side arrangement) and exit into the maze as soon as play commences.

K. C. Munchkin’s expression of the role reversal also parallels that in PAC-MAN. When the gobbler consumes one of the power capsules, the vulnerable monsters turn purple and reverse direction, moving at a slightly slower speed. If caught by the gobbler, a monster “vanishes”: its body disappears and only white “eyes” and “feet” remain to indicate its presence. Instead of returning directly to the corral to regenerate, the ghost-like figure continues to wander about the maze, but does not affect the play. Only if the rotating corral happens to open up toward the monster as it travels one of the adjacent passageways will the monster re-enter the corral to be regenerated. This delay in regeneration allows the gobbler more time to clear the maze of dots. When the period of vulnerability is about to end, each monster flashes its original color as a warning.

There are only twelve dots in K. C. Munchkin as opposed to over two hundred dots in PAC-MAN. Eight of those dots are white; the other four are power capsules, distinguished by their constantly changing color and the manner in which they blink. In K. C. Munchkin, the dots are randomly spaced, whereas in PAC-MAN, the dots are uniformly spaced. Furthermore, in K. C.  Munchkin, the dots are rectangular and are always moving. As the gobbler munches more dots, the speed of the remaining dots progressively increases, and the last dot moves at the same speed as the gobbler. In the words of the district court, “the last dot … cannot be caught by overtaking it; it must be munched by strategy.” At least initially, one power capsule is located in each of the maze’s four corners, as in PAC-MAN.

III. COPYRIGHT INFRINGEMENT

To establish infringement a plaintiff must prove ownership of a valid copyright and “copying” by the defendant. Because direct evidence of copying often is unavailable, copying may be inferred where the defendant had access to the copyrighted work and the accused work is substantially similar to the copyrighted work. The parties stipulated to the validity of plaintiffs’ copyright and to access; the district court’s ruling turned solely on the question of substantial similarity.

Some courts have expressed the test of substantial similarity in two parts: (1) whether the defendant copied from the plaintiff’s work and (2) whether the copying, if proven, went so far as to constitute an improper appropriation. See , e.g., Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Our analysis focuses on the second part of that test and the response of the “ordinary observer.” Specifically, the test is whether the accused work is so similar to the plaintiff’s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s protectible expression by taking material of substance and value.  Judge Learned Hand, in finding infringement, once stated that “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.” Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). It has been said that this test does not involve “analytic dissection and expert testimony,” Arnstein, 154 F.2d at 468, but depends on whether the accused work has captured the “total concept and feel” of the copyrighted work, Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1970).

While dissection is generally disfavored, the ordinary observer test, in application, must take into account that the copyright laws preclude appropriation of only those elements of the work that are protected by the copyright. The Copyright Act of 1976 codifies this idea-expression dichotomy. 17 U.S.C. s 102(b). Thus, if the only similarity between plaintiff’s and defendant’s works is that of the abstract idea, there is an absence of substantial similarity and hence no infringement results.

It follows that copyright protection does not extend to games as such. As Professor Nimmer notes, however, “some limited copyright protection is nevertheless available in connection with games…. (A) relatively minimal artistic expression, if original, would render copyrightable … the pattern or design of game boards and playing cards as pictorial or graphic works.” 1 Nimmer s 2.18(H)(3), at 2-212. Recognizing this principle, the Second Circuit has held copyrightable as an audiovisual work, see 17 U.S.C. s 102(a)(6), the “repetitive sequence of a substantial portion of the sights and sounds” of a video game called “SCRAMBLE.” This appeal requires us to address the related question of the scope of copyright protection to be afforded audiovisual games such as PAC-MAN. To do so, we must first attempt to distill the protectible forms of expression in PAC-MAN from the game itself.

There is no litmus paper test by which to apply the idea-expression distinction; the determination is necessarily subjective. As Judge Learned Hand said, “Obviously, no principle can be stated as to when an imitator has gone beyond copying the ‘idea,’ and has borrowed its ‘expression.’ Decisions must therefore inevitably be ad hoc.” Peter Pan Fabrics, 274 F.2d at 489. Courts and commentators nevertheless have developed a few helpful approaches. In Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), Judge Hand articulated what is now known as the “abstractions test”:

Upon any work … a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out…. (T)here is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his “ideas,” to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can…. As respects plays, the controversy chiefly centers upon the characters and sequence of incident, these being the substance.

This “test” has proven useful in analyzing dramatic works, literary works, and motion pictures, where the recurring patterns can readily be abstracted into very general themes

A related concept is that of idea-expression unity: where idea and expression are indistinguishable, the copyright will protect against only identical copying. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971), presents a good example and discussion of this limitation. Plaintiff charged defendants with copyright infringement of a pin in the shape of a bee encrusted with jewels. The court assumed the validity of plaintiff’s copyright, but refused to find substantial similarity:

What is basically at stake is the extent of the copyright owner’s monopoly-from how large an area of activity did Congress intend to allow the copyright owner to exclude others? We think the production of jeweled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an “idea” that defendants were free to copy. Plaintiff seems to agree, for it disavows any claim that defendants cannot manufacture and sell jeweled bee pins and concedes that only plaintiff’s particular design or “expression” of the jeweled bee pin “idea” is protected under its copyright. The difficulty, as we have noted, is that on this record the “idea” and its “expression” appear to be indistinguishable. There is no greater similarity between the pins of plaintiff and defendants than is inevitable from the use of jewel-encrusted bee forms in both.

When the “idea” and its “expression” are thus inseparable, copying the “expression” will not be barred, since protecting the “expression” in such circumstances would confer a monopoly of the “idea” upon the copyright owner free of the conditions and limitations imposed by the patent law.

In the context of literary works, some courts have adopted a similar scenes a faire approach. Scenes a faire refers to “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.”  Such stock literary devices are not protectible by copyright.  Thus, “similarity of expression, whether literal or nonliteral, which necessarily results from the fact that the common idea is only capable of expression in more or less stereotyped form will preclude a finding of actionable similarity.”

As Kalpakian and other cases show, that a work is copyrighted says very little about the scope of its protection. But the Kalpakian case is nonetheless instructive in that it represents one end of a spectrum of protection. As a work embodies more in the way of particularized expression, it moves farther away from the bee pin in Kalpakian, and receives broader copyright protection. At the opposite end of the spectrum lie the “strongest” works in which fairly complex or fanciful artistic expressions predominate over relatively simplistic themes and which are almost entirely products of the author’s creativity rather than concomitants of those themes.

Plaintiffs’ audiovisual work is primarily an unprotectible game, but unlike the bee pin, to at least a limited extent the particular form in which it is expressed (shapes, sizes, colors, sequences, arrangements, and sounds) provides something “new or additional over the idea.” In applying the abstractions test, we find that plaintiffs’ game can be described accurately in fairly abstract terms, much in the same way as one would articulate the rules to such a game. PAC-MAN is a maze-chase game in which the player scores points by guiding a central figure through various passageways of a maze and at the same time avoiding collision with certain opponents or pursuit figures which move independently about the maze. Under certain conditions, the central figure may temporarily become empowered to chase and overtake the opponents, thereby scoring bonus points. The audio component and the concrete details of the visual presentation constitute the copyrightable expression of that game “idea.”

Certain expressive matter in the PAC-MAN work, however, should be treated as scenes a faire and receive protection only from virtually identical copying. The maze and scoring table are standard game devices, and the tunnel exits are nothing more than the commonly used “wrap around” concept adapted to a maze-chase game. Similarly, the use of dots provides a means by which a player’s performance can be gauged and rewarded with the appropriate number of points, and by which to inform the player of his or her progress. Given their close connection with the underlying game, K. C. Munchkin’s maze design, scoring table, and “dots” are sufficiently different to preclude a finding of infringement on that basis alone.

Rather, it is the substantial appropriation of the PAC-MAN characters that requires reversal of the district court. The expression of the central figure as a “gobbler” and the pursuit figures as “ghost monsters” distinguishes PAC-MAN from conceptually similar video games. Other games, such as “Rally-X” (described in Dirkschneider) and North American’s own “Take the Money and Run,” illustrate different ways in which a basic maze-chase game can be expressed. PAC-MAN’s particular artistic interpretation of the game was designed to create a certain impression which would appeal to a nonviolent player personality. The game as such, however, does not dictate the use of a “gobbler” and “ghost monsters.” Those characters are wholly fanciful creations, without reference to the real world.

North American not only adopted the same basic characters but also portrayed them in a manner which made K. C. Munchkin appear substantially similar to PAC-MAN. The K. C. Munchkin gobbler has several blatantly similar features, including the relative size and shape of the “body,” the V-shaped “mouth,” its distinctive gobbling action (with appropriate sounds), and especially the way in which it disappears upon being captured. An examination of the K. C. Munchkin ghost monsters reveals even more significant visual similarities. In size, shape, and manner of movement, they are virtually identical to their PAC-MAN counterparts. K. C. Munchkin’s monsters, for example, exhibit the same peculiar “eye” and “leg” movement. Both games, moreover, express the role reversal and “regeneration” process with such great similarity that an ordinary observer could conclude only that North American copied plaintiffs’ PAC-MAN.

Defendants point to a laundry list of specific differences-particularly the concept of moving dots, the variations in mazes, and certain changes in facial features and colors of the characters-which they contend, and the district court apparently agreed, shows lack of substantial similarity. Although numerous differences may influence the impressions of the ordinary observer, “slight differences between a protected work and an accused work will not preclude a finding of infringement” where the works are substantially similar in other respects.  Exact reproduction or near identity is not necessary to establish infringement. In comparing the two works, the district court focused on certain differences in detail and seemingly ignored (or at least failed to articulate) the more obvious similarities. The sine qua non of the ordinary observer test, however, is the overall similarities rather than the minute differences between the two works. The nature of the alterations on which North American relies only tends to emphasize the extent to which it deliberately copied from the plaintiffs’ work. When analyzing two works to determine whether they are substantially similar, courts should be careful not to lose sight of the forest for the trees.

To assess the impact of certain differences, one factor to consider is the nature of the protected material and the setting in which it appears. Video games, unlike an artist’s painting or even other audiovisual works, appeal to an audience that is fairly undiscriminating insofar as their concern about more subtle differences in artistic expression. The main attraction of a game such as PAC-MAN lies in the stimulation provided by the intensity of the competition. A person who is entranced by the play of the game “would be disposed to overlook” many of the minor differences in detail and “regard their aesthetic appeal as the same.”

The defendants and the district court order stress that K. C. Munchkin plays differently because of the moving dots and the variety of maze configurations from which the player can choose. The focus in a copyright infringement action, however, is on the similarities in protectible expression. Even to the extent that those differences alter the visual impression of K. C. Munchkin, they are insufficient to preclude a finding of infringement. It is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate. Infringement may be found where the similarity relates to matter which constitutes a substantial portion of plaintiffs’ work-i.e., matter which is of value to plaintiffs. It is irrelevant that K. C. Munchkin has other game modes which employ various maze configurations. The only mode that concerns this court is the one that uses a display most similar to the one in PAC-MAN.

Based on an ocular comparison of the two works, we conclude that plaintiffs clearly showed likelihood of success. Although not “virtually identical” to PAC-MAN, K. C. Munchkin captures the “total concept and feel” of and is substantially similar to PAC-MAN. This case is a far cry from those in which the defendant appropriated only the game idea, but adopted its own unique form of expression.

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Check Your Understanding – Atari

Question 1. Which of the following doctrines does the court invoke in arriving at its decision in Atari?

Question 2. Why did the Seventh Circuit reverse the district court’s conclusion that Atari had failed to show a likelihood of success in proving that K.C. Munchkin infringed its copyright in PAC-MAN?

In the following decision, J.K. Rowling, creator of the Harry Potter series, accuses a fan of copyright infringement.

Some things to consider when reading Warner Bros.:

1. The plaintiffs include J.K. Rowling, and the accused infringer has created a “Lexicon” of her copyrighted Harry Potter books that copies substantially from the books.¹ Why does the court reject the defendant’s argument that he has only copied “facts” from the Harry Potter books?
2. Originally the plaintiffs seemed to have no problem with the Lexicon. Why did that change?

Warner Bros. Entm’t Inc. v. RDR Books

575 F. Supp. 2d 513 (S.D.N.Y. 2008)

ROBERT P. PATTERSON, JR., District Judge.

On October 31, 2007, Plaintiffs Warner Bros. Entertainment Inc. and J.K. Rowling commenced this action against Defendant RDR Books, alleging copyright infringement as well as several other federal and state claims, and seeking both injunctive relief and damages. The Court held a bench trial on the merits from April 14, 2008 to April 17, 2008. This opinion constitutes the Court’s findings of fact and conclusions of law.

FINDINGS OF FACT

I. The Copyrighted Works

Plaintiff J.K. Rowling (“Rowling”) is the author of the highly acclaimed Harry Potter book series. Written for children but enjoyed by children and adults alike, the Harry Potter series chronicles the lives and adventures of Harry Potter and his friends as they come of age at the Hogwarts School of Witchcraft and Wizardry and face the evil Lord Voldemort. It is a tale of a fictional world filled with magical spells, fantastical creatures, and imaginary places and things.

As a result of the success of the Harry Potter books, Plaintiff Warner Bros. Entertainment Inc. (“Warner Brothers”) obtained from Rowling the exclusive film rights to the entire seven-book Harry Potter series. To date, Warner Brothers has released five Harry Potter films, and the sixth is scheduled for a worldwide release in November 2008. Each of the Harry Potter films is the subject of a copyright registration. Warner Brothers licensed certain rights to Electronic Arts to create video games based on the Harry Potter books and films, which included a series of “Famous Wizard Cards” that Rowling created and which are the subject of U.S. copyright registrations jointly owned by Warner Brothers and Electronic Arts.

Rowling has stated on a number of occasions since 1998 that she plans to publish a “Harry Potter encyclopedia” after the completion of the series and donate the proceeds to charity. While she intends to add new material as well, her encyclopedia is expected to reflect all of the information in the Harry Potter series. Rowling already has begun preparations for work on the encyclopedia by assembling her materials and requesting from her U.K. publisher its “bible” of Harry Potter materials. The publisher’s “bible” is a catalogue of the people, places, and things from the Harry Potter books. Rowling’s U.S. publisher has compiled a similar catalogue of elements from the Harry Potter books which Rowling has requested and intends to draw on in creating her encyclopedia.

II. The Allegedly Infringing Work

Defendant RDR Books is a Michigan-based publishing company that seeks to publish a book entitled “The Lexicon,” the subject of this lawsuit. Steven Vander Ark, a former library media specialist at a middle school in Michigan, is the attributed author of the Lexicon. He is also the originator, owner, and operator of “The Harry Potter Lexicon” website, a popular Harry Potter fan site from which the content of the Lexicon is drawn.

A. The Origins of the Lexicon

An immediate fan of the Harry Potter novels, Vander Ark began taking personal notes to keep track of the details and elements that unfold in the Harry Potter world while reading the second book in the series in 1999. After joining an online discussion group about the Harry Potter books, Vander Ark expanded his notes to include descriptive lists of the spells, characters, and fictional objects in Harry Potter to share with fellow fans. These lists included brief descriptions or definitions of the terms.

Vander Ark began work on his website, “The Harry Potter Lexicon” (the “website” or “Lexicon website”), in 1999 and opened the website in 2000. His purpose in establishing the website was to create an encyclopedia that collected and organized information from the Harry Potter books in one central source for fans to use for reference. At its launch, the website featured Vander Ark’s descriptive lists of spells, characters, creatures, and magical items from Harry Potter with hyperlinks to cross-referenced entries. In response to feedback from users of the website, Vander Ark developed an A-to-Z index to each list to allow users to search for entries alphabetically.

The website presently features several indexed lists of people, places, and things from Harry Potter, including the “Encyclopedia of Spells,” “Encyclopedia of Potions,” “Wizards, Witches, and Beings,” “The Bestiary,” and “Gazetteer of the Wizarding World.” In addition to these reference features, the website contains a variety of supplemental material pertaining to Harry Potter, including fan art, commentary, essays, timelines, forums, and interactive data. The website is currently run by a staff of seven or eight volunteers, including four primary editors, all of whom were recruited to help update and expand the website’s content after the publication of the fifth book in the Harry Potter series. The website uses minimal advertising to offset the costs of operation. Use of the website is free and unrestricted.

The content of the encyclopedia entries on the Lexicon website is drawn primarily from the Harry Potter series.

Vander Ark has received positive feedback, including from Rowling and her publishers, about the value of the Lexicon website as a reference source. In May 2004, Vander Ark read a remark by Rowling posted on her website praising his Lexicon website as follows: “This is such a great site that I have been known to sneak into an internet cafe while out writing and check a fact rather than go into a bookshop and buy a copy of Harry Potter (which is embarrassing). A website for the dangerously obsessive; my natural home.” In July 2005, Vander Ark received a note from Cheryl Klein, a Senior Editor at Scholastic Inc., American publisher of the Harry Potter series, thanking him and his staff “for the wonderful resource [his] site provides for fans, students, and indeed editors & copyeditors of the Harry Potter series,” who “referred to the Lexicon countless times during the editing of [the sixth book in the series], whether to verify a fact, check a timeline, or get a chapter & book reference for a particular event.” In September 2006, Vander Ark was invited by Warner Brothers to the set of the film The Order of the Phoenix, where he met David Heyman, the producer of all the Harry Potter films. Heyman told Vander Ark that Warner Brothers used the Lexicon website almost every day. Finally, in July 2007, Vander Ark visited the studios of Electronic Arts, the licensed producer of the Harry Potter video games, where he observed printed pages from the Lexicon covering the walls of the studio.

B. RDR Books’ Acquisition and Marketing of the Lexicon

Roger Rapoport is the president of Defendant RDR Books. Rapoport learned of Vander Ark and the Lexicon website when he read an article in his local newspaper dated July 23, 2007, profiling Vander Ark as a well known figure within the Harry Potter fan community and the proprietor of the Lexicon website who “holds the key to all things ‘Harry Potter.’ Recognizing a publishing opportunity, Rapoport contacted Vander Ark on August 6, 2007 about the possibility of publishing a Harry Potter encyclopedia based on some of the materials from the Lexicon website.

At his first meeting with Rapoport in August 2007, Vander Ark raised his concerns regarding the permissibility of publishing the Lexicon in view of Rowling’s plan to publish an encyclopedia and her copyrights in the Harry Potter books. Prior to August 2007, Vander Ark had developed and circulated the opinion that publishing “any book that is a guide to [the Harry Potter ] world” would be a violation of Rowling’s intellectual property rights. Vander Ark had even stated on a public internet newsgroup that he would not publish the Lexicon “in any form except online” without permission because Rowling, not he, was “entitled to that market.” Vander Ark changed his mind about publishing the Lexicon after Rapoport reassured him that he had looked into the legal issue and determined that publication of content from the Lexicon website in book form was legal. Rapoport agreed to stand by this opinion by adding an atypical clause to the publishing contract providing that RDR would defend and indemnify Vander Ark in the event of any lawsuits.

Rapoport and Vander Ark agreed that the content of the book would be limited to the encyclopedia sections of the Lexicon website that presented descriptions of the persons, places, spells, and creatures from the Harry Potter works.

D. The Content of the Lexicon

The Lexicon is an A-to-Z guide to the creatures, characters, objects, events, and places that exist in the world of Harry Potter. The Lexicon itself makes clear that the only source of its content is the work of J.K. Rowling. The first page of the Lexicon manuscript states: “All the information in the Harry Potter Lexicon comes from J.K. Rowling, either in the novels, the ‘schoolbooks,’ from her interviews, or from material which she developed or wrote herself.”

The Lexicon entries cull every item and character that appears in the Harry Potter works, no matter if it plays a significant or insignificant role in the story. The entries cover every spell (e.g., Expecto Patronum, Expelliarmus, and Incendio), potion (e.g., Love Potion, Felix Felicis, and Draught of Living Death), magical item or device (e.g., Deathly Hallows, Horcrux, Cloak of Invisibility), form of magic (e.g., Legilimency, Occlumency, and the Dark Arts), creature (e.g., Blast-Ended Skrewt, Dementors, and Blood-Sucking Bugbears), character (e.g., Harry Potter, Hagrid, and Lord Voldemort), group or force (e.g., Aurors, Dumbledore’s Army, Death Eaters), invented game (e.g., Quidditch), and imaginary place (e.g., Hogwarts School of Witchcraft and Wizardry, Diagon Alley, and the Ministry of Magic) that appear in the Harry Potter works.

Each entry, with the exception of the shortest ones, gathers and synthesizes pieces of information relating to its subject that appear scattered across the Harry Potter novels, the companion books, The Daily Prophet newsletters, Famous Wizard Cards, and published interviews of Rowling. The snippets of information in the entries are generally followed by citations in parentheses that indicate where they were found within the corpus of the Harry Potter works.

Although it is difficult to quantify how much of the language in the Lexicon is directly lifted from the Harry Potter novels and companion books, the Lexicon indeed contains at least a troubling amount of direct quotation or close paraphrasing of Rowling’s original language. The Lexicon occasionally uses quotation marks to indicate Rowling’s language, but more often the original language is copied without quotation marks, often making it difficult to know which words are Rowling’s and which are Vander Ark’s.

For example, in the entry for “armor, goblin made,” the Lexicon uses Rowling’s poetic language nearly verbatim without quotation marks. The original language from Harry Potter and the Deathly Hallows reads:

“Muggle-borns,” he said. “Goblin-made armour does not require cleaning, simple girl. Goblins’ silver repels mundane dirt, imbibing only that which strengthens it.”

The Lexicon entry for “armor, goblin made” reads in its entirety:

Some armor in the wizarding world is made by goblins, and it is quite valuable. (e.g., HBP20) According to Phineas Nigellus, goblin-made armor does not require cleaning, because goblins’ silver repels mundane dirt, imbibing only that which strengthens it, such as basilisk venom. In this context, “armor” also includes blades such as swords.

Although the Lexicon entry introduces Rowling’s language with the phrase, “According to Phineas Nigellus,” it does not use quotation marks.

The Lexicon entry for “Dementors” reproduces Rowling’s vivid description of this creature sometimes using quotation marks and sometimes quoting or closely paraphrasing without indicating which language is original expression. The original language appears in Chapters 5 and 10 of Harry Potter and the Prisoner of Azkaban as follows:

… Its face was completely hidden beneath its hood…. There was a hand protruding from the cloak and it was glistening, grayish, slimy-looking, and scabbed, like something dead that had decayed in water….

And then the thing beneath the hood, whatever it was, drew a long, slow, rattling breath, as though it were trying to suck something more than air from its surroundings.

* * *

“Dementors are among the foulest creatures to walk this earth. They infest the darkest, filthiest places, they glory in decay and despair, they drain peace, hope, and happiness out of the air around them. Even Muggles feel their presence, though they can’t see them. Get too near a dementor and every good feeling, every happy memory will be sucked out of you. If it can, the dementor will feed on you long enough to reduce you to something like itself … soulless and evil….”

The Lexicon entry for “Dementors” reads in its entirety:

Dementors are some of the most terrible creatures on earth, flying tall black spectral humanoid things with flowing robes. They “infest the darkest, filthiest places, they glory in decay and despair, they drain peace, hope, and happiness out of the air around them,” according to Lupin (PA10). Dementors affect even Muggles, although Muggles can’t see the foul, black creatures. Dementors feed on positive human emotions; a large crowd is like a feast to them. They drain a wizard of his power if left with them too long. They were the guards at Azkaban and made that place horrible indeed. The Ministry used Dementors as guards in its courtrooms as well (GF30, DH13). There are certain defenses one can use against Dementors, specifically the Patronus Charm. A Dementor’s breath sounds rattling and like it’s trying to suck more than air out of a room. Its hands are “glistening, grayish, slimy-looking, and scabbed”. It exudes a biting, soul-freezing cold (PA5).

CONCLUSIONS OF LAW

B. Copying

There is no dispute that the Lexicon actually copied from Rowling’s copyrighted works. Vander Ark openly admitted that he created and updated the content of the Lexicon by taking notes while reading the Harry Potter books and by using without authorization scanned, electronic copies of the Harry Potter novels and companion books. While acknowledging actual copying, Defendant disputes that the copying amounts to an improper or unlawful appropriation of Rowling’s works. Defendant argues that Plaintiffs fail to establish a prima facie case of infringement because they have not shown that the Lexicon is substantially similar to the Harry Potter works.

The appropriate inquiry under the substantial similarity test is whether the copying is quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred. The quantitative component addresses the amount of the copyrighted work that is copied, while the qualitative component addresses the copying of protected expression, as opposed to unprotected ideas or facts.

In evaluating the quantitative extent of copying in the substantial similarity analysis, the Court considers the amount of copying not only of direct quotations and close paraphrasing, but also of all other protectable expression in the original work. Where, as here, the copyrighted work is wholly original, rather than mixed with unprotected elements, a lower quantity of copying will support a finding of substantial similarity.

Plaintiffs have shown that the Lexicon copies a sufficient quantity of the Harry Potter series to support a finding of substantial similarity between the Lexicon and Rowling’s novels. The Lexicon draws 450 manuscript pages worth of material primarily from the 4,100-page Harry Potter series. Most of the Lexicon’s 2,437 entries contain direct quotations or paraphrases, plot details, or summaries of scenes from one or more of the Harry Potter novels. Although hundreds of pages or thousands of fictional facts may amount to only a fraction of the seven-book series, this quantum of copying is sufficient to support a finding of substantial similarity where the copied expression is entirely the product of the original author’s imagination and creation.

As to the qualitative component of the substantial similarity analysis, Plaintiffs have shown that the Lexicon draws its content from creative, original expression in the Harry Potter series and companion books. Each of the 2,437 entries in the Lexicon contains “fictional facts” created by Rowling, such as the attributes of imaginary creatures and objects, the traits and undertakings of major and minor characters, and the events surrounding them. The entry for “Boggart,” for example, contains the fictional facts that a boggart is “[a] shape shifter that prefers to live in dark, confined spaces, taking the form of the thing most feared by the person it encounters; nobody knows what a boggart looks like in its natural state,” and that “Lupin taught his third year Defence Against the Dark Arts class to fight [a boggart] with the Riddikulus spell (PA7), and used a boggart as a substitute for a Dementor in tutoring Harry (PA12).”

In Castle Rock Entertainment Inc. v. Carol Publishing Group, Inc., the Second Circuit explained that such invented facts constitute creative expression protected by copyright because “characters and events spring from the imagination of [the original] authors.” 150 F.3d at 139; see also Paramount Pictures Corp. v. Carol Publ’g Group, 11 F.Supp.2d 329, 333 (S.D.N.Y.1998) (stating that “[t]he characters, plots and dramatic episodes” that comprise the story of the “fictitious history of Star Trek” are the story’s “original elements,” protected by copyright). The Castle Rock court held that a trivia book which tested the reader’s knowledge of “facts” from the Seinfeld series copied protected expression because “each ‘fact’ tested by [the trivia book] is in reality fictitious expression created by Seinfeld’ s authors.” It follows that the same qualitative conclusion should be drawn here, where each “fact” reported by the Lexicon is actually expression invented by Rowling.

It is clear that the plotlines and scenes encapsulated in the Lexicon are appropriated from the original copyrighted works. Under these circumstances, Plaintiffs have established a prima facie case of infringement.

__________

Check Your Understanding – Warner Bros.

Question 1. True or false: In a case in which actual copying is undisputed, the test for improper or unlawful appropriation is whether the amount of copying that has occurred is sufficient, both in terms of quantity and quality, to support a legal conclusion of infringement.

Question 2. In Warner Bros. Entm’t Inc., why did the district court conclude that the plaintiff had established a prima facie case of infringement?

In the next case, the shoe is on the other foot, with J.K. Rowling standing accused of infringing the copyright of an earlier, but much less popular, literary work directed primarily towards an audience of children.

Some things to consider when reading Allen:

1. The plaintiff’s copyrighted work in this case is Livid Land, a book about a wizard who participates in a contest in which he competes against other wizards. The accused work is Goblets of Fire, a very successful book from J.K. Rowling’s Harry Potter series. Goblets of Fire is also a story about a wizard, Harry Potter, who also participates in a contest in which he competes against other wizards. The question is whether a reasonable juror could find a substantial similarity between the two books.
2. Note the variety of different aspects of the books that the court analyzes, such as theme, characters, pace, and setting, as well as total concept and feel.

Allen v. Scholastic Inc.

739 F. Supp. 2d 642 (S.D.N.Y. 2011)

SHIRA A. SCHEINDLIN, District Judge:

I. INTRODUCTION

Paul Gregory Allen, in his capacity as the trustee of the estate of Adrian Jacobs, brings a claim for copyright infringement against defendant Scholastic Inc. (“Scholastic”) relating to its 2000 publication in the United States of J.K. Rowling’s Harry Potter and the Goblet of Fire (“Goblet of Fire ”). Plaintiff alleges that Goblet of Fire unlawfully used protected expressions from The Adventures of Willy the Wizard—No 1 Livid Land (“Livid Land ”), a work authored by Jacobs and published in the United Kingdom in 1987. In response, defendant now moves to dismiss the complaint on the ground that no reasonable juror could find a substantial similarity between the two books. For the reasons set forth below, defendant’s motion is granted in its entirety.

II. BACKGROUND

Because determining whether substantial similarity exists requires courts to engage in a detailed examination of the works themselves, I begin with an overview of Livid Land and Goblet of Fire.

A. Livid Land

1. General Overview

Livid Land tells the story of an adult wizard named Willy who participates in “the year of the wizards’ contest” for the chance to win life membership in “Stellar Land [, e]very wizard’s dream of retirement.” The thirty-two page book consists of sixteen pages of text by Jacobs, and sixteen pages of accompanying color illustrations by Nick Tidman.

2. The Protagonist

Willy has shoulder-length blond hair, blue eyes, a beard, and a long Pinocchio-like nose. His wardrobe consists of a hoop earring, a floor length tunic, pointy Aladdin-type shoes, and a bent, cone-shaped hat. Willy was raised in Switzerland by his father, an “angelsmith” who “had a contract with God [that] gave him the exclusive monopoly [to perform repairs] on all angel defects.” When he was fourteen years old, he was “given the Book of Secrets with directions as to his initiation into Wizardry” and became the first wizard in the country. After completing Wizard’s college, Willy moved to a private “new community in Memories Hideaway,” which he created by abducting and casting a memory spell on twenty-five tourists from the same family, spiriting away their bodies, and leaving their frozen empty clothes standing erect to scare others away. Willy’s privacy was subsequently ensured as news of the missing tourists spread across Europe, and the town containing Memories Hideaway was renamed from Village Romantic to Village Remorse.

Inside Memories Hideaway, the abducted tourists happily run an angel repair shop, a gourmet chocolate factory, and a brewery, “activities which Willy encouraged, fostered and turned into profitable cottage industries” to meet the high “expenses of running his domain.” Their  “children had grown, married, begot children” and together they constitute a thriving, contented community. Several apprentice wizards—Tinken, Taylor, Solydar, and Delight—also reside in Magical Hideaway, and bestowed upon Willy an “elaborate factory … in protest at the conditions in which they had formerly worked.”

3. The Plot

The story begins as Willy travels to a wizard’s conference held at Napoleon’s Castle, which is reached by a “velvet ladder” dangling from the sky. As Willy enters the “great hall” of the castle, he encounters a “dramatic scene.” The space is overrun with wizards of all races and nationalities, and as Willy “realizes the immensity of the Wizard brotherhood” for the first time, he is “frightened at the power it can muster.” Willy is also terrified by the sight of a “large white banner printed in giant letters” declaring that spell-casting is forbidden inside the castle, and that violators will be banished to the much dreaded Treatment Island—particularly as he had just jokingly considered turning all the wizards into lizards.

The conference itself is a brief affair. A French wizard named Wizard Duke Louis Dix–Sept, whose head is made invisible in order to prevent the “largely uncontrollable assassination spell” invoked by “gathering[s] of more than twenty,” emerges from a carriage to inaugurate the year-long wizards’ tournament and instructs the attendees that they “will be given details of the competitions, prizes and penalties.” Thereafter, the wizards immediately disperse, because they have “to be away from the castle environs in ten minutes.” Willy uses an invisible flying swan taxi and magic powder from a gold snuff box to transport himself home to Memories Hideaway.

Upon his return, Willy sits in his “yellow bathroom-cum-study [, where] he [does] his best thinking,” soaks in a special water additive available only to five star wizards, and turns on a slide-out screen that emerges from the flat wall before him. After he feeds in the contest details provided at the conference, the text is magically magnified and reads: “GAIN ENTRANCE TO LIVID LAND! AND RELEASE FEMALE PRISONERS FROM ANGRY SAM’S COMPOUND. FORTY POINTS AWARDED FOR EACH PRISONER RESCUED.” Wizards who obtain more than one thousand stars receive the coveted grand prize, admission to Stellar Land.

Willy immediately orders his apprentices to brief him on Livid Land by beaming them his thoughts. From them, he learns that Livid Land is an island off the tip of Papua that is inhabited by Kanganatives, beings with the torsos of humans and the legs of kangaroos. Access to Livid Land is severely restricted and virtually impossible—unauthorized visitors have to penetrate the Sky–to–Ocean barrier and supply the secret password, which is changed each month. There is, however, an unguarded underground tunnel accessible from the ocean floor that is big enough only for Kanga Pygmies and, luckily, Willy’s “miniature midget elves.” Aided by the seven swiftest Angels in Heavenland, Willy dispatches the Pixie Elf Brigade—Bimbo–Sad–Eyes, Botticello, and Simple Elf—to the island to uncover the secret password, which they manage to do by spying on the Kanganatives. Sitting at home in Ali Baba’s chair, Willy is “frequentized into vision acute” and, through the “clarity-waves” transmitted from the Island, can see the Pixie Elf Brigade in real-time as they learn that the password is FURY. Having completed their mission, the Pixie Elf Brigade, with the exception of Bimbo–Sad–Eyes, is picked up by Anna Eagle and flown back to Memories Hideaway.

Disguised as a “blue rarebit,” a creature avoided by Kanganatives as bad luck, Bimbo–Sad–Eyes is able to remain on Livid Land to coordinate the escape of ten female prisoners. Bimbo–Sad–Eyes learns that Kanganatives are addicted to chocolate, and transmits the information to Willy through the Quebec Communicator attached from his whiskers to his left nostril. After pondering for three days, Willy hatches a plan, OPERATION DIVERT, to release the prisoners; the plan is based on an idea devised by a visitor to his chocolate factory to boost Willy’s chocolate sales. Willy enlists the help of Angel Leader Halo Perfectus and his meteorological experts to make sleep-inducing chocolate rain pour over Livid Land and enchant the Kanganatives. As the Kanganatives sleep, the coquettish Apprentice Delight is dispatched to the island in order to charm the prison-guard while Bimbo–Sad–Eyes releases the ten female prisoners. Using the secret password, the group is easily able to leave Livid Land as Willy watches from his Ali Baba chair, happy and relaxed now that “[he] had won his particular wizard’s test and the ladies were free.”

B. Goblet of Fire

1. General Overview

Goblet of Fire is the fourth book in an international, award-winning, and best selling seven-book series written by English author J.K. Rowling. The series follows the adventures of a famous young wizard named Harry Potter from the time that he learns of his powers at age eleven until the end of his adolescence. Goblet of Fire chronicles Harry’s participation in a tournament between rival magic schools when he is fourteen years old. The book itself is 734 pages, almost all of which are entirely text; the only illustrations are small charcoal images set above the title of every new chapter.

2. The Protagonist

Harry is a “skinny boy of fourteen” with large round glasses, “bright green eyes and untidy black hair.” When Harry was a year old, his mother and father were killed by Lord Voldemort (“Voldemort”), “the most powerful Dark wizard for a century.” Voldemort had attempted to kill Harry as well, but “the curse that had disposed of many full-grown witches and wizards in [Voldemort’s] steady rise to power” over the past eleven years had mysteriously failed. Instead of killing Harry, it “rebounded upon Voldemort … [and] reduced [him] to something barely alive,” forcing him to flee and lifting “the terror in which the secret community of witches and wizards had lived for so long.” Harry was left only with a distinctive scar on his forehead shaped like a bolt of lightning, and became immediately famous in hidden wizarding world—even as he himself was unaware of its existence or his own magical origins.

Because Harry was raised by his non-magical, or “Muggle,” aunt and uncle (the “Dursleys”), who “despised magic in any form,” Harry did not learn that he was a wizard until his eleventh birthday, when he was admitted to the Hogwarts School of Witchcraft and Wizardry (“Hogwarts”), a boarding school for young wizards in training. Harry’s time at Hogwarts provides a happy reprieve from the mean-spirited Dursleys, who consider him to be “about as welcome … as dry rot” in their home and who generally strive to make him as “miserable as possible.” At Hogwarts, Harry has two best friends, Ron Weasley and Hermione Granger, from whom he is inseparable, and a headmaster, Professor Albus Dumbledore (“Dumbledore”), in whom he can confide.

Hogwarts is housed in a huge, sprawling castle that cannot be seen or located by Muggles. The primary means of transportation to Hogwarts Castle is the Hogwarts Express, “a gleaming scarlet steam engine” that leaves from a magical platform found between “the apparently solid barrier dividing platforms nine and ten” in a regular train station. The most distinguished feature of the castle is the Great Hall, a “splendid [space] … gleamed by the light of hundreds and hundreds of candles” and host to any newsworthy event at the school.

3. The Plot

Goblet of Fire opens during the summer holiday preceding Harry’s fourth-year of Hogwarts, with several premonitions that the murderous Voldemort has returned and is planning to kill Harry. The sense of vague apprehension is tempered, however, by the promise of a great surprise awaiting the students of Hogwarts. As the students gather in the Great Hall to inaugurate the new term, Dumbledore announces that Hogwarts will host the Tri–Wizard Tournament (“Tournament”), an inter-scholastic competition in which one representative, or “champion,” from each of the “three largest European schools of wizardry” competes in three magical tasks for “the Triwizard Cup, the glory of their school, and a thousand Galleons personal prize money.” The Tournament consists of three surprise tasks that will take place over the school year, which are designed to test the champions’ “magical prowess—their daring—their powers of deduction—and of course, their ability to cope with danger.” A five-judge panel will award marks based on performance in each task, and “the champion with the highest total after task three will win.”

Dumbledore explains that the seven-hundred year old Tournament has been suspended for several centuries due to an alarmingly high champion death toll, but is being reinstated in light of new safety precautions that should “ensure that this time, no champion would find himself or herself in mortal danger.” Chief among these is a strict age restriction barring contenders under age seventeen, a “measure [considered to be] necessary, given that the tournament tasks will still be difficult and dangerous, whatever precautions [are taken], and it is highly unlikely that [younger] students … will be able to cope with them.” Dumbledore instructs the students that champions will be impartially selected by a goblet “full to the brim with dancing blue-white flames,” that will shoot out a “charred piece of parchment” naming the most worthy eligible volunteer from each school.

Although Harry is underage and does not submit his name for consideration, he is mysteriously named as champion in the Tournament, along with three other students—including Cedric Diggory, the intended Hogwarts representative. Harry is suspicious that his participation is the result of sinister manipulation by Voldemort, and intended to ensure his demise. Harry’s fear is shared by his Defense Against the Dark Arts professor, Alastor Moody (“Professor Moody”), who is certain that the contest has been manipulated by the forces of Dark Wizardry. Nonetheless, because “[t]he placing of [a student’s] name in the goblet constitutes a binding, magical contract,” Harry is obligated to compete despite the great personal risk in doing so. Harry’s unease is exacerbated by the alienation he feels from his peers, as only Hermione and his professors believe that he did not volunteer for the Tournament. The vast majority of Hogwarts students—including Ron—are angered by Harry’s perceived audacity and envious of his inclusion in the competition. Moreover, Harry’s competitors suspect that the contest has unfairly been rigged to allow Hogwarts an extra opportunity to attain victory, and are very aggrieved that there are four competitors instead of the intended three.

The first task involves recovering a golden egg guarded by a dragon. Harry learns the nature of the challenge in advance from Hagrid, his professor and friend, and, correctly assuming that Cedric will be the only competitor not similarly forewarned, shares the information with him in the interest of fairness. Harry must confront the Hungarian Horntail, the most dangerous and belligerent of the four dragons that the competitors are paired up with. Based upon a hint from Professor Moody, Harry completes the task by relying on the flying skills he cultivated while playing Quidditch, a wizard sport involving flying broomsticks. He is awarded forty out of fifty points from the judges, and ties for first place. Harry does not care about winning the round, but he is surprised and thrilled by the crowd’s support for him, realizing that “[w]hen it had come down to it, when they had seen what he was facing, most of the school had been on his side as well as Cedric’s.” Harry is most overjoyed that his struggle with the dragon led Ron to realize that he did not volunteer for the tournament, and ended the tension between them.

The second task requires the champions to solve the clue hidden in the retrieved egg. When Harry opens the egg, however, he is greeted only by an incomprehensible “loud and screechy wailing.” Preferring to focus his energies on the upcoming school dance and daydreaming about his crush, Harry puts off making sense of the clue until he receives some unexpected assistance. In gratitude for Harry’s help with the first task, Cedric advises him to take a bath with the egg in the prefects’ bathroom, a “magnificent” space with a bathtub the size of a swimming pool. After Moaning Myrtle, the resident bathroom ghost, clarifies that he should hold the egg under water, Harry is able to hear a riddle revealing the second task. He learns that he will have to recover something “[he’ll] surely miss”—which turns out to be Ron—from a community of merpeople, human-mermaid hybrids who live at the bottom of a lake on the school grounds.

Harry spends the next several weeks fruitlessly researching how to breathe underwater with Hermione and Ron. Finally, on the day of the task, a house elf named Dobby provides Harry with a solution in the form of gillyweed, a magical plant that enables him to grow gills. Harry reaches the bottom of the lake first and discovers that, in addition to Ron, three other students are waiting to be rescued by the champions. Incorrectly believing that the students will otherwise be harmed, Harry waits for the other champions to arrive to ensure that everyone is retrieved from the lake. When one champion fails to appear, Harry exceeds the allotted time limit and specified scope of the task in order to pull both Ron and the remaining student from the water. Nonetheless, he is awarded forty-five out of fifty points for his “moral fiber” and comes in second place.

The third and final task appears to be “very straightforward”—the Triwizard Cup is placed in the center of a maze filled with magical obstacles, and the first champion to touch it will be named the Tournament winner. Harry and Cedric help each other navigate the labyrinth, reach the finish line before the other champions, and decide to take hold of the Triwizard Cup at the same time to tie the competition. The task, however, turns out to be a trap—upon touching the trophy, they are transported to a graveyard and find themselves face-to-face with Voldemort and his servant Wormtail, who immediately kills Cedric.

Harry must then battle Voldemort, who has used some of Harry’s own blood to restore his strength and the full scope of his powers. As they duel, a beam of light mysteriously connects their wands, causing the ghosts of Voldemort’s victims to appear. The ghosts are able to momentarily divert Voldemort’s attention, giving Harry just enough time to grab Cedric’s body and escape Voldemort’s fatal blow through the Portkey, a magical teleporting device, that transports him back to Hogwarts. Once he is back at school, Harry is whisked by someone who appears to be Professor Moody, but is actually Voldemort’s most zealous supporter, Barty Crouch Jr. (“Barty”), in disguise. Barty boasts that, at Voldemort’s direction, he entered Harry into the Tournament and subsequently “guid[ed him] through the tasks” to ensure that Harry would reach the Triwizard Cup first and fall prey to Voldemort’s trap—knowing that Hagrid, Cedric, and Dobby would help Harry, he planted the information they shared with him regarding the Tournament tasks. Dumbledore realizes that Harry is in danger just in the nick of time, and saves Harry’s life.

Because Cedric has been killed, Harry is awarded all of the prize money for winning the Tournament. Although he offers it to Cedric’s parents, they refuse to take it and he gives it to Ron’s older twin brothers to realize their dream of opening a wizard joke shop. The story ends as a more somber and mature Harry travels back home to the Dursleys for his summer vacation.

III. APPLICABLE LAW

B. Copyright Infringement

To prevail on a claim of copyright infringement, the plaintiff must demonstrate both (1) ownership of a valid copyright and (2) infringement of the copyright by the defendant. The second element is further broken down into two components: a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a substantial similarity exists between the defendant’s work and the protectible elements of plaintiff’s. Because direct evidence is seldom available to prove actual copying, a plaintiff may fulfill this requirement with indirect evidence. To this end, copying may be established circumstantially by demonstrating that the person who composed the defendant’s work had access to the copyrighted material and that there are similarities between the two works that are probative of copying. Then, to give rise to copyright infringement, the plaintiff must demonstrate that the similarity concerns protected elements of the work at issue. In other words, to be actionable, the alleged similarities must arise from protected aesthetic expressions original to the allegedly infringed work, rather than something in the original that is free for the taking. The law is clear that a copyright does not protect an idea, but only the expression of an idea, and therefore scenes a faire, sequences of events that necessarily result from the choice of a setting or situation, do not enjoy copyright protection.

Substantial similarity exists only when it is protected expression in the earlier work that was copied and the amount that was copied is more than de minimis. The standard test for substantial similarity between two items is whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal as the same. Under this so-called “ordinary observer test,” the essential question is whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. Where the allegedly infringing work contains both protectible and non-protectible elements, however, the usual ordinary observer test becomes more discerning, and requires the Court to attempt to extract the unprotectible elements from consideration and ask whether the protectible elements, standing alone, are substantially similar. Under either test, a court is not to dissect the works at issue into separate components and compare only the copyrightable elements. Instead, the inquiry is principally guided by comparing the contested work’s total concept and overall feel with that of the allegedly infringed work, as instructed by a reader’s good eyes and common sense.

When a court is called upon to consider whether the works are substantially similar, no discovery or fact-finding is typically necessary, because what is required is only a visual comparison of the works. Thus, while the question of substantial similarity often presents a close issue of fact that must be resolved by a jury, district courts may determine non-infringement as a matter of law either because the similarity between two works concerns only non-copyrightable elements of the plaintiff’s work, or because no reasonable jury, properly instructed, could find that the two works are substantially similar.

IV. DISCUSSION

For purposes of this motion, defendant concedes that plaintiff has a valid copyright in Livid Land and that actual copying occurred. The operative question is thus whether a substantial similarity exists between Goblet of Fire and the protectible elements of Livid Land. Because a court examines the similarities between the two literary works in such aspects as the total concept and feel, theme, characters, plot, sequence, pace and setting of the works, I address each of these features in turn.

However, because the copyright infringement analysis requires direct inspection of the works in question, it is appropriate to include a representative excerpt from each book in support of my conclusion of no infringement. Thus, the opening scenes of both Goblet of Fire and Livid Land are set forth below. These excerpts convey the stark differences between the works far more convincingly than any description, and provide useful context for the ensuing discussion.

A. Source Excerpts

1. Livid Land

Willy the Wizard contemplated his elaborate laboratory. It had been a gift from Tinken, Taylor and Soldyar. They were his apprentice wizards and the gift was in protest at the conditions in which they had formerly worked. They loved all the gleaming apparatus. The whole thing positively bored him.

‘Ugh.’

He tapped the pipe leading to a tall retort. He hadn’t realized it was his number two magic wand for Abracadabra! He catapulted right through the skylight, magic carpet and all, and was now proceeding speedily on Cloud 13. Oh dear! He thought. It would be Cloud 13.

He hated Cloud 13. It was so much more windy and unprotected and in his surprise departure he had left behind his woollies.

He felt in his tunic pocket Pocket sesame was always to be relied on in an emergency. Woosh! He touched the concealed jewelled [sic] dagger that Aladdin had bequeathed to him and presto he was walking silently in Precious Boulevard off Sultan’s Row, that famous Turkish road, every cobble of which was either a ruby or amethyst. Puff puff, he was out of breath. He stopped at Rainbow Fountain and peered into the magic water mumbling the Wizard’s chant. His gaze pierced the surface of the pool, and the sheer beauty beneath him made him gasp.

“Big bear, Small bear, Picnic retreat. Which way to Wizard Napolean’s Castle?”

2. Goblet of Fire

The villagers of Little Hangleton still called it “the Riddle House,” even though it had been many years since the Riddle family had lived there. It stood on a hill overlooking the village, some of its windows boarded, tiles missing from its roof, and ivy spreading unchecked over its face. Once a fine looking manor, and easily the largest and grandest building for miles around, the Riddle House was now damp, derelict, and unoccupied.

The Little Hangletons all agreed that the old house was “creepy.” Half a century ago, something strange and horrible had happened there, something that the older inhabitants of the village still liked to discuss when gossip was scarce. The story had been picked over so many times, and had been embroidered in so many places, that nobody was quite sure what the truth was anymore. Every version of the tale, however, started in the same place: Fifty years before, at daybreak on a fine summer’s morning, when the Riddle House had still been well-kept and impressive, a maid had entered the drawing room to find all three Riddles dead.

B. Analysis

1. Total Concept and Feel

Because the works at issue are primarily created for children, the total concept and feel of the works—rather than their plot and character development—is the most important factor for purposes of establishing copyright infringement. Here, the contrast between the total concept and feel of the works is so stark that any serious comparison of the two strains credulity. As an initial matter, the dramatic difference in length between Goblet of Fire and Livid Land—734 pages and 16 pages of text, respectively—immediately undermines Allen’s suggestion that the authors similarly “selected, coordinated and arranged the elements” of their work. Indeed, a reading of the works unequivocally confirms that they are distinctly different in both substance and style, and ultimately engender very different visceral responses from their readers.

The works vary in structure, mood, details, and characterization. Livid Land progresses as a series of fragmented and often tangential scenes, each of which summarily recounts Willy’s various exploits without any supporting detail, contextual explanation, or suspenseful build-up. Accounts about Willy’s background, travels, illnesses, business ventures, and participation in a contest are presented in the same tone and with the same level of generality. To the extent that Livid Land specifically aims to tell the story about Willy’s participation in a contest—as opposed to providing short and self-contained anecdotes concerning his life in general—its intended subject is made clear only by the fact that the work refers to the contest in more than one chapter. Events are dryly set forth, rather than described. New characters or references frequently pop up without introduction or purpose, never to appear again. Beyond the background fact of the wizards’ contest, the book lacks any cohesive narrative elements that can unify or make sense of its disparate anecdotes—a generous reading may infer that its purpose is to engage a child’s attention for a few moments at a time,  much like a mobile or cartoon. Indeed, the text is enlivened only by the illustrations that accompany it.

Livid Land is entirely devoid of a moral message or intellectual depth. It does not present any overarching message or character development. The competition stands as an end in itself, and there is no purpose to Willy’s participation aside from victory. The characters never face any difficult choices, or experience any type of conflict. Their feelings are not addressed and their interpersonal relationships are not explored. Essentially, Livid Land offers only narration, not nuance.

In contrast, Goblet of Fire is a cumulative work, in which one scene builds upon and transitions to another. The storyline is highly developed and complex, and captures the attention of both children and adults for long periods of time. The wizard competition clearly drives the plot and is fleshed out in great detail, but it is not, in and of itself, the primary subject of the book—rather, the competition serves as packaging for various underlying storylines, such as Voldemort’s return or Ron and Hermione’s romantic feelings towards each other. Indeed, Harry’s ordeal is not over following his victory, because Voldemort is still on the loose and the wizard community expects to face “dark and difficult times.” The text is rich in imagery, emotive and suspenseful. Sophisticated literary devices, such as foreshadowing, are frequently employed—for example, Harry’s scar reflexively hurts whenever Voldemort is near him, whether or not he is aware of his presence, with the intensity of the pain corresponding to the degree of danger he is in.

Goblet of Fire has a highly developed moral core, and conveys overarching messages through its plot. For example, following Harry’s victory and Cedric’s death in the competition, Dumbledore instructs the students at Hogwarts that,

in the light of Lord Voldemort’s return, we are only as strong as we are united, as weak as we are divided. Lord Voldemort’s gift for spreading discord and enmity is very great. We can fight it only by showing an equally strong bond of friendship and trust. Differences of habit and language are nothing at all if our aims are identical and our hearts are open.

Indeed, the book’s characters are frequently subject to ethical scrutiny. The choices that they make are often difficult and marked by clear trade-offs, which are explored and elaborated upon. Harry is not concerned with winning the competition, but with doing what is right—for example, he foregoes an easy victory in the second task of the competition to ensure that his competitors reach and save all the hostages at the bottom of the lake.

Given the vast aesthetic and substantive differences between Livid Land and Goblet of Fire, I find no overlap in their total concept and feel.

2. Theme

Allen argues that both works evince themes of “friendship, teamwork, … the value of personal ingenuity, [and] the international scope and unity of the wizard community.” It is unclear, however, that any discernible—let alone protectible—themes emerge from Livid Land’s one-dimensional and desultory account of Willy’s participation in the wizard competition. The general foundations of a theme—i.e., sentiment or insight, topical or symbolical occurrences, evolution of character or plot—are not readily identifiable in the text. For example, despite being one of Allen’s purported themes, Livid Land’s consideration of the “international scope and unity of the wizard community” is limited to the following passage:

There were wizards of all races. Chinese, with massive Mandarin hats beautifully hand painted with peasant scenes. Black and brown wizards from the Ivory Coast and Delhi. Willy wondered. Until now he’d never realised the immensity of the Wizard brotherhood. He was frightened at the power it could muster.

A brief, perfunctory and isolated reference to a subject cannot give rise to a cognizable theme—let alone one that is specific enough to be infringed.

Moreover, Livid Land does not provide even those elements necessary to formulate and express the specific themes that plaintiff identifies in the text. For example, Allen identifies friendship as a theme common to both works, but Willy does not seem to have any friends or to express any desire for companionship. Throughout the work, he engages only in cursory and singular interactions with acquaintances. His primary company, and the only other recurring characters, are various apprentices and elves—all of whom are subject to his bidding, and who provide him with assistance in the competition only upon orders to do so. Because there is scant basis upon which to extrapolate any theme from Livid Land, there is certainly no support for a finding of substantial similarity in this regard.

3. Characters

Allen argues that the similarities between Willy and Harry provide evidence of unlawful appropriation, because “both protagonists are famous male wizards, initiated late into wizarding (in pre-/early adolescence), who receive formal education in wizardry, and are chosen to compete in year-long wizard competitions.” Even accepting Allen’s dubious characterizations, they constitute a general prototype too indistinct to merit copyright protection. Because the bar for substantial similarity in a character is set quite high, courts have found no substantial similarity between characters sharing far more specific and developed traits.

Allen’s purported list of common attributes between Willy and Harry evokes only a general sketch of a character (i.e., an unprotectible idea), rather than a recognizable identity that can be linked to a particular figure (i.e., a protected expression of that idea). The amorphous figure emerging from Allen’s claimed similarities may be either a villain or hero, acclaimed or maligned, old or young, a social butterfly or solitary recluse—in short, he may be anyone at all. Hence, any similarity between the two characters exists only at a level of abstraction too basic to permit any inference that defendant wrongfully appropriated any expression of plaintiff’s ideas. Particularly where two diametrically opposed characters can be constructed based on plaintiff’s examples of the allegedly infringing characteristics, there cannot be a finding of substantial similarity.

In any event, it is unlikely that a rudimentary character like Willy can be infringed upon at all. Livid Land provides only a few details about Willy, such as where he lives and what he does, but does not imbue him with a discernible personality or distinguishable appearance. Despite serving as the protagonist of a children’s work, it is not even clear whether Willy is a ‘good’ moral character. Willy’s superficiality underscores that his character is but a rough idea of general nature instead of a specific expression and realization of those ideas—i.e., Willy is but a bland and interchangeable medium through which a story is told, instead of a purposeful and deliberate actor. Because Willy’s character does not display any creativity, it does not constitute protectible expression.

4. Plot and Sequence

Allen argues that “[t]he plots and sequences of [Livid Land and Goblet of Fire ] provide the clearest examples of the similarity between the works.” Yet while both works tell the story of a wizard competition, and that the protagonist of each book is a wizard who takes part in—and ultimately wins—the competition, they share no similarities beyond this level of abstraction. As Judge Learned Hand once observed, “[u]pon any work … a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.” Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930) (emphasis added) (“[T]here is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his ‘ideas,’ to which, apart from their expression, his property is never extended.”). Here, a more discerning description of the works readily underscores their overwhelming differences in plot and sequence.

On the one hand, Livid Land tells the story of an adult wizard who, like many other wizards, is given a happily-accepted opportunity to secure a spot in a coveted retirement community by completing a task assigned to him through a non-adversarial and non-competitive “contest.” The adult wizard is tasked with freeing several female hostages from a highly guarded prison on a remote and virtually inaccessible island, and manages to do so by devising a plan and engaging a team of apprentice wizards, elves, and angels to parachute to the island, uncover the secret password for entry, charm an Italian sailor, plant sleep-inducing chocolate in the clouds to stupefy the population, load the hostages onto a cage, and transport them off the island.

On the other hand, Goblet of Fire tells the story of a teenage wizard who is forced to enter into a dangerous three-round tournament against three much more seasoned and well-prepared competitors to compete for the one first place prize, and who eventually wins the competition only to discover that it is a trap intended to lead to his death. He uses his flying skills in the first task of the Tournament to out-wit the most ferocious fire-breathing dragon faced by any of the four competitors and recover a golden egg; succeeds in the second task only through the assistance of others and procures a magical substance called ‘gillyweed’ that enables him to breathe underwater and retrieve his friends at the bottom of the school lake, where they are temporarily being held hostage for purposes of the Tournament; and navigates a labyrinth filled with magical obstacles to achieve the third-task and tie the competition—only to be delivered right into the hands of a murderous villain, who immediately murders his friend and almost kills the hero. Given these fundamental differences in storyline, there is little—let alone substantial—similarity between the plot and sequence of two works.

In any event, the allegedly infringing plot features are not protectible elements. First, they are too generic to constitute an expression. For example, Allen argues that “[i]n both books, the competition is announced in a castle, and in both cases it is in the “Great Hall” of that castle.” Yet Livid Land’s depiction of the announcement and great hall is limited to the following sentences: (1) “The great hall of Napolean’s Castle revealed a dramatic scene;” and (2) “A voice began to boom from the great hall. ‘We are here today for me to inaugurate the year of the wizards’ contests.’”

The cursory invocation of a concept does not give rise to protectible expression—to the contrary, copyright law is intended to foster the unrestricted exchange of ideas. Indeed, Livid Land seems itself to have borrowed concepts from the public realm. For example, Allen points out that both Willy and Harry are in the bath when they learn information central to the task at hand; similarly, popular history regarding the Greek scientist Archimedes tells of how he invented a method for determining the volume of an object with an irregular shape while taking a bath. In a similar vein, the concept of a non-adversarial and self-directed ‘competition’ is prolific in popular culture.

Second, Allen attempts to portray similarities by selectively extracting various trivialities from each book, but random similarities scattered throughout the works cannot by themselves support a finding of substantial similarity. For example, Allen notes that both competitions are scored out of one thousand units, are announced in the great hall of a castle, involve the rescue of hostages, and are the subject of bathtime ruminations by the works’ respective protagonists. Such a scattershot approach cannot support a finding of substantial similarity because it fails to address the underlying issue: whether a lay observer would consider the works as a whole substantially similar to one another.

Third, many, if not all, of the allegedly infringing features constitute scenes a faire that flow naturally from a work’s theme rather than from an author’s creativity. For example, as Scholastic observes, a story about a competition necessarily involves discussion of the central task of the competition, scoring of the competition, a prize of some kind, and a winner of the competition. Similarly, a castle is a stock setting in stories about magical wizard societies. Lastly, courts have declined to find substantial similarity in situations where there has been far greater overlap in plot elements.

5. Pace

Goblet of Fire is a fast-moving book with cliff-hangers in virtually every chapter. In contrast, Livid Land is unrushed and lacking a sense of urgency. Moreover, to the extent that Plaintiff’s work even contains ‘tone’ or ‘pace’—for example, the excitement, innocence or the simplicity of a moment—these elements are certainly not original, but are common to many pieces of children’s literary works.

6. Setting

Allen alleges that the settings of both works indicate substantial similarity, because each: (1) portrays magical worlds based in Europe, wizard hospitals that treat mental illness, wizard colleges, and secret wizard communities; (2) refers to apprentices who protested their working conditions; and (3) involves travel using magical versions of real-world transportation or special powder. Livid Land merely mentions all of these ideas in passing, however, and does not transform them into protected expression through any creative effort. For example, Livid Land includes only a one sentence reference to apprentices who built Willy a new factory to protest their working conditions. In contrast, the working conditions of elves appear as a frequent theme in Goblet of Fire as Hermione becomes an impassioned leader of her self-driven elf-liberation movement. Mere commonality in subject-matter cannot establish infringement. Moreover, wizard versions of real-life institutions, places, and practices are scenes a faire relating to the unprotectible theme of a wizard society. As such, there can be no substantial similarity between the settings in the works at issue.

V. CONCLUSION

For all the reasons discussed above, plaintiff cannot sustain his copyright infringement claim and defendant’s motion to dismiss is granted in its entirety.

__________

Check Your Understanding – Allen

Question 1. In Allen, why did the court grant the defendant’s motion to dismiss the complaint?

Question 2. True or false: Because the works at issue in Allen were created primarily for an audience of children, the court found that plot and character development were the most important factors for purposes of establishing copyright infringement.

The following case, decided en banc by the Ninth Circuit in 2020, received quite a bit of popular attention. The owner of the copyright for a song called Taurus sued the iconic band Led Zeppelin, alleging that the introductory guitar part of Led Zeppelin’s Stairway to Heaven (which is often ranked the top rock song of all time) was illegally copied from Taurus.

Some things to consider when reading Skidmore:

1. In Skidmore, the en banc Ninth Circuit upholds a jury’s decision that Stairway to Heaven is not substantially similar to Taurus under the “extrinsic” test for substantial similarity, which means Led Zeppelin wins.
2. Note the court’s explanation of the intrinsic and extrinsic tests for substantial similarity.
3. Also take note of the discussion of the history of copyright protection for recorded music. There was no federal copyright for sound recordings prior to 1972, and the court held that the plaintiff’s copyright was limited to the deposit copy submitted for registration with the Copyright Office in the 1960s (a very short piece of sheet music that fails to capture much of the recorded version of Taurus). You can listen to recordings of Taurus and Stairway to Heaven (on YouTube, for example) and hear the similarity for yourself, but the jury was only allowed to compare the deposit copy (which is very different from the recording) with Stairway to Heaven. The outcome might have been different if the jury had been charged with comparing the recorded versions of the songs.

Skidmore as Tr. for Randy Craig Wolfe Tr. v. Led Zeppelin

952 F.3d 1051 (9th Cir. 2020, en banc)

McKEOWN, Circuit Judge:

Stairway to Heaven has been called the greatest rock song of all time. Yet, hyperbole aside, nearly 40 years after the English rock band Led Zeppelin released its hit recording, the song is not impervious to copyright challenges. The estate of guitarist Randy Wolfe claims that Led Zeppelin and its guitarist Jimmy Page and vocalist Robert Plant copied portions of Taurus, a song written by Wolfe and performed by his band Spirit.

This appeal stems from the jury’s verdict in favor of Led Zeppelin and a finding that the two songs are not substantially similar.

The 1909 Copyright Act, which does not protect sound recordings, controls our analysis. The copyright at issue is for the unpublished musical composition of Taurus, which was registered in 1967. The unpublished work is defined by the deposit copy, which in the case of Taurus consists of only one page of music. We affirm the district court’s entry of judgment in favor of Led Zeppelin and related parties.

BACKGROUND

Randy Wolfe, professionally known as Randy California, wrote the instrumental song Taurus in 1966 or 1967. He was a guitarist in the band Spirit. Spirit signed a recording contract in August 1967 and released its first eponymous album—which included Taurus—a few months later. Wolfe also entered into an Exclusive Songwriter’s and Composer’s Agreement with Hollenbeck Music Co. (“Hollenbeck”). In December 1967, Hollenbeck registered the copyright in the unpublished musical composition of Taurus, listing Wolfe as the author. As required for registration of an unpublished work under the 1909 Copyright Act, which was in effect at the time, Hollenbeck transcribed Taurus and deposited one page of sheet music (the “Taurus deposit copy”), with the United States Copyright Office.

Around the same time, across the Atlantic, another rock band, Led Zeppelin, was formed by Jimmy Page, Robert Plant, John Paul Jones, and John Bonham. Led Zeppelin released its fourth album in late 1971. The untitled album, which became known as “Led Zeppelin IV,” contained the now iconic song Stairway to Heaven. Stairway to Heaven was written by Jimmy Page and Robert Plant.

It is undisputed that Spirit and Led Zeppelin crossed paths in the late 1960s and the early 1970s. The bands performed at the same venue at least three times between 1968 and 1970. Led Zeppelin also performed a cover of a Spirit song, Fresh Garbage. But there is no direct evidence that the two bands toured together, or that Led Zeppelin band members heard Spirit perform Taurus.

Wolfe passed away in 1997. After his death, Wolfe’s mother established the Randy Craig Wolfe Trust (the “Trust”) and served as the trustee until she passed away. Neither Wolfe nor his mother filed a suit regarding Stairway to Heaven. Michael Skidmore became a co-trustee of the Trust in 2006.

Fast forward forty-three years from the release of Stairway to Heaven to May 2014. Skidmore filed a suit alleging that Stairway to Heaven infringed the copyright in Taurus, naming as defendants Led Zeppelin, James Patrick Page, Robert Anthony Plant, John Paul Jones, Super Hype Publishing, and the Warner Music Group Corporation as parent of Warner/Chappell Music, Inc. (“Warner/Chappell”), Atlantic Recording Corporation, and Rhino Entertainment Co. (collectively “Led Zeppelin”). One may wonder how a suit so long in the making could survive a laches defense. The Supreme Court answered this question in Petrella v. Metro-Goldwyn-Mayer, Inc., which clarified that laches is not a defense where copyright infringement is ongoing. 572 U.S. 663, 668 (2014).

Skidmore alleged direct, contributory, and vicarious copyright infringement. Skidmore’s claims are not based on the entire Taurus composition. Rather, Skidmore claims that the opening notes of Stairway to Heaven are substantially similar to the eight-measure passage at the beginning of the Taurus deposit copy:

The claimed portion includes five descending notes of a chromatic musical scale. These notes are represented on the piano as a set of adjacent black and white keys, from right to left. The beginning of Stairway to Heaven also incorporates a descending chromatic minor chord progression in A minor. However, the composition of Stairway to Heaven has a different ascending line that is played concurrently with the descending chromatic line, and a distinct sequence of pitches in the arpeggios, which are not present in Taurus.

Led Zeppelin disputed ownership, access, and substantial similarity. Led Zeppelin also alleged affirmative defenses, including independent creation, unclean hands, and laches.

At the close of discovery, Led Zeppelin moved for summary judgment. The district court granted the motion in part and denied it in part. The district court dismissed the claims against defendants John Paul Jones, Super Hype Publishing, and Warner Music Group because they had not performed or distributed Stairway to Heaven within the three-year statute of limitations period preceding the filing of the complaint. The district court also granted summary judgment to Led Zeppelin on Skidmore’s “Right of Attribution—Equitable Relief: Falsification of Rock n’ Roll History” claim. Although the claim was “creatively termed” and “inventive” according to the district court, a right of attribution claim under the Copyright Act extends only to visual arts.

The district court ruled [on motion for summary judgment] that under the 1909 Act, the scope of the copyright was circumscribed by the musical composition transcribed in the Taurus deposit copy. Thus, only the one-page Taurus deposit copy, and not a sound recording, could be used to prove substantial similarity between Taurus and Stairway to Heaven.

The district court granted Led Zeppelin’s motion in limine to exclude Taurus sound recordings and expert testimony based on those recordings. The district court again concluded that the Taurus deposit copy, rather than any recordings of Spirit’s performance of Taurus, formed the sole benchmark for determining substantial similarity. The district court found that there were triable issues of fact relating to ownership, access, substantial similarity, and damages.

Against the backdrop of these rulings, the trial lasted five days. Two key issues predominated: access to Taurus by Led Zeppelin band members and substantial similarity.

On the access question, Page testified that he owned “a copy of the album that contains ‘Taurus,’ … in [his] collection,” while denying “any knowledge of ‘Taurus.’ ”

The substantial similarity question pitted two expert musicologists against each other. Skidmore’s expert, Dr. Alexander Stewart, analyzed, one by one, five categories of similarities. Dr. Stewart acknowledged that a chromatic scale and arpeggios are common musical elements. But he found Taurus and Stairway to Heaven to be similar because the descending chromatic scales in the two compositions skip the note E and return to the tonic pitch, A, and the notes in the scale have the same durations. Then he pointed to three two-note sequences—AB, BC, and CF#—that appear in both compositions. In his view, the presence of successive eighth-note rhythms in both compositions also made them similar. Finally, he testified that the two compositions have the same “pitch collection,” explaining that certain notes appear in the same proportions in the beginning sequence of both works.

In sum, Dr. Stewart claimed that five musical elements in combination were copied because these elements make Taurus unique and memorable, and these elements also appear in Stairway to Heaven. Skidmore’s closing argument reinforced these points. Neither Dr. Stewart nor Skidmore’s counsel argued that the categories of similarities were selected and arranged to form protectable expression in the design, pattern, or synthesis of the copyrighted work. Nor did they make a case that a particular selection and arrangement of musical elements were copied in Stairway to Heaven.

Led Zeppelin’s expert, Dr. Lawrence Ferrara, testified that the two compositions are completely distinct. To highlight the marked differences in the compositions, he presented the following exhibit, which juxtaposed the claimed portion of Taurus against Stairway to Heaven:

​

Dr. Ferrara testified that the similarities claimed by Skidmore either involve unprotectable common musical elements or are random. For example, Dr. Ferrara explained that the similarity in the three two-note sequences is not musically significant because in each song the sequences were preceded and followed by different notes to form distinct melodies. He described the purported similarity based on these note sequences as akin to arguing that “crab” and “absent” are similar words because they both have the letter pair “ab.” He also testified that the similarity in the “pitch collection” is not musically meaningful because it is akin to arguing that the presence of the same letters in “senator” and “treason” renders the words similar in meaning.

The jury returned a verdict for Led Zeppelin. In special interrogatories, the jury found that Skidmore owned the copyright to Taurus and that Led Zeppelin had access to Taurus, but that the two songs were not substantially similar under the extrinsic test.

A panel of our court vacated the amended judgment in part and remanded for a new trial. We granted rehearing en banc.

ANALYSIS

I. THE 1909 COPYRIGHT ACT

The world of copyright protection for music changed dramatically during the twentieth century and those changes dictate our analysis here. The baseline issue we address is the scope of Wolfe’s copyright in the unpublished composition Taurus, which was registered in 1967, between the passage of the Copyright Act of 1909 (“1909 Act”) and the sweeping copyright reform adopted in the Copyright Act of 1976 (“1976 Act”). We conclude that the 1909 Act controls and that the deposit copy defines the scope of the Taurus copyright.

A. THE HISTORY OF COPYRIGHT PROTECTION FOR MUSICAL COMPOSITIONS AND SOUND RECORDINGS

Although it seems unthinkable today, musical compositions were not explicitly subject to copyright in the United States until 1831, when Congress added “musical composition” to the list of statutorily protected works. Copyright Act of 1831 (repealed 1909). Thus, the “musical composition,” which was understood to be a printed form of the music, joined the statutory protection afforded to dramatic compositions, maps, charts, engraving, photographs and other works.

Between 1831 and the early 1900s, a number of machines were invented that allowed mechanical reproduction of a musical composition. With the advent of player pianos at the turn of the century, the question arose whether copyright protection extended to the infringement of musical compositions by perforated piano rolls. The Supreme Court held that the copyright statute barred the unauthorized copying of a musical composition “in intelligible notation,” but that it would be “strained and artificial” to consider musical sounds coming from an instrument to be a copy. White-Smith Music Publ’g Co. v. Apollo Co., 209 U.S. 1, 17–18 (1908). Justice Holmes commented in his concurrence that “[o]n principle anything that mechanically reproduces that collocation of sounds ought to be held a copy, or, if the statute is too narrow, ought to be made so by a further act.”

Congress stepped in to remedy the situation, perhaps heeding Justice Holmes’s call. The Copyright Act of 1909—landmark legislation that significantly revised copyright law—categorized mechanically-reproduced musical compositions, such as those played on player pianos and phonograph players, as “copies” of the original composition.

The statute provided copyright protection against “any arrangement or setting of [the musical composition] or of the melody of it in any system of notation or any form of record in which the thought of an author may be recorded and from which it may be read or reproduced.”  Skidmore seizes on this language to argue that the new legislation extended copyright protection beyond sheet music. The text does not support this reading. Although the 1909 Act extended copyright protection against infringement beyond the mere reproduction of the sheet music, Congress did not provide that copyrighted works could be anything other than sheet music or, for an unpublished work, the musical composition transcribed in the deposit copy.

Requiring more formalities than the current copyright act, the procedures for obtaining copyright protection under the 1909 Act were very specific. Registration for an unpublished musical work could be obtained “by the deposit, with claim of copyright, of one complete copy of such work” with the Copyright Office. In contrast, protection for a published work could be secured by affixing a copyright notice “to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor.” Either way, distributing sound recordings did not constitute publication under the 1909 Act, so musical compositions were only published if the sheet music also was published. Significantly, the Copyright Office did not even accept sound recordings as deposit copies. Indeed, “in order to claim copyright in a musical work under the 1909 Act, the work had to be reduced to sheet music or other manuscript form.” 1 M. Nimmer & D. Nimmer, Nimmer on Copyright (“Nimmer”) § 2.05[A] (2017).

Sound recordings did not become subject to copyright protection until 1972, and then only for the sound recordings fixed on or after February 15, 1972. 17 U.S.C. § 301(c). The amendment did nothing to change the requirements of the 1909 Act or the status of the Taurus copyright.

The copyright requirements were changed dramatically by the 1976 Copyright Act, which provided that public distribution of a sound recording qualified as publication of a musical composition. In other words, composers could submit a recording rather than sheet music as the deposit copy for a musical composition. The catch, for this case, is that publication before the 1978 effective date is not covered by the new statute.

B. THE TAURUS DEPOSIT COPY

The 1967 deposit copy of Taurus is a single page of sheet music. Skidmore suggests that the copyright extends beyond the sheet music; that is, the deposit copy is somehow archival in nature and more of a reference point than a definitive filing. This approach ignores the text of the statute and the purpose of the deposit.

We have outlined copyright protection under the 1909 Act as follows: An unpublished work was protected by state common law copyright from the moment of its creation until it was either published or until it received protection under the federal copyright scheme. The referenced federal copyright protection for unpublished works is found in the text of the statute: “copyright may also be had of the works of an author of which copies are not reproduced for sale, by the deposit, with claim of copyright, of one complete copy of such work if it be a … musical composition ….” 1909 Act § 11.

The text is clear—for unpublished works, the author must deposit one complete copy of such work. The purpose of the deposit is to make a record of the claimed copyright, provide notice to third parties, and prevent confusion about the scope of the copyright. Even before the 1909 Act, the Supreme Court stated that one objective of the deposit was to permit inspection by other authors “to ascertain precisely what was the subject of copyright.” Merrell v. Tice, 104 U.S. 557, 56 (1881). The inescapable conclusion is that the scope of the copyright is limited by the deposit copy.

Although Skidmore offers a host of reasons why adherence to the statute complicates proof in copyright cases, these arguments cannot overcome the statutory requirements. For example, Skidmore claims that it is impractical to compare a sound recording of the infringing work to a deposit copy of the infringed work, even though that is precisely what happened here, and experts for both sides were confident in their analysis. Indeed, during the trial, Skidmore’s master guitarist, Kevin Hanson, performed the Taurus deposit copy as he interpreted it.

Skidmore also complains that restricting protection to the deposit copy disadvantages musicians who do not read music because it can be time consuming and expensive to make an accurate deposit copy. Apparently, that was not a problem here, as Wolfe’s work was transcribed for the sheet music deposit. Digital transcription and other technological advances undercut this argument, not to mention that for decades now, sound recordings have been accepted as the deposit copy. Finally, Skidmore offers conjecture about what might happen if a deposit copy were lost or destroyed. We need not play this “what if” guessing game because the statute is clear and unambiguous.

The district court correctly concluded that under the 1909 Act, which controls the copyright registration in this case, the Taurus deposit copy circumscribes the scope of the copyright. Because the deposit copy defines the four corners of the Taurus copyright, it was not error for the district court to decline Skidmore’s request to play the sound recordings of the Taurus performance that contain further embellishments or to admit the recordings on the issue of substantial similarity.

II. ELEMENTS OF COPYRIGHT INFRINGEMENT

Proof of copyright infringement requires Skidmore to show: (1) that he owns a valid copyright in Taurus; and (2) that Led Zeppelin copied protected aspects of the work. Skidmore’s ownership of a valid copyright in Taurus was not challenged on appeal.

The second prong of the infringement analysis contains two separate components: “copying” and “unlawful appropriation.” Although these requirements are too often referred to in shorthand lingo as the need to prove “substantial similarity,” they are distinct concepts.

Because independent creation is a complete defense to copyright infringement, a plaintiff must prove that a defendant copied the work. In the absence of direct evidence of copying, which is the case here, the plaintiff can attempt to prove it circumstantially by showing that the defendant had access to the plaintiff’s work and that the two works share similarities probative of copying. This type of probative or striking similarity shows that the similarities between the two works are due to copying rather than coincidence, independent creation, or prior common source. A finding of such similarity may be based on the overlap of unprotectable as well as protectable elements.

On the other hand, the hallmark of “unlawful appropriation” is that the works share substantial similarities. In our circuit, we use a two-part test to determine whether the defendant’s work is substantially similar to the plaintiff’s copyrighted work. The first part, the extrinsic test, compares the objective similarities of specific expressive elements in the two works. Crucially, because only substantial similarity in protectable expression may constitute actionable copying that results in infringement liability, it is essential to distinguish between the protected and unprotected material in a plaintiff’s work. The second part, the intrinsic test, tests for similarity of expression from the standpoint of the ordinary reasonable observer, with no expert assistance. Both tests must be satisfied for the works to be deemed substantially similar.

III. EVIDENTIARY CHALLENGE—THE COPYING PRONG OF INFRINGEMENT

At trial, one of Skidmore’s key arguments was that Led Zeppelin members heard either performances or recordings of Taurus before creating Stairway to Heaven, and thus had access for purposes of copying the music. To prove that point, Skidmore wanted to play several recordings of Taurus during the testimony of Jimmy Page, claiming that observing Page listening to the recordings would have enabled the jury to evaluate his demeanor with respect to access. Skidmore’s counsel explained that the recordings could be offered to prove access, even if the court excluded them for proving substantial similarity. The district court determined that although the sound recordings were relevant to prove access, Skidmore’s approach would be “too prejudicial for the jury” because it risked confusing access with substantial similarity. Hence the court excluded the recordings under Federal Rule of Evidence 403. The court instead permitted Skidmore’s counsel to play the recordings for Page outside the presence of the jury and then question him about the recordings in front of the jury.

Skidmore’s position is a curious one and defies common sense. There would have been very little, if any, probative value in watching Page’s reaction to listening to Taurus at the trial in 2016 to prove access to the song half a century ago. To prevent the jury from making an erroneous comparison for determining substantial similarity, the court properly excluded the sound recording, which contains performance elements that are not protected by the Taurus deposit copy. Indeed, the court’s exclusion ruling displayed a clear understanding of the distinct components of copying and unlawful appropriation, letting the evidence in “as far as access,” but “not … to compare the performance” to Stairway to Heaven.

In any event, the evidentiary question is moot. It turns out Skidmore’s examination of Page on access proved fruitful. When Page testified, he candidly admitted to owning “a copy of the album that contains ‘Taurus,’ … in [his] collection,” though still denying “any knowledge of ‘Taurus.’ ” The jury found that both Page and Plant “had access to the musical composition Taurus before Stairway to Heaven was created.” Once the jury made that finding, the remaining questions on the jury verdict form related to substantial similarity of the works.

In answer to the question of whether “original elements of the musical composition Taurus are extrinsically similar to Stairway to Heaven,” the jury said no. Because the extrinsic test was not satisfied, the jury did not reach the intrinsic test. Although these findings ended the jury’s copyright analysis, Skidmore also challenges various trial rulings.

B. THE ORIGINALITY INSTRUCTIONS

Although copyright protects only original expression, it is not difficult to meet the famously low bar for originality. Feist, 499 U.S. at 345.

Even in the face of this low threshold, copyright does require at least a modicum of creativity and does not protect every aspect of a work; ideas, concepts, and common elements are excluded. See 17 U.S.C. § 102(b); Feist, 499 U.S. at 345–46. Nor does copyright extend to “common or trite” musical elements, or “commonplace elements that are firmly rooted in the genre’s tradition.” These building blocks belong in the public domain and cannot be exclusively appropriated by any particular author. Authors borrow from predecessors’ works to create new ones, so giving exclusive rights to the first author who incorporated an idea, concept, or common element would frustrate the purpose of the copyright law and curtail the creation of new works. With these background principles in mind, we review the district court’s instructions on originality, Nos. 16 and 20.

Jury Instruction No. 16 explained “what a copyright is, what it protects, and what it does not protect.”¹⁰ Relevant to this appeal, the instruction provided that “[c]opyright only protects the author’s original expression in a work.” This statement comes straight from the Supreme Court’s opinion in Feist. The instruction went on to state that copyright “does not protect ideas, themes or common musical elements, such as descending chromatic scales, arpeggios or short sequences of three notes.” Skidmore objects to the list of unprotectable elements. In particular, he argues that characterizing the “descending chromatic scales, arpeggios or short sequence of three notes” as examples of “common musical elements” was prejudicial to him.

To put this instruction in context, it is useful to outline the essence of the “common musical elements” or building blocks. The chromatic scale is one of two principal scales in Western music. It consists of twelve pitches separated by a half-step. On a piano, this means playing the white and black keys in order from left to right. Three or more notes or pitches sounded simultaneously are called chords, and an arpeggio, sometimes called a broken chord, is “[a] chord whose pitches are sounded successively, … rather than simultaneously.”

To conduct a copyright infringement analysis, the factfinders ask “whether ‘the protectible elements, standing alone, are substantially similar’ ” and “disregard the non-protectible elements.” Jury Instruction No. 16 correctly listed non-protectable musical building blocks that no individual may own, and did not, as Skidmore claims, exclude the particular use of musical elements in an original expression.

For example, despite Skidmore’s challenge to the characterization of descending chromatic scales as unprotectable, even his own expert musicologist, Dr. Stewart, agreed musical concepts like the minor chromatic line and the associated chords have been “used in music for quite a long time” as “building blocks.” This candid acknowledgement was echoed by Led Zeppelin’s expert. Dr. Ferrara described the “chromatic scale, descending or ascending,” as “a musical building block. This is something that no one can possibly own.” The commonality of descending scales and arpeggios has been reinforced by the Copyright Office Compendium § 802.5(A) (3d ed. 2017). Emphasizing the importance of original creation, the Copyright Office notes that “a musical work consisting entirely of common property material would not constitute original authorship.” Just as we do not give an author “a monopoly over the note of B-flat,” descending chromatic scales and arpeggios cannot be copyrighted by any particular composer.

We have never extended copyright protection to just a few notes. Instead we have held that “a four-note sequence common in the music field” is not the copyrightable expression in a song. Granite Music Corp. v. United Artists Corp., 532 F.2d 718, 721 (9th Cir. 1976). In the context of a sound recording copyright, we have also concluded that taking six seconds of the plaintiff’s four-and-a-half-minute sound recording—spanning three notes—is de minimis, inactionable copying. See Newton, 388 F.3d at 1195–96. One of our colleagues also expressed skepticism that three notes used in a song can be copyrightable by observing that of the “only 123 or 1,728 unique combinations of three notes,” not many would be useful in a musical composition. See Williams, 895 F.3d at 1144 n.6 (Nguyen, J., dissenting). The Copyright Office is in accord, classifying a “musical phrase consisting of three notes” as de minimis and thus not meeting the “quantum of creativity” required under Feist. Copyright Office Compendium, § 313.4(B) (3d ed. 2017). At the same time, we have not foreclosed the possibility that “seven notes” could constitute an original expression. Swirsky, 376 F.3d at 852. To the contrary, our sister circuit observed decades ago that “the seven notes available do not admit of so many agreeable permutations that we need be amazed at the re-appearance of old themes.” Arnstein v. Edward B. Marks Music Corp., 82 F.2d 275, 277 (2d Cir. 1936).

In view of our precedent and accepted copyright principles, the district court did not commit a reversible error by instructing the jury that a limited set of a useful three-note sequence and other common musical elements were not protectable.

The district court also instructed the jury on copyright originality in Jury Instruction No. 20, which states:

An original work may include or incorporate elements taken from prior works or works from the public domain. However, any elements from prior works or the public domain are not considered original parts and not protected by copyright. Instead, the original part of the plaintiff’s work is limited to the part created:

1. independently by the work’s author, that is, the author did not copy it from another work; and

2. by use of at least some minimal creativity.

Despite Skidmore’s claim that the following language has no support in the law and was prejudicial—“any element from prior works or the public domain are not considered original parts and not protected by copyright”—this is black-letter law. See 17 U.S.C. §§ 102(b), 103. Reading this sentence with the preceding one—an “original work may include or incorporate elements taken from prior works or works from the public domain”—we conclude that Jury Instruction No. 20 correctly instructed the jury that original expression can be the result of borrowing from previous works or the public domain.

Skidmore appears to want less than the law demands. In his closing and on appeal, he argued that a work is original as long as it was independently created. Not quite. Though not demanding, originality requires at least “minimal” or “slight” creativity—a “modicum” of “creative spark”—in addition to independent creation. Feist, 499 U.S. at 345–46, 362. Jury Instruction No. 20 correctly articulated both requirements for originality, that the work be created “independently by the work’s author,” and contain  “at least some minimal creativity.” Reviewing the jury instructions as a whole, we conclude that the originality instructions were sound and were not prejudicial to Skidmore.

CONCLUSION

This copyright case was carefully considered by the district court and the jury. Because the 1909 Copyright Act did not offer protection for sound recordings, Skidmore’s one-page deposit copy defined the scope of the copyright at issue. In line with this holding, the district court did not err in limiting the substantial similarity analysis to the deposit copy or the scope of the testimony on access to Taurus. As it turns out, Skidmore’s complaint on access is moot because the jury found that Led Zeppelin had access to the song. We affirm the district court’s challenged jury instructions. Finally, we affirm the district court with respect to the remaining trial issues and its denial of attorneys’ fees and costs to Warner/Chappell.

The trial and appeal process has been a long climb up the Stairway to Heaven. The parties and their counsel have acquitted themselves well in presenting complicated questions of copyright law. We affirm the judgment that Led Zeppelin’s Stairway to Heaven did not infringe Spirit’s Taurus.

__________

Check Your Understanding – Skidmore

Question 1. What is the purpose of the 1909 Copyright Act’s deposit requirement for copyright in unpublished works?

Question 2. According to the Ninth Circuit, what is the difference between “probative or striking similarity” and “substantial similarity.”

Question 3. Why did the district court deny Skidmore’s request to play recordings of Taurus during the testimony of Jimmy Page, in order for the jury to observe Page listening to the recordings and thereby evaluate his demeanor with respect to access?

Socratic Script

Would the outcome in Skidmore been different if all of the operative facts occurred after the 1976 Copyright Act went into effect?

Some things to consider when reading VMG Salsoul:

1. The issue of de minimis copying.
2. The Sixth Circuit’s holding in another case, Bridgeport, the reason that the Ninth Circuit found that holding “unpersuasive” in this case, and the policy implications of the divergent approaches taken by the Sixth and Ninth Circuits.
3. The two distinct copyrights on the composition and sound recording of Love Break.
4. The basis for the court’s assertion that “if a band played and recorded its own version of Love Break in a way that sounded very similar to the copyrighted recording of Love Break, then there would be no infringement [of the sound recording copyright] so long as there was no actual copying of the recorded Love Break.”
5. The Ninth Circuit’s acknowledgement that it has created a “circuit split.

VMG Salsoul, LLC v. Ciccone

824 F.3d 871 (9th Cir. 2016)

GRABER, Circuit Judge:

In the early 1990s, pop star Madonna Louise Ciccone, commonly known by her first name only, released the song Vogue to great commercial success. In this copyright infringement action, Plaintiff VMG Salsoul, LLC, alleges that the producer of Vogue, Shep Pettibone, copied a 0.23-second segment of horns from an earlier song, known as Love Break, and used a modified version of that snippet when recording Vogue. Plaintiff asserts that Defendants Madonna, Pettibone, and others thereby violated Plaintiff’s copyrights to Love Break. The district court applied the longstanding legal rule that “de minimis” copying does not constitute infringement and held that, even if Plaintiff proved its allegations of actual copying, the claim failed because the copying (if it occurred) was trivial.

Reviewing the summary judgment de novo, we agree with the district court that, as a matter of law, a general audience would not recognize the brief snippet in Vogue as originating from Love Break. We also reject Plaintiff’s argument that Congress eliminated the “de minimis” exception to claims alleging infringement of a sound recording. We recognize that the Sixth Circuit held to the contrary in Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), but—like the leading copyright treatise and several district courts—we find Bridgeport’s reasoning unpersuasive. We hold that the “de minimis” exception applies to infringement actions concerning copyrighted sound recordings, just as it applies to all other copyright infringement actions. Accordingly, we affirm the summary judgment in favor of Defendants.

FACTUAL AND PROCEDURAL HISTORY

In the early 1980s, Pettibone recorded the song Ooh I Love It (Love Break), which we refer to as Love Break. In 1990, Madonna and Pettibone recorded the song Vogue, which would become a mega-hit dance song after its release on Madonna’s albums. Plaintiff alleges that, when recording Vogue, Pettibone “sampled” certain sounds from the recording of Love Break and added those sounds to Vogue. “Sampling” in this context means the actual physical copying of sounds from an existing recording for use in a new recording, even if accomplished with slight modifications such as changes to pitch or tempo. See Newton v. Diamond, 388 F.3d 1189, 1192 (9th Cir. 2004) (discussing the term “sampling”).

Plaintiff asserts a sole theory of infringement: When creating two commercial versions of Vogue, Pettibone sampled a “horn hit” from Love Break, violating Plaintiff’s copyrights to both the composition and the sound recording of Love Break.

The horn hit appears in Love Break in two forms. A “single” horn hit in Love Break consists of a quarter-note chord comprised of four notes—E-flat, A, D, and F—in the key of B-flat. The single horn hit lasts for 0.23 seconds. A “double” horn hit in Love Break consists of an eighth-note chord of those same notes, followed immediately by a quarter-note chord of the same notes. Plaintiff’s expert identified the instruments as “predominantly” trombones and trumpets.

The alleged source of the sampling is the “instrumental” version of Love Break, which lasts 7 minutes and 46 seconds. The single horn hit occurs 27 times, and the double horn hit occurs 23 times. The horn hits occur at intervals of approximately 2 to 4 seconds in two different segments: between 3:11 and 4:38, and from 7:01 to the end, at 7:46. The general pattern is single-double repeated, double-single repeated, single-single-double repeated, and double-single repeated. Many other instruments are playing at the same time as the horns.

The horn hit in Vogue appears in the same two forms as in Love Break: single and double. A “single” horn hit in Vogue consists of a quarter-note chord comprised of four notes—E, A-sharp, D-sharp, and F-sharp—in the key of B-natural.² A double horn hit in Vogue consists of an eighth-note chord of those same notes, followed immediately by a quarter-note chord of the same notes.

The two commercial versions of Vogue that Plaintiff challenges are known as the “radio edit” version and the “compilation” version. The radio edit version of Vogue lasts 4 minutes and 53 seconds. The single horn hit occurs once, the double horn hit occurs three times, and a “breakdown” version of the horn hit occurs once. They occur at 0:56, 1:02, 3:41, 4:05, and 4:18. The pattern is single-double-double-double-breakdown. As with Love Break, many other instruments are playing at the same time as the horns.​

In a written order, the district court granted summary judgment to Defendants on two alternative grounds. First, neither the composition nor the sound recording of the horn hit was “original” for purposes of copyright law. Second, the court ruled that, even if the horn hit was original, any sampling of the horn hit was “de minimis or trivial.” In a separate order, the district court awarded attorney’s fees to Defendants under 17 U.S.C. § 505.

DISCUSSION

Plaintiff has submitted evidence of actual copying. In particular, Tony Shimkin has sworn that he, as Pettibone’s personal assistant, helped with the creation of Vogue and that, in Shimkin’s presence, Pettibone directed an engineer to introduce sounds from Love Break into the recording of Vogue. Additionally, Plaintiff submitted reports from music experts who concluded that the horn hits in Vogue were sampled from Love Break. Defendants do not concede that sampling occurred, and they have introduced much evidence to the contrary.³ But for purposes of summary judgment, Plaintiff has introduced sufficient evidence (including direct evidence) to create a genuine issue of material fact as to whether copying in fact occurred. Taking the facts in the light most favorable to Plaintiff, Plaintiff has demonstrated actual copying. Accordingly, our analysis proceeds to the next step.

Our leading authority on actual copying is Newton, 388 F.3d 1189. We explained in Newton that proof of actual copying is insufficient to establish copyright infringement:

For an unauthorized use of a copyrighted work to be actionable, the use must be significant enough to constitute infringement. This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial. The principle that trivial copying does not constitute actionable infringement has long been a part of copyright law. In addition to copying, it must be shown that this has been done to an unfair extent. This principle reflects the legal maxim, de minimis non curatlex (often rendered as, “the law does not concern itself with trifles”).

In other words, to establish its infringement claim, Plaintiff must show that the copying was greater than de minimis.

Plaintiff’s claim encompasses two distinct alleged infringements: infringement of the copyright to the composition of Love Break and infringement of the copyright to the sound recording of Love Break. Compare 17 U.S.C. § 102(a)(2) (protecting “musical works”) with id. § 102(a)(7) (protecting “sound recordings”). We squarely held in Newton, 388 F.3d at 1193, that the de minimis exception applies to claims of infringement of a copyrighted composition. But it is an open question in this circuit whether the exception applies to claims of infringement of a copyrighted sound recording.

A. Application of the De Minimis Exception

A “use is de minimis only if the average audience would not recognize the appropriation.” Newton, 388 F.3d at 1193. Accordingly, we must determine whether a reasonable juror could conclude that the average audience would recognize the appropriation. We will consider the composition and the sound recording copyrights in turn.

1. Alleged Infringement of the Composition Copyright

When considering an infringement claim of a copyrighted musical composition, what matters is not how the musicians actually played the notes but, rather, a generic rendition of the composition. When considering infringement of the composition copyright, one must remove from consideration all the elements unique to the musician’s performance. That is, we must compare the written compositions of the two pieces.

Viewing the evidence in the light most favorable to Plaintiff, Defendants copied two distinct passages in the horn part of the score for Love Break. First, Defendants copied the quarter-note single horn hit. But no additional part of the score concerning the single horn hit is the same, because the single horn hit appears at a different place in the measure. In Love Break, the notes for the measure are: half-note rest, quarter-note rest, single horn hit. In Vogue, however, the notes for the measure are: half-note rest, eighth-note rest, single horn hit, eighth-note rest. Second, Defendants copied a full measure that contains the double horn hit. In both songs, the notes for the measure are: half-note rest, eighth-note rest, eighth-note horn hit, quarter-note horn hit. In sum, Defendants copied, at most, a quarter-note single horn hit and a full measure containing rests and a double horn hit.

After listening to the recordings, we conclude that a reasonable jury could not conclude that an average audience would recognize the appropriation of the composition. Our decision in Newton is instructive. That case involved a copyrighted composition of “a piece for flute and voice.” The defendants used a six-second sample that “consist[ed] of three notes, C—D flat—C, sung over a background C note played on the flute.” The composition also “require[d] overblowing the background C note that is played on the flute.” The defendants repeated a six-second sample “throughout [the song], so that it appears over forty times in various renditions of the song.” After listening to the recordings, we affirmed the grant of summary judgment because “an average audience would not discern [the composer’s] hand as a composer.”

The snippets of the composition that were (as we must assume) taken here are much smaller than the sample at issue in Newton. The copied elements from the Love Break composition are very short, much shorter than the six-second sample in Newton. The single horn hit lasts less than a quarter-second, and the double horn hit lasts—even counting the rests at the beginning of the measure—less than a second. Similarly, the horn hits appear only five or six times in Vogue, rather than the dozens of times that the sampled material in Newton occurred in the challenged song in that case. Moreover, unlike in Newton, in which the challenged song copied the entire composition of the original work for the given temporal segment, the sampling at issue here involves only one instrument group out of many. As noted above, listening to the audio recordings confirms what the foregoing analysis of the composition strongly suggests: A reasonable jury could not conclude that an average audience would recognize an appropriation of the Love Break composition.

2. Alleged Infringement of the Sound Recording Copyright

When considering a claimed infringement of a copyrighted sound recording, what matters is how the musicians played the notes, that is, how their rendition distinguishes the recording from a generic rendition of the same composition. Viewing the evidence in the light most favorable to Plaintiff, by accepting its experts’ reports, Pettibone sampled one single horn hit, which occurred at 3:35 in Love Break. Pettibone then used that sampled single horn hit to create the double horn hit used in Vogue.

The horn hit itself was not copied precisely. According to Plaintiff’s expert, the chord “was modified by transposing it upward, cleaning up the attack slightly in order to make it punchier [by truncating the horn hit] and overlaying it with other sounds and effects. One such effect mimicked the reverse cymbal crash…. The reverb/delay ‘tail’ … was prolonged and heightened.” Moreover, as with the composition, the horn hits are not isolated sounds. Many other instruments are playing at the same time in both Love Break and Vogue.

In sum, viewing the evidence in the light most favorable to Plaintiff, Pettibone copied one quarter-note of a four-note chord, lasting 0.23 seconds; he isolated the horns by filtering out the other instruments playing at the same time; he transposed it to a different key; he truncated it; and he added effects and other sounds to the chord itself. For the double horn hit, he used the same process, except that he duplicated the single horn hit and shortened one of the duplicates to create the eighth-note chord from the quarter-note chord. Finally, he overlaid the resulting horn hits with sounds from many other instruments to create the song Vogue.

After listening to the audio recordings submitted by the parties, we conclude that a reasonable juror could not conclude that an average audience would recognize the appropriation of the horn hit. That common-sense conclusion is borne out by dry analysis. The horn hit is very short—less than a second. The horn hit occurs only a few times in Vogue. Without careful attention, the horn hits are easy to miss. Moreover, the horn hits in Vogue do not sound identical to the horn hits from Love Break. As noted above, assuming that the sampling occurred, Pettibone truncated the horn hit, transposed it to a different key, and added other sounds and effects to the horn hit itself. The horn hit then was added to Vogue along with many other instrument tracks. Even if one grants the dubious proposition that a listener recognized some similarities between the horn hits in the two songs, it is hard to imagine that he or she would conclude that sampling had occurred.

A quirk in the procedural history of this case is illuminating on this point. Plaintiff’s primary expert originally misidentified the source of the sampled double horn hit. In his original report, the expert concluded that both a single horn hit and a double horn hit were sampled from Love Break. The parties later discovered the original tracks to Vogue and were able to listen to the horn hits without interference from the many other instruments. After listening to those tracks, the expert decided that he had erred in opining that a double horn hit was sampled. He concluded instead that only a single horn hit was sampled, which was used to create the double horn hit in Vogue. In other words, a highly qualified and trained musician listened to the recordings with the express aim of discerning which parts of the song had been copied, and he could not do so accurately. An average audience would not do a better job.

In sum, the district court correctly held that summary judgment to Defendants was appropriate on the issue of de minimis copying.

B. The De Minimis Exception and Sound Recordings

Plaintiff argues, in the alternative, that even if the copying here is trivial, that fact is irrelevant because the de minimis exception does not apply to infringements of copyrighted sound recordings. Plaintiff urges us to follow the Sixth Circuit’s decision in Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005), which adopted a bright-line rule: For copyrighted sound recordings, any unauthorized copying—no matter how trivial—constitutes infringement.

The rule that infringement occurs only when a substantial portion is copied is firmly established in the law. The leading copyright treatise traces the rule to the mid-1800s. 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A][2][a]. The reason for the rule is that the plaintiff’s legally protected interest is the potential financial return from his compositions which derive from the lay public’s approbation of his efforts. If the public does not recognize the appropriation, then the copier has not benefitted from the original artist’s expressive content. Accordingly, there is no infringement.

Other than Bridgeport and the district courts following that decision, we are aware of no case that has held that the de minimis doctrine does not apply in a copyright infringement case. Instead, courts consistently have applied the rule in all cases alleging copyright infringement.

Plaintiff nevertheless argues that Congress intended to create a special rule for copyrighted sound recordings, eliminating the de minimis exception. We begin our analysis with the statutory text.

Title 17 U.S.C. § 102, titled “Subject matter of copyright: In general,” states, in relevant part:

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

(Emphasis added.) That provision treats sound recordings identically to all other types of protected works; nothing in the text suggests differential treatment, for any purpose, of sound recordings compared to, say, literary works. Similarly, nothing in the neutrally worded statutory definition of “sound recordings” suggests that Congress intended to eliminate the de minimis exception. See id. § 101 (“ ‘Sound recordings’ are works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work, regardless of the nature of the material objects, such as disks, tapes, or other phonorecords, in which they are embodied.”).

Title 17 U.S.C. § 106, titled “Exclusive rights in copyrighted works,” states:

Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

Again, nothing in that provision suggests differential treatment of de minimis copying of sound recordings compared to, say, sculptures. Although subsection (6) deals exclusively with sound recordings, that subsection concerns public performances; nothing in its text bears on de minimis copying.

Instead, Plaintiff’s statutory argument hinges on the third sentence of 17 U.S.C. § 114(b), which states:

The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.

Like all the other sentences in § 114(b), the third sentence imposes an express limitation on the rights of a copyright holder: “The exclusive rights of the owner of a copyright in a sound recording … do not extend to the making or duplication of another sound recording [with certain qualities].”

A straightforward reading of the third sentence in § 114(b) reveals Congress’ intended limitation on the rights of a sound recording copyright holder: A new recording that mimics the copyrighted recording is not an infringement, even if the mimicking is very well done, so long as there was no actual copying. That is, if a band played and recorded its own version of Love Break in a way that sounded very similar to the copyrighted recording of Love Break, then there would be no infringement so long as there was no actual copying of the recorded Love Break. But the quoted passage does not speak to the question that we face: whether Congress intended to eliminate the longstanding de minimis exception for sound recordings in all circumstances even where, as here, the new sound recording as a whole sounds nothing like the original.

Even if there were some ambiguity as to congressional intent with respect to § 114(b), the legislative history clearly confirms our analysis on each of the above points. Congress intended § 114 to limit, not to expand, the rights of copyright holders.

With respect to § 114(b) specifically, a House Report stated:

Subsection (b) of section 114 makes clear that statutory protection for sound recordings extends only to the particular sounds of which the recording consists, and would not prevent a separate recording of another performance in which those sounds are imitated. Thus, infringement takes place whenever all or any substantial portion of the actual sounds that go to make up a copyrighted sound recording are reproduced in phonorecords by repressing, transcribing, recapturing off the air, or any other method, or by reproducing them in the soundtrack or audio portion of a motion picture or other audiovisual work. Mere imitation of a recorded performance would not constitute a copyright infringement even where one performer deliberately sets out to simulate another’s performance as exactly as possible.

That passage strongly supports the natural reading of § 114(b), discussed above. Congress intended to make clear that imitation of a recorded performance cannot be infringement so long as no actual copying is done. There is no indication that Congress intended, through § 114(b), to expand the rights of a copyright holder to a sound recording.

Perhaps more importantly, the quoted passage articulates the principle that “infringement takes place whenever all or any substantial portion of the actual sounds … are reproduced.” That is, when enacting this specific statutory provision, Congress clearly understood that the de minimis exception applies to copyrighted sound recordings, just as it applies to all other copyrighted works. In sum, the statutory text, confirmed by the legislative history, reveals that Congress intended to maintain the de minimis exception for copyrighted sound recordings.

In coming to a different conclusion, the Sixth Circuit reasoned as follows:

[T]he rights of sound recording copyright holders under clauses (1) and (2) of section 106 “do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.” 17 U.S.C. § 114(b) (emphasis added). The significance of this provision is amplified by the fact that the Copyright Act of 1976 added the word “entirely” to this language. Compare Sound Recording Act of 1971, Pub. L. 92-140, 85 Stat. 391 (Oct. 15, 1971) (adding subsection (f) to former 17 U.S.C. § 1) (“does not extend to the making or duplication of another sound recording that is an independent fixation of other sounds”). In other words, a sound recording owner has the exclusive right to “sample” his own recording.

We reject that interpretation of § 114(b). Bridgeport ignored the statutory structure and § 114(b)’s express limitation on the rights of a copyright holder. Bridgeport also declined to consider legislative history on the ground that “digital sampling wasn’t being done in 1971.” But the state of technology is irrelevant to interpreting Congress’ intent as to statutory structure. Moreover, as Nimmer points out, Bridgeport‘s reasoning fails on its own terms because contemporary technology plainly allowed the copying of small portions of a protected sound recording.

Close examination of Bridgeport’s interpretive method further exposes its illogic. In effect, Bridgeport inferred from the fact that “exclusive rights … do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds,” 17 U.S.C. § 114(b) (emphases added), the conclusion that exclusive rights do extend to the making of another sound recording that does not consist entirely of an independent fixation of other sounds. As pointed out by Nimmer, Bridgeport’s interpretive method “rests on a logical fallacy.” A statement that rights do not extend to a particular circumstance does not automatically mean that the rights extend to all other circumstances. In logical terms, it is a fallacy to infer the inverse of a conditional from the conditional. E.g., Joseph G. Brennan, A Handbook of Logic 79–80 (2d ed. 1961).

For example, take as a given the proposition that “if it has rained, then the grass is not dry.” It does not necessarily follow that “if it has not rained, then the grass is dry.” Someone may have watered the lawn, for instance. We cannot infer the second if-then statement from the first. The first if-then statement does not tell us anything about the condition of the grass if it has not rained. Accordingly, even though it is true that, “if the recording consists entirely of independent sounds, then the copyright does not extend to it,” that statement does not necessarily mean that “if the recording does not consist entirely of independent sounds, then the copyright does extend to it.”

The Sixth Circuit also looked beyond the statutory text, to the nature of a sound recording, and reasoned:

[E]ven when a small part of a sound recording is sampled, the part taken is something of value. No further proof of that is necessary than the fact that the producer of the record or the artist on the record intentionally sampled because it would (1) save costs, or (2) add something to the new recording, or (3) both. For the sound recording copyright holder, it is not the “song” but the sounds that are fixed in the medium of his choice. When those sounds are sampled they are taken directly from that fixed medium. It is a physical taking rather than an intellectual one.

We disagree for three reasons. First, the possibility of a “physical taking” exists with respect to other kinds of artistic works as well, such as photographs, as to which the usual de minimis rule applies. See, e.g., Sandoval v. New Line Cinema Corp., 147 F.3d 215, 216 (2d Cir. 1998) (affirming summary judgment to the defendant because the defendant’s use of the plaintiff’s photographs in a movie was de minimis). A computer program can, for instance, “sample” a piece of one photograph and insert it into another photograph or work of art. We are aware of no copyright case carving out an exception to the de minimis requirement in that context, and we can think of no principled reason to differentiate one kind of “physical taking” from another. Second, even accepting the premise that sound recordings differ qualitatively from other copyrighted works and therefore could warrant a different infringement rule, that theoretical difference does not mean that Congress actually adopted a different rule. Third, the distinction between a “physical taking” and an “intellectual one,” premised in part on “sav[ing] costs” by not having to hire musicians, does not advance the Sixth Circuit’s view. The Supreme Court has held unequivocally that the Copyright Act protects only the expressive aspects of a copyrighted work, and not the “fruit of the [author’s] labor.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349 (1991). Indeed, the Supreme Court in Feist explained at length why, though that result may seem unfair, protecting only the expressive aspects of a copyrighted work is actually a key part of the design of the copyright laws.

Because we conclude that Congress intended to maintain the “de minimis” exception for copyrights to sound recordings, we take the unusual step of creating a circuit split by disagreeing with the Sixth Circuit’s contrary holding in Bridgeport. We do so only after careful reflection because, as we noted in Seven Arts Filmed Entertainment Ltd. v. Content Media Corp., 733 F.3d 1251, 1256 (9th Cir. 2013), “the creation of a circuit split would be particularly troublesome in the realm of copyright. Creating inconsistent rules among the circuits would lead to different levels of protection in different areas of the country, even if the same alleged infringement is occurring nationwide.” We acknowledge that our decision has consequences. But the goal of avoiding a circuit split cannot override our independent duty to determine congressional intent. Otherwise, we would have no choice but to blindly follow the rule announced by whichever circuit court decided an issue first, even if we were convinced, as we are here, that our sister circuit erred.

Moreover, other considerations suggest that the “troublesome” consequences ordinarily attendant to the creation of a circuit split are diminished here. In declining to create a circuit split in Seven Arts, we noted that “the leading copyright treatise,” Nimmer, agreed with the view of our sister circuits. As to the issue before us, by contrast, Nimmer devotes many pages to explaining why the Sixth Circuit’s opinion is, in no uncertain terms, wrong.

Additionally, as a practical matter, a deep split among the federal courts already exists. Since the Sixth Circuit decided Bridgeport, almost every district court not bound by that decision has declined to apply Bridgeport’s rule. Although we are the first circuit court to follow a different path than Bridgeport’s, we are in well-charted territory.

Plaintiff next argues that, because Congress has not amended the copyright statute in response to Bridgeport, we should conclude that Bridgeport correctly divined congressional intent. We disagree. The Supreme Court has held that congressional inaction in the face of a judicial statutory interpretation, even with respect to the Supreme Court’s own decisions affecting the entire nation, carries almost no weight.

Finally, Plaintiff advances several reasons why Bridgeport’s rule is superior as a matter of policy. For example, the Sixth Circuit opined that its bright-line rule was easy to enforce; that “the market will control the license price and keep it within bounds”; and that “sampling is never accidental” and is therefore easy to avoid. Those arguments are for a legislature, not a court. They speak to what Congress could decide; they do not inform what Congress actually decided.⁴

We hold that the “de minimis” exception applies to actions alleging infringement of a copyright to sound recordings.

__________

Check Your Understanding – VMG Salsoul

Question 1. In VMG Salsoul why did the court find no infringement?

Socratic Script

How does the circuit split between the Ninth Circuit and Sixth Circuit affect the outcome in VMG Salsoul?

B. The Derivative Works Right

Section 101 of the 1976 Act defines a “derivative work” as:

a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship[.]

Section 106 gives copyright owners the exclusive right to make derivative works based on the copyrighted work. Note that in the vast majority of cases, infringement of the derivative works right will necessarily entail infringement of the reproduction right as well, rendering the derivative works right redundant. This is because of the expansive nature in which courts have defined “copying” under the doctrine of non-literal infringement. The creation of an unauthorized translation of a novel in a different language, for example, will generally infringe the reproduction right as well as the derivatives works right, as would making a motion picture based on the novel, or a videogame based on the motion picture. Metro-Goldwyn-Mayer, Inc. v. Showcase Atlanta Coop. Prods., Inc., 479 F. Supp. 351 (N.D. Ga. 1979).

Nimmer of Copyright, the leading treatise on copyright law, expresses the view that the derivative works right “may be thought to be completely superfluous,” and of no substantive significance except in “some exotic situations.” This is because, according to the treatise’s author, any adaptation of a copyrighted work that does not infringe the work’s reproduction right would likewise not infringe the right to make derivative works. “On the other hand, if the right to make derivative works, i.e., the adaptation right, has been infringed, then there is necessarily also an infringement of either the reproduction or performance right.” See, 2 Nimmer on Copyright § 8.09 (2019).

Nevertheless, there have been some cases in which the derivative works right has been found to be infringed even though the reproduction right was not. For example, in Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988), the court found that the defendant had violated the derivative works right when it removed copyrighted prints from a book, which had been lawfully purchased, and mounted those prints on tiles. Significantly, no reproduction of the prints occurred. But note that the Seventh Circuit subsequently rejected the Mirage court’s interpretation of the derivative works right in Lee v. A.R.T. Company, 125 F.3d 580 (7th Cir. 1997), and many would argue that Lee is the better reasoned decision. Suffice it to say that circumstances do exist in which the derivative works right is not superfluous, and can play a substantive role in copyright law.

In the following decision, for example, the court concludes that the copyright holder will likely succeed at trial in proving infringement of its right to prepare derivative works under 17 U.S.C. § 106(2). Although the § 106(1) reproduction right is not addressed, the decision was a close one, requiring the Ninth Circuit to reverse the district court’s decision and distinguish the facts of the case over an earlier Ninth Circuit decision, Galoob, which held that a similar product did not infringe the derivative works right. Although it is not entirely clear whether the court would have found the same likelihood that the copyright holder would succeed in establishing infringement of the reproduction right, this could be an example of § 106(2) being applied in a manner that is not entirely redundant with § 106(1).

Some things to consider when reading Micro Star v. Formgen:

1. The district court concludes that under Galoob the copyright holder was unlikely to succeed in establishing infringement of the derivative works right. What is the rationale behind the Ninth Circuit’s reversal of the district court’s conclusion?
2. Note the court’s use of analogy, analogizing the allegedly infringing computer program to instructions for a paint-by-numbers kit, sheet music, and a piece of pink cellophane that is put in front of a television screen to make everything look pinker.
3. Do you think the copyright holder would have been likely to succeed in establishing infringement of the reproduction right, as opposed to the derivative works right?

Micro Star v. Formgen Inc.

154 F.3d 1107 (9th Cir. 1998)

KOZINSKI, Circuit Judge.

Duke Nukem routinely vanquishes Octabrain and the Protozoid Slimer. But what about the dreaded Micro Star?

I

FormGen Inc. made, distributed and own the rights to Duke Nukem 3D (D/N-3D), an immensely popular (and very cool) computer game. D/N-3D is played from the first-person perspective; the player assumes the personality and point of view of the title character, who is seen on the screen only as a pair of hands and an occasional boot, much as one might see oneself in real life without the aid of a mirror. Players explore a futuristic city infested with evil aliens and other hazards. The goal is to zap them before they zap you, while searching for the hidden passage to the next level. The basic game comes with twenty-nine levels, each with a different combination of scenery, aliens, and other challenges. The game also includes a “Build Editor,” a utility that enables players to create their own levels. With FormGen’s encouragement, players frequently post levels they have created on the Internet where others can download them. Micro Star, a computer software distributor, did just that: It downloaded 300 user-created levels and stamped them onto a CD, which it then sold commercially as Nuke It (N/I).

Micro Star filed suit in district court, seeking a declaratory judgment that N/I did not infringe on any of FormGen’s copyrights. Relying on Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965 (9th Cir. 1992), the district court held that N/I was not a derivative work and therefore did not infringe FormGen’s copyright.

III

FormGen alleges that its copyright is infringed by Micro Star’s unauthorized commercial exploitation of user-created game levels. In order to understand FormGen’s claims, one must first understand the way D/N-3D works. The game consists of three separate components: the game engine, the source art library and the MAP files. The game engine is the heart of the computer program; in some sense, it is the program. It tells the computer when to read data, save and load games, play sounds and project images onto the screen. In order to create the audiovisual display for a particular level, the game engine invokes the MAP file that corresponds to that level. Each MAP file contains a series of instructions that tell the game engine (and, through it, the computer) what to put where. For instance, the MAP file might say scuba gear goes at the bottom of the screen. The game engine then goes to the source art library, finds the image of the scuba gear, and puts it in just the right place on the screen. The MAP file describes the level in painstaking detail, but it does not actually contain any of the copyrighted art itself; everything that appears on the screen actually comes from the art library. Think of the game’s audiovisual display as a paint-by-numbers kit. The MAP file might tell you to put blue paint in section number 565, but it doesn’t contain any blue paint itself; the blue paint comes from your palette, which is the low-tech analog of the art library, while you play the role of the game engine. When the player selects one of the N/I levels, the game engine references the N/I MAP files, but still uses the D/N-3D art library to generate the images that make up that level.

FormGen points out that a copyright holder enjoys the exclusive right to prepare derivative works based on D/N-3D. See 17 U.S.C. § 106(2) (1994). According to FormGen, the audiovisual displays generated when D/N-3D is run in conjunction with the N/I CD MAP files are derivative works that infringe this exclusivity. Is FormGen right? The answer is not obvious.

The Copyright Act defines a derivative work as

a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work.”

Id. § 101. The statutory language is hopelessly overbroad, however, for “[e]very book in literature, science and art, borrows and must necessarily borrow, and use much which was well known and used before.” Emerson v. Davies, 8 F. Cas. 615, 619 (C.C.D.Mass.1845) (No. 4436), quoted in 1 Nimmer on Copyright, § 3.01, at 3–2 (1997). To narrow the statute to a manageable level, we have developed certain criteria a work must satisfy in order to qualify as a derivative work. One of these is that a derivative work must exist in a “concrete or permanent form,” Galoob, 964 F.2d at 967, and must substantially incorporate protected material from the preexisting work, see Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir.1984). Micro Star argues that N/I is not a derivative work because the audiovisual displays generated when D/N-3D is run with N/I’s MAP files are not incorporated in any concrete or permanent form, and the MAP files do not copy any of D/N-3D’s protected expression. It is mistaken on both counts.

The requirement that a derivative work must assume a concrete or permanent form was recognized without much discussion in Galoob. There, we noted that all the Copyright Act’s examples of derivative works took some definite, physical form and concluded that this was a requirement of the Act. Obviously, N/I’s MAP files themselves exist in a concrete or permanent form; they are burned onto a CD–ROM. But what about the audiovisual displays generated when D/N-3D runs the N/I MAP files—i.e., the actual game level as displayed on the screen? Micro Star argues that, because the audiovisual displays in Galoob didn’t meet the “concrete or permanent form” requirement, neither do N/I’s.

In Galoob, we considered audiovisual displays created using a device called the Game Genie, which was sold for use with the Nintendo Entertainment System. The Game Genie allowed players to alter individual features of a game, such as a character’s strength or speed, by selectively blocking the value for a single data byte sent by the game cartridge to the Nintendo console and replacing it with a new value. Players chose which data value to replace by entering a code; over a billion different codes were possible. The Game Genie was dumb; it functioned only as a window into the computer program, allowing players to temporarily modify individual aspects of the game.

Nintendo sued, claiming that when the Game Genie modified the game system’s audiovisual display, it created an infringing derivative work. We rejected this claim because “a derivative work must incorporate a protected work in some concrete or permanent form.” The audiovisual displays generated by combining the Nintendo System with the Game Genie were not incorporated in any permanent form; when the game was over, they were gone. Of course, they could be reconstructed, but only if the next player chose to reenter the same codes.⁵

Micro Star argues that the MAP files on N/I are a more advanced version of the Game Genie, replacing old values (the MAP files in the original game) with new values (N/I’s MAP files). But, whereas the audiovisual displays created by Game Genie were never recorded in any permanent form, the audiovisual displays generated by D/N-3D from the N/I MAP files are in the MAP files themselves. In Galoob, the audiovisual display was defined by the original game cartridge, not by the Game Genie; no one could possibly say that the data values inserted by the Game Genie described the audiovisual display. In the present case the audiovisual display that appears on the computer monitor when a N/I level is played is described—in exact detail—by a N/I MAP file.

This raises the interesting question whether an exact, down to the last detail, description of an audiovisual display (and—by definition—we know that MAP files do describe audiovisual displays down to the last detail) counts as a permanent or concrete form for purposes of Galoob. We see no reason it shouldn’t. What, after all, does sheet music do but describe in precise detail the way a copyrighted melody sounds? See 1 William F. Patry, Copyright Law and Practice 168 (1994) (“[A] musical composition may be embodied in sheet music….”). To be copyrighted, pantomimes and dances may be “described in sufficient detail to enable the work to be performed from that description.” Id. at 243 (citing Compendium II of Copyright Office Practices § 463). Similarly, the N/I MAP files describe the audiovisual display that is to be generated when the player chooses to play D/N-3D using the N/I levels. Because the audiovisual displays assume a concrete or permanent form in the MAP files, Galoob stands as no bar to finding that they are derivative works.

In addition, “[a] work will be considered a derivative work only if it would be considered an infringing work if the material which it has derived from a preexisting work had been taken without the consent of a copyright proprietor of such preexisting work.” Mirage Editions v. Albuquerque A.R.T. Co., 856 F.2d 1341, 1343 (quoting 1 Nimmer on Copyright § 3.01 (1986)). “To prove infringement, [FormGen] must show that [D/N-3D’s and N/I’s audiovisual displays] are substantially similar in both ideas and expression.” Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir.1984). Similarity of ideas may be shown by comparing the objective details of the works: plot, theme, dialogue, mood, setting, characters, etc. Similarity of expression focuses on the response of the ordinary reasonable person, and considers the total concept and feel of the works. FormGen will doubtless succeed in making these showings since the audiovisual displays generated when the player chooses the N/I levels come entirely out of D/N-3D’s source art library. Cf. Atari, Inc. v. North Am. Philips Consumer Elec. Corp., 672 F.2d 607, 620 (7th Cir.1982) (finding two video games substantially similar because they shared the same “total concept and feel”).

Micro Star further argues that the MAP files are not derivative works because they do not, in fact, incorporate any of D/N-3D’s protected expression. In particular, Micro Star makes much of the fact that the N/I MAP files reference the source art library, but do not actually contain any art files themselves. Therefore, it claims, nothing of D/N-3D’s is reproduced in the MAP files. In making this argument, Micro Star misconstrues the protected work. The work that Micro Star infringes is the D/N-3D story itself—a beefy commando type named Duke who wanders around post-Apocalypse Los Angeles, shooting Pig Cops with a gun, lobbing hand grenades, searching for medkits and steroids, using a jetpack to leap over obstacles, blowing up gas tanks, avoiding radioactive slime. A copyright owner holds the right to create sequels, see Trust Co. Bank v. MGM/UA Entertainment Co., 772 F.2d 740 (11th Cir.1985), and the stories told in the N/I MAP files are surely sequels, telling new (though somewhat repetitive) tales of Duke’s fabulous adventures. A book about Duke Nukem would infringe for the same reason, even if it contained no pictures.

IV

FormGen will likely succeed at trial in proving that Micro Star has infringed its copyright.

__________

Check Your Understanding – Micro Star

Question 1. In the Ninth Circuit (according to the court in Micro Star), which of the following is required in order for a work to qualify as a derivative work?

Question 2. What aspect of Duke Nukem 3D was found to be infringed by Micro Star?

Although the creator of a derivative work right can often claim copyright in the copyrightable elements introduced into the derivative work, i.e., “incremental original expression” that appears for the first time in the derivative work, the derivative work’s creator might be precluded from claiming any copyright in the derivative work, including for copyrightable expression added to the work, if the creation of the derivative work was not authorized by the owner of the copyright in the preexisting work. The following decision explores the contours of this aspect of the derivative works right.

Some things to consider when reading Schrock:

1. The court assumes that photographs at issue in this case are “derivative works,” which the Copyright Act defines as “a work based upon one or more preexisting works.” In this case, the “preexisting works” are toys that embody copyrighted animated characters from a children’s TV show, and the purported derivative works are photographs of these toys.
2. The district court found, on a motion for summary judgment, that the plaintiff had no copyright in the photographs. The district court’s decision was based largely on its interpretation of an earlier Seventh Circuit decision, Gracen v. Bradford Exchange, a controversial opinion authored by Judge Posner. What was the rationale behind Posner’s statements in Gracen? How, and why, did the Schrock court reject, or at least “clarify,” the statements made in Gracen?
3. What aspects of a derivative work can be copyrighted?
4. Why is the copyright in a derivative work generally “thin”?
5. Why is there “deep disagreement” as to whether photographs of a copyrighted work are derivative works?
6. Consider the role copyright registration plays in the case.
7. Why did the Seventh Circuit reverse the district court’s decision? What is the district court instructed to do on remand?

Schrock v. Learning Curve Int’l, Inc.

586 F.3d 513 (7th Cir. 2009)

SYKES, Circuit Judge.

HIT Entertainment (“HIT”) owns the copyright to the popular “Thomas & Friends” train characters, and it licensed Learning Curve International (“Learning Curve”) to make toy figures of its characters. Learning Curve in turn hired Daniel Schrock, a professional photographer, to take pictures of the toys for promotional materials. Learning Curve used Schrock’s services on a regular basis for about four years and thereafter continued to use some of his photographs in its advertising and on product packaging. After Learning Curve stopped giving him work, Schrock registered his photos for copyright protection and sued Learning Curve and HIT for infringement.

The district court granted summary judgment for the defendants, holding that Schrock has no copyright in the photos. The court classified the photos as “derivative works” under the Copyright Act—derivative, that is, of the “Thomas & Friends” characters, for which HIT owns the copyright—and held that Schrock needed permission from Learning Curve (HIT’s licensee) not only to make the photographs but also to copyright them. Because Schrock had permission to make but not permission to copyright the photos, the court dismissed his claim for copyright infringement.

We reverse. We assume for purposes of this decision that the district court correctly classified Schrock’s photographs as derivative works. It does not follow, however, that Schrock needed authorization from Learning Curve to copyright the photos. As long as he was authorized to make the photos (he was), he owned the copyright in the photos to the extent of their incremental original expression. In requiring permission to make and permission to copyright the photos, the district court relied on language in Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir.1983), suggesting that both are required for copyright in a derivative work. We have more recently explained, however, that copyright in a derivative work arises by operation of law—not through authority from the owner of the copyright in the underlying work—although the parties may alter this default rule by agreement. See Liu v. Price Waterhouse LLP, 302 F.3d 749, 755 (7th Cir.2002). Schrock created the photos with permission and therefore owned the copyright to the photos provided they satisfied the other requirements for copyright and the parties did not contract around the default rule.

We also take this opportunity to clarify another aspect of Gracen that is prone to misapplication. Gracen said that “a derivative work must be substantially different from the underlying work to be copyrightable.” 698 F.2d at 305. This statement should not be understood to require a heightened standard of originality for copyright in a derivative work. We have more recently explained that “the only ‘originality’ required for [a] new work to be copyrightable … is enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguished from its predecessors.” Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 929 (7th Cir.2003). Here, Schrock’s photos of Learning Curve’s “Thomas & Friends” toys possessed sufficient incremental original expression to qualify for copyright.

But the record doesn’t tell us enough about the agreements between the parties for us to determine whether they agreed to alter the default rule regarding copyright or whether Learning Curve had an implied license to continue to use Schrock’s photos. Whether Schrock could copyright his photographs and maintain an infringement action against the defendants depends on the contractual understandings between Schrock, Learning Curve, and HIT. Accordingly, we remand to the district court for further proceedings consistent with this opinion.

I. Background

HIT is the owner of the copyright in the “Thomas & Friends” properties, and Learning Curve is a producer and distributor of children’s toys. HIT and Learning Curve entered into a licensing agreement granting Learning Curve a license to create and market toys based on HIT’s characters. HIT and Learning Curve maintain (through an affidavit of HIT’s vice-president of licensing) that HIT retained all intellectual-property rights in the works produced under the license. The licensing agreement, however, is not in the record.

In 1999 Learning Curve retained Daniel Schrock to take product photographs of its toys, including those based on HIT’s characters, for use in promotional materials. On numerous occasions during the next four years, Schrock photographed several lines of Learning Curve’s toys, including many of the “Thomas & Friends” toy trains, related figures, and train-set accessories. Schrock invoiced Learning Curve for this work, and some of the invoices included “usage restrictions” purporting to limit Learning Curve’s use of his photographs to two years. Learning Curve paid the invoices in full—in total more than $400,000.

Learning Curve stopped using Schrock’s photography services in mid–2003 but continued to use some of his photos in its printed advertising, on packaging, and on the internet. In 2004 Schrock registered his photos for copyright protection and sued HIT and Learning Curve for infringement[.] HIT and Learning Curve moved for summary judgment, arguing primarily that Schrock’s photos were derivative works and not sufficiently original to claim copyright protection, and that neither HIT nor Learning Curve ever authorized Schrock to copyright the photos. They argued in the alternative that Schrock granted them an unlimited oral license to use the photos.

The district court granted summary judgment for the defendants. The judge began by noting the long tradition of recognizing copyright protection in photographs but said he would nonetheless “eschew” the question whether Schrock’s photographs were sufficiently original to copyright. The judge focused instead on whether the photos were derivative works under the Copyright Act and concluded that they were. Then, following language in Gracen, the judge held that Learning Curve’s permission to make the photos was not enough to trigger Schrock’s copyright in them; the judge said Schrock must also have Learning Curve’s permission to copyright the photos. Schrock did not have that permission, so the judge concluded that Schrock had no copyright in the photos and dismissed his claim for copyright infringement. Schrock appealed.

II. Discussion

Schrock argues that the district judge mistakenly classified his photos as derivative works and misread or misapplied Gracen. He contends that his photos are not derivative works, and even if they are, his copyright is valid and enforceable because he had permission from Learning Curve to photograph the underlying copyrighted works and his photos contained sufficient incremental original expression to qualify for copyright. HIT and Learning Curve defend the district court’s determination that the photos are derivative works and argue that the court properly read Gracen to require permission to copyright as well as permission to make the derivative works. Alternatively, they maintain that Schrock’s photographs contain insufficient originality to be copyrightable[.] Finally, the defendants ask us to affirm on the independent ground that Schrock orally granted them an unlimited license to use his works.

As a general matter, a plaintiff asserting copyright infringement must prove: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). There is no dispute here about copying; Learning Curve used Schrock’s photos in its promotional materials. The focus instead is on the validity of Schrock’s asserted copyright in the photos. The Copyright Act provides that “[c]opyright protection subsists … in original works of authorship fixed in any tangible medium of expression … from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102(a).

Much of the briefing on appeal—and most of the district court’s analysis—concerned the classification of the photos as derivative works. A “derivative work” is:

[A] work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.

17 U.S.C. § 101. The Copyright Act specifically grants the author of a derivative work copyright protection in the incremental original expression he contributes as long as the derivative work does not infringe the underlying work. See id. § 103(a), (b); see also Pickett v. Prince, 207 F.3d 402, 405 (7th Cir.2000); Lee v. A.R.T. Co., 125 F.3d 580, 582 (7th Cir.1997). The copyright in a derivative work, however, “extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work.” 17 U.S.C. § 103(b).

A. Photographs as Derivative Works

Whether photographs of a copyrighted work are derivative works is the subject of deep disagreement among courts and commentators alike. See 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 3.03[C][1], at 3–20.3 (Aug.2009). The district court held that Schrock’s photos came within the definition of derivative works because they “recast, transformed, or adapted” the three-dimensional toys into a different, two-dimensional medium. For this conclusion the judge relied in part on language in Gracen and in the Ninth Circuit’s decision in Ets–Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir.2000), recognizing, however, that neither decision directly decided the matter. Gracen did not involve photographs at all, and although Ets–Hokin did, the Ninth Circuit ultimately sidestepped the derivative-works question and rested its decision on other grounds.

We need not resolve the issue definitively here. The classification of Schrock’s photos as derivative works does not affect the applicable legal standard for determining copyrightability, although as we have noted, it does determine the scope of copyright protection. Accordingly, we will assume without deciding that each of Schrock’s photos qualifies as a derivative work within the meaning of the Copyright Act.

B. Originality and Derivative Works

As a constitutional and statutory matter, “[t]he sine qua non of copyright is originality.” Feist Publ’ns, Inc., 499 U.S. at 345, see 17 U.S.C. § 102. Originality in this context “means only that the work was independently created by the author … and that it possesses at least some minimal degree of creativity.” Feist Publ’ns, Inc., 499 U.S. at 345. The Supreme Court emphasized in Feist that “the requisite level of creativity is extremely low; even a slight amount will suffice.” The Court also explained that “[o]riginality does not signify novelty; a work may be original even though it closely resembles other works.” What is required is “independent creation plus a modicum of creativity.”

Federal courts have historically applied a generous standard of originality in evaluating photographic works for copyright protection. In some cases, the original expression may be found in the staging and creation of the scene depicted in the photograph. See, e.g., Mannion v. Coors Brewing Co., 377 F.Supp.2d 444, 452 (S.D.N.Y.2005). But in many cases, the photographer does not invent the scene or create the subject matter depicted in it. Rather, the original expression he contributes lies in the rendition of the subject matter—that is, the effect created by the combination of his choices of perspective, angle, lighting, shading, focus, lens, and so on. Most photographs contain at least some originality in their rendition, see Mannion, 377 F.Supp.2d at 452 (“Unless a photograph replicates another work with total or near-total fidelity, it will be at least somewhat original in the rendition.”), except perhaps for a very limited class of photographs that can be characterized as “slavish copies” of an underlying work, Bridgeman Art Library, Ltd. v. Corel Corp., 25 F.Supp.2d 421, 427 (S.D.N.Y.1998) (finding no originality in transparencies of paintings where the goal was to reproduce those works exactly and thus to minimize or eliminate any individual expression).

Our review of Schrock’s photographs convinces us that they do not fall into the narrow category of photographs that can be classified as “slavish copies,” lacking any independently created expression. To be sure, the photographs are accurate depictions of the three-dimensional “Thomas & Friends” toys, but Schrock’s artistic and technical choices combine to create a two-dimensional image that is subtly but nonetheless sufficiently his own. This is confirmed by Schrock’s deposition testimony describing his creative process in depicting the toys. Schrock explained how he used various camera and lighting techniques to make the toys look more “life like,” “personable,” and “friendly.” He explained how he tried to give the toys “a little bit of dimension” and that it was his goal to make the toys “a little bit better than what they look like when you actually see them on the shelf.” The original expression in the representative sample is not particularly great (it was not meant to be), but it is enough under the applicable standard to warrant the limited copyright protection accorded derivative works under § 103(b).

Aside from arguing that the works fail under the generally accepted test for originality, Learning Curve and HIT offer two additional reasons why we should conclude that Schrock’s photographs are not original. First, they claim that the photos are intended to serve the “purely utilitarian function” of identifying products for consumers. The purpose of the photographs, however, is irrelevant. See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903).

The defendants’ second and more substantial argument is that it is not enough that Schrock’s photographs might pass the ordinary test for originality; they claim that as derivative works, the photos are subject to a higher standard of originality. A leading copyright commentator disagrees. The Nimmer treatise maintains that the quantum of originality required for copyright in a derivative work is the same as that required for copyright in any other work. See 1 NIMMER ON COPYRIGHT § 3.01, at 3–2, § 3.03[A], at 3–7. More particularly, Nimmer says the relevant standard is whether a derivative work contains a “nontrivial” variation from the preexisting work “sufficient to render the derivative work distinguishable from [the] prior work in any meaningful manner.” The caselaw generally follows this formulation. See, e.g., Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 34–35 (2d Cir.1982) (holding that numerous minor changes in an illustration of Paddington Bear were sufficiently nontrivial because they combined to give Paddington a “different, cleaner ‘look’ ”); Millworth Converting Corp. v. Slifka, 276 F.2d 443, 445 (2d Cir.1960) (holding that embroidered reproduction of a public-domain embroidery of Peter Pan was sufficiently distinguishable because the latter gave a “three-dimensional look” to the former embroidery).

Learning Curve and HIT argue that our decision in Gracen established a more demanding standard of originality for derivative works. Gracen involved an artistic competition in which artists were invited to submit paintings of the character Dorothy from the Metro–Goldwyn–Mayer (“MGM”) movie The Wizard of Oz. Participating artists were given a still photograph of Dorothy from the film as an exemplar, and the paintings were solicited and submitted with the understanding that the best painting would be chosen for a series of collector’s plates. Gracen, 698 F.2d at 301. Plaintiff Gracen prevailed in the competition, but she refused to sign the contract allowing her painting to be used in the collector’s plates. The competition sponsor commissioned another artist to create a similar plate, and Gracen sued the sponsor, MGM, and the artist for copyright infringement. We held that Gracen could not maintain her infringement suit because her painting, a derivative work, was not “substantially different from the underlying work to be copyrightable.”

The concern expressed in Gracen was that a derivative work could be so similar in appearance to the underlying work that in a subsequent infringement suit brought by a derivative author, it would be difficult to separate the original elements of expression in the derivative and underlying works in order to determine whether one derivative work infringed another. The opinion offered the example of artists A and B who both painted their versions of the Mona Lisa, a painting in the public domain. See Gracen, 698 F.2d at 304. “[I]f the difference between the original and A’s reproduction is slight, the difference between A’s and B’s reproductions will also be slight, so that if B had access to A’s reproductions the trier of fact will be hard-pressed to decide whether B was copying A or copying the Mona Lisa itself.”

No doubt this concern is valid. But nothing in the Copyright Act suggests that derivative works are subject to a more exacting originality requirement than other works of authorship.

We think Gracen . . . reveals the following general principles: (1) the originality requirement for derivative works is not more demanding than the originality requirement for other works; and (2) the key inquiry is whether there is sufficient nontrivial expressive variation in the derivative work to make it distinguishable from the underlying work in some meaningful way. [The] copyright in a derivative work is thin, extending only to the incremental original expression contributed by the author of the derivative work. See 17 U.S.C. § 103(b).

As applied to photographs, we have already explained that the original expression in a photograph generally subsists in its rendition of the subject matter. If the photographer’s rendition of a copyrighted work varies enough from the underlying work to enable the photograph to be distinguished from the underlying work (aside from the obvious shift from three dimensions to two), then the photograph contains sufficient incremental originality to qualify for copyright. Schrock’s photos of the “Thomas & Friends” toys are highly accurate product photos but contain minimally sufficient variation in angle, perspective, lighting, and dimension to be distinguishable from the underlying works; they are not “slavish copies.” Accordingly, the photos qualify for the limited derivative-work copyright provided by § 103(b). However narrow that copyright might be, it at least protects against the kind of outright copying that occurred here.

C. Authorization and Derivative Works

To be copyrightable, a derivative work must not be infringing. See 17 U.S.C. § 103(a). The owner of the copyright in the underlying work has the exclusive right to “prepare derivative works based upon the copyrighted work,” 17 U.S.C. § 106(2), and it is a copyright infringement to make or sell a derivative work without a license from the owner of the copyright on the work from which the derivative work is derived. This means the author of a derivative work must have permission to make the work from the owner of the copyright in the underlying work; Gracen suggested, however, that the author of a derivative work must also have permission to copyright it. 698 F.2d at 303–04 (“[T]he question is not whether Miss Gracen was licensed to make a derivative work but whether she was also licensed to exhibit [her] painting and to copyright it…. Even if [Gracen] was authorized to exhibit her derivative works, she may not have been authorized to copyright them.”). The district court relied on this language from Gracen to conclude that Schrock has no copyright in his photos because he was not authorized by Learning Curve to copyright them. This was error.

First, Gracen‘s language presupposing a permission-to-copyright requirement was dicta; the case was actually decided on nonoriginality grounds. More importantly, the dicta was mistaken; there is nothing in the Copyright Act requiring the author of a derivative work to obtain permission to copyright his work from the owner of the copyright in the underlying work. To the contrary, the Act provides that copyright in a derivative work, like copyright in any other work, arises by operation of law once the author’s original expression is fixed in a tangible medium. “Copyright protection subsists … in original works of authorship fixed in any tangible medium of expression,” 17 U.S.C. § 102(a), and “[t]he subject matter of copyright … includes … derivative works,” id. § 103(a). “Copyright in a work protected under this title vests initially in the author or authors of the work.” Id. § 201(a). This principle applies with equal force to derivative works.

There is an important proviso: If the pertinent agreement between the parties affirmatively bars the licensee from obtaining copyright protection even in a licensed derivative work, that contractual provision [governs.]

Because the owner of a copyrighted work has the exclusive right to control the preparation of derivative works, the owner [can] limit the derivative-work author’s intellectual-property rights in the contract, license, or agreement that authorized the production of the derivative work. Although the right to claim copyright in a derivative work arises by operation of law—not by permission of the underlying copyright owner—the parties may alter this general rule by agreement.

In this case, the evidence submitted with the summary-judgment motion does not establish as a matter of law that the parties adjusted Schrock’s rights by contract[;] it may be a jury question. We say “may” because further development of the record might resolve the remaining liability questions as a matter of law. It is undisputed that Schrock was authorized to photograph the “Thomas & Friends” toys, and as the creator of the photos, Schrock’s copyright arose by operation of law. We cannot tell, however, whether the parties altered this default rule in their agreements. We note that HIT apparently attempted to do so, at least vis-à-vis Learning Curve; it claims that its licensing agreement with Learning Curve expressly retained the intellectual-property rights in all works that were based upon its copyrights. HIT also claims that the licensing agreement prohibited Learning Curve from granting any third parties copyright protection in derivative works based on HIT’s copyright. As we have noted, however, the licensing agreement is not in the record. Although HIT’s summary-judgment submission included an affidavit of its vice-president of licensing describing the agreement, the best evidence of the terms of an agreement is, of course, the agreement itself.

The terms of the agreement between Learning Curve and Schrock are even less clear. Whether Learning Curve, as HIT’s licensee, contractually limited Schrock’s right to copyright his photos is unknown; its failure to develop the record on this point, however, suggests that it did not. From what we can tell, the agreement between Learning Curve and Schrock appears to consist of a series of oral agreements followed by invoices for completed photography work. If Learning Curve was required under its licensing agreement with HIT to protect HIT’s intellectual-property rights in connection with its retention of Schrock’s photography services, it apparently failed to do so. Learning Curve argues in the alternative that Schrock granted it an unlimited license to use his photos, but on this issue the record is also ambiguous. We leave it to the district court to sort out, consistent with this opinion, whether the evidence requires a trial to determine liability among the parties.

Accordingly, for all the foregoing reasons, we REVERSE the judgment of the district court and REMAND for further proceedings consistent with this opinion.

__________

Check Your Understanding – Schrock

Question 1. What rights are granted to the author of a derivative work?

Question 2. True or False: According to Schrock, derivative works are subject to a higher standard of originality than other works.

C. The Distribution Right and the First Sale Doctrine

The distribution right allows the copyright owner to exclude others from distributing copies of the work to the public by sale, or any other “transfer of ownership,” as a gift for example, as well as rental, lease, or lending. It allows the owner to hold liable for copyright infringement anyone who, without authorization, distributes the work, even if that individual did not reproduce the work. For example, a flea market vendor that sells unauthorized “bootleg” CDs containing copyrighted music can be held liable for copyright infringement, regardless of whether or not the vendor made any unauthorized copies.

The distribution right is limited by the first sale doctrine, as set forth in § 109 of the Copyright Act. Section 109 provides,

Notwithstanding the provisions of section 106(3) [i.e., the distribution right], the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.

In other words, the distribution right in any given copy of a work is effectively extinguished by an authorized transfer of ownership, for example by sale or gift. Thus, the purchaser of a book or music CD is free to sell that book to someone else, without infringing the distribution right in any copyrighted work embodied in the book or CD. In the non-digital world, application of the first sale doctrine is generally fairly straightforward. The purchaser of a hard copy textbook can sell that book back to a bookstore, for example, and that bookstore can sell it used to another student, without infringing any copyright. With respect to digital works, such as an e-book, on the other hand, it is difficult to transfer ownership without making a digital copy of the work, and the first sale doctrine does not apply to the reproduction right—the purchaser of a copyrighted work is not authorized to make copies of that work, only to transfer ownership of the original copy. This can make it difficult, if not virtually impossible as a practical matter, to sell a used e-book without violating the reproduction right of the copyright owner. Think about it, how would you go about selling a book, musical sound recording, or videogame that you purchased by download onto your phone or computer? The issue is discussed in Anthony Reese, The First Sale Doctrine in the Era of Digital Networks, 44 B.C. L. Rev. 577 (2003), as well as The Department Of Commerce Internet Policy Task Force, White Paper on Remixes, First Sale, and Statutory Damages: Copyright Policy, Creativity, and Innovation in the Digital Economy (January 2016).

Columbia Pictures Indus., Inc. v. Garcia

996 F. Supp. 770 (N.D. Ill. 1998)

ASPEN, Chief Judge.

The plaintiffs in this case, all of whom produce, distribute, and/or license motion pictures, sued Alex Garcia for copyright and trademark infringement, alleging that he and his business rented to the public unauthorized copies of their videotapes. The plaintiffs have moved for summary judgment, and for the reasons stated below we grant the motion.

I. Background

Most of the relevant facts are not in dispute. Garcia owns and operates Master Video II, a video rental establishment in Cicero, Illinois. After an investigator from the Motion Picture Association of America, a trade association which counts most of the plaintiffs as its members, determined that Garcia was renting unauthorized duplicate videotapes, the plaintiffs secured from Judge Alesia an order directing the U.S. Marshal to seize a number of such tapes. Pursuant to that order, on December 12, 1996, two marshals seized 133 unauthorized duplicate videotapes of 102 copyrighted movies.

Garcia claims that he did not personally duplicate the tapes and that he did not have the equipment to do so. He asserts instead that he purchased all of the tapes from third parties and that his infringement, if any, was innocent.

II. Analysis

A. Infringement

We begin by observing that there is no genuine issue of material fact with respect to whether or not the tapes are authorized or unauthorized copies. They are unauthorized. This compels a finding that Garcia violated 17 U.S.C. § 106(3) [the distribution right] by renting unauthorized duplicates of copyrighted movies, though after reviewing the record in the light most favorable to Garcia, we cannot conclude that he reproduced those movies in violation of 17 U.S.C. § 106(1).

For the foregoing reasons, we grant the plaintiffs’ motion for summary judgment and award damages and an injunction.

_________

Check Your Understanding – Columbia Pictures v. Garcia

Question 1. True or false: It is possible for an individual that has never engaged in copying to violate the Copyright Act.

Some things to consider when reading UMG Recordings:

1. UMG tried to avoid the “first sale” doctrine by licensing (as opposed to selling, or in this particular case giving) the CDs to recipients. Why did it fail?
2. What is the significance of the Unordered Merchandise Statute to the resolution of this case?
3. Note the court’s observation that, with respect to software in particular, “copyright owners may create licensing arrangements so that users acquire only a license to use the particular copy of software and do not acquire title that permits further transfer or sale of that copy without the permission of the copyright owner.”
4. What could UMG have done to avoid this outcome?

UMG Recordings, Inc. v. Augusto

628 F.3d 1175 (9th Cir. 2011)

CANBY, Circuit Judge:

UMG Recordings appeals the district court’s grant of summary judgment in favor of defendant Troy Augusto on UMG’s claim of copyright infringement in violation of § 501 of the Copyright Act, which entitles copyright owners to institute an action for infringement of the exclusive right to distribute copies of the copyrighted work. See 17 U.S.C. §§ 501(a), (b), 106(3) (2006). The copies in issue comprise eight specially-produced compact discs, each embodying a copyrighted sound recording. UMG, the copyright owner, used the discs solely for marketing purposes, sending them unsolicited to individuals such as music critics and radio disc jockeys. Although Augusto was not one of those individuals, he managed to obtain the discs from various sources. He later sold them at auction, an act which UMG contends infringed its exclusive right to distribute the discs.

Augusto asserts that UMG’s initial distribution of the discs effected a transfer of ownership of the discs to the recipients, rendering the discs subject to the “first sale” doctrine, which permits one who has acquired ownership of a copy to dispose of that copy without the permission of the copyright owner. See id. § 109(a). UMG argues that the statements on the discs and the circumstances of their distribution granted only a license to each recipient, not a transfer of ownership (or “sale”) of the copy. Absent a sale, UMG remained the owner of the discs and, accordingly, the defense of the first sale doctrine would be out of Augusto’s reach. We conclude that the mailing indeed did effect a sale of the discs to the recipients for purposes of the first sale doctrine, and we affirm the order of the district court.

BACKGROUND AND PROCEDURAL HISTORY

The material facts of the case are undisputed. UMG is among the world’s largest music companies. One of its core businesses is the creation, manufacture, and sale of recorded music, or phonorecords, the copyrights of which are owned by UMG. These phonorecords generally take the form of compact discs (“CDs”).

Like many music companies, UMG ships specially-produced promotional CDs to a large group of individuals (“recipients”), such as music critics and radio programmers, that it has selected. There is no prior agreement or request by the recipients to receive the CDs. UMG does not seek or receive payment for the CDs, the content and design of which often differs from that of their commercial counterparts. Relatively few of the recipients refuse delivery of the CDs or return them to UMG, and UMG destroys those that are returned.

Most of the promotional CDs in issue in this case bore a statement (the “promotional statement”) similar to the following:

This CD is the property of the record company and is licensed to the intended recipient for personal use only. Acceptance of this CD shall constitute an agreement to comply with the terms of the license. Resale or transfer of possession is not allowed and may be punishable under federal and state laws.

Some of the CDs bore a more succinct statement, such as “Promotional Use Only—Not for Sale.”

Augusto was not among the select group of individuals slated to receive the promotional CDs. He nevertheless managed to acquire numerous such CDs, many of which he sold through online auctions at eBay.com. Augusto regularly advertised the CDs as “rare … industry editions” and referred to them as “Promo CDs.”

After several unsuccessful attempts at halting the auctions through eBay’s dispute resolution program, UMG filed a complaint against Augusto in the United States District Court for the Central District of California, alleging that Augusto had infringed UMG’s copyrights in eight promotional CDs for which it retained the “exclusive right to distribute.” The district court granted summary judgment in favor of Augusto, and UMG appealed.

DISCUSSION

To establish a prima facie case of copyright infringement, a plaintiff must show (1) ownership of a valid copyright and (2) violation by the alleged infringer of at least one of the exclusive rights granted to copyright owners by the Copyright Act (the “Act”). Section 106 of the Act grants copyright owners, such as UMG, the exclusive right, among others, “to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership.” 17 U.S.C. § 106(3). The district court held that UMG made out a prima facie case of copyright infringement: UMG established that it owned the copyright to the promotional CDs and Augusto sold the CDs without UMG’s permission.

Although UMG, as the owner of the copyright, has exclusive rights in the promotional CDs, exemptions, compulsory licenses, and defenses found in the Copyright Act narrow those rights. Augusto invokes the “first sale” doctrine embodied in § 109(a) of the Act. He argues that the circumstances attending UMG’s distribution of the discs effected a “sale” (transfer of ownership) of the discs to the original recipients and that, under the “first sale” doctrine, the recipients and subsequent owners of those particular copies were permitted to sell or otherwise dispose of those copies without authorization by the copyright holder.

In the alternative, Augusto argues that the original recipients were entitled to treat the CDs as gifts under the Unordered Merchandise Statute, enacted as part of the Postal Reorganization Act of 1970, and therefore had “the right to retain, use, discard, or dispose of [them] in any manner [they saw] fit,” in this case, by selling those CDs to the thrift shops and second-hand stores where Augusto states he purchased them. See 39 U.S.C. § 3009(a), (b) (2006).

UMG, on the other hand, contends that the promotional statement effected a license with the recipients and, because the recipients were not owners but licensees of the CDs, neither they nor Augusto were entitled to sell or otherwise transfer the CDs. See Quality King Distribs., Inc. v. L’anza Research Int’l, Inc., 523 U.S. 135, 146–47 (1998) (“[B]ecause the protection afforded by § 109(a) is available only to the ‘owner’ of a lawfully made copy …, the first sale doctrine would not provide a defense to … any nonowner such as a bailee, a licensee, a consignee, or one whose possession of the copy was unlawful.”).

The Distribution of the Promotional CDs Effected a Sale

The first sale doctrine provides that “the owner of a particular copy or phonorecord lawfully made under [the Act], or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” 17 U.S.C. § 109(a). Notwithstanding its distinctive name, the doctrine applies not only when a copy is first sold, but when a copy is given away or title is otherwise transferred without the accouterments of a sale.

A copyright owner who transfers title in a particular copy to a purchaser or donee cannot prevent resale of that particular copy. We have recognized, however, that not every transfer of possession of a copy transfers title. Particularly with regard to computer software, we have recognized that copyright owners may create licensing arrangements so that users acquire only a license to use the particular copy of software and do not acquire title that permits further transfer or sale of that copy without the permission of the copyright owner. Our most recent example of that rule is Vernor v. Autodesk, Inc., 621 F.3d 1102 (9th Cir.2010). Others are Wall Data Inc. v. Los Angeles Cnty. Sheriff’s Dept., 447 F.3d 769 (9th Cir.2006); Triad Sys. Corp. v. Se. Express Co., 64 F.3d 1330 (9th Cir.1995); MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir.1993). All of these cases dealt with the question whether arrangements with consumers amounted to sales of copies, or succeeded in awarding only licenses. They recognized that the mere labeling of an arrangement as a license rather than a sale, although it was a factor to be considered, was not by itself dispositive of the issue.

The same question is presented here. Did UMG succeed in creating a license in recipients of its promotional CDs, or did it convey title despite the restrictive labeling on the CDs? We conclude that, under all the circumstances of the CDs’ distribution, the recipients were entitled to use or dispose of them in any manner they saw fit, and UMG did not enter a license agreement for the CDs with the recipients. Accordingly, UMG transferred title to the particular copies of its promotional CDs and cannot maintain an infringement action against Augusto for his subsequent sale of those copies.

Our conclusion that the recipients acquired ownership of the CDs is based largely on the nature of UMG’s distribution. First, the promotional CDs are dispatched to the recipients without any prior arrangement as to those particular copies. The CDs are not numbered, and no attempt is made to keep track of where particular copies are or what use is made of them. As explained in greater detail below, although UMG places written restrictions in the labels of the CDs, it has not established that the restrictions on the CDs create a license agreement.

We also hold that, because the CDs were unordered merchandise, the recipients were free to dispose of them as they saw fit under the Unordered Merchandise Statute, 39 U.S.C. § 3009, which provides in pertinent part that,

(a) [e]xcept for … free samples clearly and conspicuously marked as such, … the mailing of unordered merchandise … constitutes an unfair method of competition and an unfair trade practice….

(b) Any merchandise mailed in violation of subsection (a) of this section … may be treated as a gift by the recipient, who shall have the right to retain, use, discard, or dispose of it in any manner he sees fit without any obligation whatsoever to the sender….

Id. § 3009(a), (b) (emphasis added). The statute defines “unordered merchandise” as “merchandise mailed without the prior expressed request or consent of the recipient” but leaves “merchandise” itself undefined. Id. § 3009(d).

Augusto attempts to invoke this statute directly in his defense, but the statute in terms confers rights only on recipients of unordered merchandise. Augusto does not contend that UMG shipped the promotional CDs to him, nor does he show that any of his sources in fact treated the CDs as gifts. The significance of the Unordered Merchandise Statute is not that it applies to Augusto, but that it confers on the recipients the “right to retain, use, discard, or dispose of [the CDs] in any manner that [they] see[ ] fit, without obligation to the sender,” UMG. This provision is utterly inconsistent with the terms of the license that UMG sought to impose on the recipients. Because the statute grants to the recipients the right to treat the CDs as their own, shipping the unordered CDs to the recipients rendered the recipients owners, not licensees, of the CDs for purposes of the first sale defense. This effect of the Unordered Merchandise Statute distinguishes this case from those involving computer software, where the software consumers clearly ordered and paid for the software licensed to them.

UMG contends that the Unordered Merchandise Statute clearly does not apply to its distribution of free promotional CDs, because the “main purpose” of the Statute was to control the unconscionable practice of persons who ship unordered merchandise to consumers and then trick or bully them into paying for it. Because UMG is not trying to extract payment from the recipients, it argues that the statute does not apply. But the terms of the statute do not require “bullying” for payment; it is enough that unordered merchandise is sent. The recipient is then free to treat it as a gift “without any obligation whatsoever to the sender.” In sending its promotional CDs, UMG attempts to obligate the recipient to confine the use of the CDs to promotional purposes. It serves the purpose of the statute to permit a recipient who does not wish to be so obligated to treat the unordered CD as a gift. We also have no difficulty concluding that the CDs fall within the meaning of “merchandise.” UMG’s attempt to prohibit their sale is an indication.

There are additional reasons for concluding that UMG’s distribution of the CDs did not involve a consensual licensing operation. Some of the statements on the CDs and UMG’s purported method of securing agreement to licenses militate against a conclusion that any licenses were created. The sparest promotional statement, “Promotional Use Only—Not for Sale,” does not even purport to create a license. But even the more detailed statement is flawed in the manner in which it purports to secure agreement from the recipient. The more detailed statement provides:

This CD is the property of the record company and is licensed to the intended recipient for personal use only. Acceptance of this CD shall constitute an agreement to comply with the terms of the license. Resale or transfer of possession is not allowed and may be punishable under federal and state laws.

It is one thing to say, as the statement does, that “acceptance” of the CD constitutes an agreement to a license and its restrictions, but it is quite another to maintain that “acceptance” may be assumed when the recipient makes no response at all. This record reflects no responses. Even when the evidence is viewed in the light most favorable to UMG, it does not show that any recipients agreed to enter into a license agreement with UMG when they received the CDs.

Because the record here is devoid of any indication that the recipients agreed to a license, there is no evidence to support a conclusion that licenses were established under the terms of the promotional statement. Accordingly, we conclude that UMG’s transfer of possession to the recipients, without meaningful control or even knowledge of the status of the CDs after shipment, accomplished a transfer of title.

CONCLUSION

UMG’s distribution of the promotional CDs under the circumstances effected a sale (transfer of title) of the CDs to the recipients. Further sale of those copies was therefore permissible without UMG’s authorization. The judgment of the district court dismissing UMG’s copyright infringement action against Augusto is therefore AFFIRMED.

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Check Your Understanding – UMG Recordings

Question 1. Under what circumstances can a copyright owner transfer possession of a copy of the work without invoking the first sale doctrine?

Some things to consider when reading London-Sire Recs.:

1. The defendants argue that unauthorized “peer-to-peer” file-sharing of copyrighted music does not infringe the distribution right because digital music files are not “material objects” and file sharing does not constitute distribution. Why does the court reject these arguments?
2. According to the court, what does the term “authorize” mean in the context of § 106(3), i.e., the distribution right?
3. How does the court respond to the defendant’s argument that the distribution right only extends to “actual distributions,” as opposed to merely making copies of the works “available” to the public?

London-Sire Recs., Inc. v. Doe 1

542 F. Supp. 2d 153 (D. Mass. 2008)

GERTNER, District Judge.

The plaintiffs include several of the country’s largest record companies. The defendants, the plaintiffs claim, are individual computer users—mainly college students—who use “peer-to-peer” file-sharing software to download and disseminate music without paying for it, infringing the plaintiffs’ copyrights.

I. BACKGROUND

A. Facts

Peer-to-peer software primarily exists to create decentralized networks of individual computer users. The software allows the users to communicate directly with one another, rather than routing their transmissions through a central server—thus the term “peer-to-peer” architecture, as opposed to “client-server.”

Because communications between two computers on a peer-to-peer network can take place directly, without passing through a central network server, such transactions are not easily observable by a third party.

Peer-to-peer users can also transfer files over the network. Many such files are entirely legitimate. However, other files transferred are electronic versions of copyrighted music or video files. Notably, because the files on each user’s computer are digital, another computer can make a precise copy of them with no attendant loss in quality.

In this case, the plaintiffs allege that each of the defendants has taken part in just such a file transfer. To discover potentially infringing transfers, the plaintiffs (acting through their trade association, the Recording Industry Association of America, or “RIAA”) have retained a third-party investigator, MediaSentry, Inc. (“MediaSentry”). MediaSentry essentially functions as an undercover user of the peer-to-peer networks. It connects to the network and searches for the plaintiff record companies’ copyrighted files. Upon finding the files, it downloads them. MediaSentry gathers what information it can about the computer from which the files were downloaded (the “sending computer.”) Most crucially, that information includes the date and time at which the files were downloaded and the IP number of the sending computer.

1. Whether the Plaintiffs Have Asserted a Claim Upon Which Relief Can Be Granted

Two rights reserved to the copyright holder are at issue in this case: the right “to reproduce the copyrighted work in copies or phonorecords,” 17 U.S.C. § 106(1), and the right “to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending,” id. § 106(3).

The movants and the amicus present two broad arguments, each of which requires the Court to consider the scope of a copyright holder’s exclusive rights under the statutes quoted above. First, they contend that the copyright laws require an actual dissemination of copyrighted material; merely making copyrighted material available for another person to copy, they argue, is only an attempt at infringement—which is not actionable. Second, they contend that the scope of the rights given to copyright owners by § 106 is limited by the definition of “phonorecords” as “material objects” in 17 U.S.C. § 101. In their view, the copyright owner’s rights are limited to tangible, physical objects, and purely electronic transmissions over the internet fall outside those rights.

a. Whether the Copyright Holder’s Right Extends Only to Actual Distributions

The first question the Court must address is whether the distribution right under 17 U.S.C. § 106(3) requires an actual dissemination to constitute an infringement. MediaSentry, posing as just another peer-to-peer user, can easily verify that copyrighted material has been made available for download from a certain IP address. Arguably, though, MediaSentry’s own downloads are not themselves copyright infringements because it is acting as an agent of the copyright holder, and copyright holders cannot infringe their own rights. If that argument is accepted, MediaSentry’s evidence cannot alone demonstrate an infringement.

The plaintiffs suggest two reasons why an actual distribution might not be required. First, the statute reserves to the copyright owner the right “to do and to authorize … [the distribution of] copies or phonorecords of the copyrighted work to the public.” § 106(3) (emphasis added). The language appears to grant two distinct rights: “doing” and “authorizing” a distribution. Making the copyrighted material available over the internet might constitute an actionable “authorization” of a distribution. Second, if mere authorization is not enough, the plaintiffs argue that in appropriate circumstances—including these—“making available” copyrighted material is sufficient to constitute an act of actual distribution. Neither argument has merit.

The First Circuit has squarely considered and rejected the proposition that copyright liability arises where the defendant authorized an infringement, but no actual infringement occurred. See Venegas–Hernandez v. Ass’n De Compositores & Editores de Música Latinoamericana, 424 F.3d 50, 57–58 (1st Cir.2005). It noted that Congress’ intent in adding “authorize” to the statute was to “avoid any questions as to the liability of contributory infringers.” Authorization is sufficient to give rise to liability, but only if an infringing act occurs after the authorization.

Thus, to constitute a violation of the distribution right under § 106(3), the defendants’ actions must do more than “authorize” a distribution; they must actually “do” it. The Court therefore moves to the plaintiffs’ second argument: Merely making copyrighted works available to the public is enough where, as in this case, the alleged distributor does not need to take any more affirmative steps before an unauthorized copy of the work changes hands. Other courts have split over whether that is a valid reading of the statute. Compare Hotaling v. Church of Jesus Christ of Latter–Day Saints, 118 F.3d 199 (4th Cir.1997) (holding that making copyrighted material available is sufficient to constitute a distribution) with Nat’l Car Rental Sys., Inc. v. Computer Assocs. Int’l, Inc., 991 F.2d 426, 434 (8th Cir.1993) (stating that infringement of the distribution right requires the actual dissemination of copies or phonorecords).

To suggest that “making available” may be enough, the plaintiffs rely primarily on the Fourth Circuit’s decision in Hotaling. In that case, a library had an unauthorized copy of a book, which it “made available” to the public; the defendant argued that without a showing that any member of the public actually read the book, it could not be liable for “distribution.”  The district court agreed and granted summary judgment to the defendant. The Fourth Circuit reversed:

When a public library adds a work to its collection, lists the work in its index or catalog system, and makes the work available to the borrowing or browsing public, it has completed all the steps necessary for distribution to the public. At that point, members of the public can visit the library and use the work. Were this not to be considered distribution within the meaning of § 106(3), a copyright holder would be prejudiced by a library that does not keep records of public use, and the library would unjustly profit by its own omission.

The plaintiffs contend that this case is analogous to Hotaling, and suggest that the Court should reach the same conclusion as the Fourth Circuit. But the EFF correctly points out a lacuna in the Fourth Circuit’s reasoning. Merely because the defendant has “completed all the steps necessary for distribution” does not necessarily mean that a distribution has actually occurred. It is a “distribution” that the statute plainly requires. See 17 U.S.C. § 106(3).

But that does not mean that the plaintiffs’ pleadings and evidence are insufficient. The Court can draw from the Complaint and the current record a reasonable inference in the plaintiffs’ favor—that where the defendant has completed all the necessary steps for a public distribution, a reasonable fact-finder may infer that the distribution actually took place. As in Hotaling, the defendants have completed the necessary steps for distribution, albeit electronic: Per the plaintiffs’ pleadings, each individual Doe defendant connected to the peer-to-peer network in such a way as to allow the public to make copies of the plaintiffs’ copyrighted recordings. Through their investigator, the plaintiffs have produced evidence that the files were, in fact, available for download. They have also alleged that sound recordings are illegally copied on a large scale, supporting the inference that the defendants participated in the peer-to-peer network with the intent that other users could download from the defendants copies of the plaintiffs’ copyrighted material. At least at this stage of the proceedings, that is enough. The plaintiffs have pled an actual distribution and provided some concrete evidence to support their allegation.

b. Whether the Distribution Right Is Limited to Physical, Tangible Objects

Next, the movants and the EFF contend that the distribution right under 17 U.S.C. § 106(3) is limited to physical, tangible objects. By its terms, the distribution right only extends to distributions of “phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease or lending.” In turn, 17 U.S.C. § 101 defined “phonorecords” as “material objects in which sounds … are fixed.” The movants and the EFF focus on the phrase “material object,” as well as the meaning of “sale or other transfer,” and conclude that purely electronic file sharing does not fall within the scope of the right.

The movants’ argument is sweeping, carrying substantial implications for a great deal of internet commerce—any involving computer-to-computer electronic transfers of information. Indeed, this case is an exemplar. The plaintiffs have not alleged a physical distribution. To the contrary, it is clear that their harm comes from the purely electronic copying of music files. After carefully considering the parties’ and the EFF’s arguments, the Court concludes that § 106(3) confers on copyright owners the right to control purely electronic distributions of their work.

As noted above, 17 U.S.C. § 106(3) applies to the distribution of “phonorecords.” And “phonorecords” are defined in full as follows:

‘Phonorecords’ are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term ‘phonorecords’ includes the material object in which the sounds are first fixed.

17 U.S.C. § 101. The movants and the EFF contend that the electronic distribution, if it occurred, did not involve the “distribution” of a material object “by sale or other transfer of ownership, or by rental, lease or lending,” as §§ 106(3) and 101 require. The argument has two closely related prongs-first, that no material object actually changed hands, and second, that even if it did, it was not through one of the methods of transfer enumerated in the statute.

Each of those arguments relies on an overly literal definition of “material object,” and one that ignores the phrase’s purpose in the copyright statutes. Congress intended for the copyright owner to be able to control the public distribution of items that can reproduce the artist’s sound recording. It makes no difference that the distribution occurs electronically, or that the items are electronic sequences of data rather than physical objects.

Before squarely addressing the parties’ arguments, however, the Court briefly revisits an important foundational issue—whether the electronic files at issue here can constitute “material objects” within the meaning of the copyright statutes. Doing so will help the Court explain the scope of the distribution right and frame the application of the Copyright Act to an electronic world.

(1) Electronic Files Are Material Objects

Understanding Congress’ use of “material object” requires returning to a fundamental principle of the Copyright Act of 1976. Congress drew a fundamental distinction between the “original work” which is the product of “authorship” and the multitude of material objects in which it can be embodied. Thus, in the sense of the Copyright Act, a “book” is not a work of authorship, but is a particular kind of “copy.”

The Copyright Act thus does not use materiality in its most obvious sense—to mean a tangible object with a certain heft, like a book or compact disc. Rather, it refers to materiality as a medium in which a copyrighted work can be “fixed.”

Thus, any object in which a sound recording can be fixed is a “material object.” That includes the electronic files at issue here. When a user on a peer-to-peer network downloads a song from another user, he receives into his computer a digital sequence representing the sound recording. That sequence is magnetically encoded on a segment of his hard disk. With the right hardware and software, the downloader can use the magnetic sequence to reproduce the sound recording. The electronic file (or, perhaps more accurately, the appropriate segment of the hard disk) is therefore a “phonorecord” within the meaning of the statute.

(2) The Transmission of an Electronic File Constitutes a “Distribution” Within the Meaning of § 106(3)

The movants and the EFF present two reasons why the Court should decline to find that purely electronic transmissions are a violation of the distribution right. First, they note that the distribution right is limited to “phonorecords of the copyrighted work,” 17 U.S.C. § 106(3), and that part of the definition of “phonorecords” is that they are “material objects,” id. § 101. They focus on the phrase “material objects” to suggest that a copyright owner’s distribution right only extends to “tangible” objects. Because there was no exchange of tangible objects in this case—no “hand-to-hand” exchange of physical things—they argue that the plaintiffs’ distribution right was not infringed by the defendants’ actions.

The movants’ second argument focuses on a different phrase in § 106(3): “distribution” is limited to exchanges “by sale or other transfer of ownership, or by rental, lease, or lending.” They note, correctly, that an electronic download does not divest the sending computer of its file, and therefore does not implicate any ownership rights over the sound file held by the transferor. Therefore, they conclude, an electronic file does not fit within the defined limits of the distribution right.

Section 106(3) does reach this kind of transaction. First, while the statute requires that distribution be of “material objects,” there is no reason to limit “distribution” to processes in which a material object exists throughout the entire transaction—as opposed to a transaction in which a material object is created elsewhere at its finish. Second, while the statute addresses ownership, it is the newly minted ownership rights held by the transferee that concern it, not whether the transferor gives up his own.

The statute provides copyright owners with the exclusive right “to distribute … phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.”  In turn, phonorecords are defined in part as “material objects in which sounds … are fixed by any method.” In the sense of the Copyright Act, “material objects” should not be understood as separating tangible copies from non-tangible copies. Rather, it separates a copy from the abstract original work and from a performance of the work.

Read contextually, it is clear that this right was intended to allow the author to control the rate and terms at which copies or phonorecords of the work become available to the public. In that sense, it is closely related to the reproduction right under § 106(1), but it is not the same.

An electronic file transfer is plainly within the sort of transaction that § 106(3) was intended to reach. Indeed, electronic transfers comprise a growing part of the legitimate market for copyrighted sound recordings. What matters in the marketplace is not whether a material object “changes hands,” but whether, when the transaction is completed, the distributee has a material object. The Court therefore concludes that electronic file transfers fit within the definition of “distribution” of a phonorecord.

For similar reasons, the Court concludes that an electronic file transfer can constitute a “transfer of ownership” as that term is used in § 106(3). Since the focus of § 106(3) is the ability of the author to control the market, it is concerned with the ability of a transferor to create ownership in someone else—not the transferor’s ability simultaneously to retain his own ownership.

This conclusion is supported by a comparison to the “first sale” doctrine, codified at 17 U.S.C. § 109. The “first sale” doctrine provides that once an author has released an authorized copy or phonorecord of her work, she has relinquished all control over that particular copy or phonorecord. The person who bought the copy—the “secondary” purchaser—may sell it to whomever she pleases, and at the terms she directs. The market implications are clear. The author controls the volume of copies entering the market, but once there, he has no right to control their secondary and successive redistribution. To be sure, the author retains a certain degree of control over the secondary sale, at least to the extent that he can control that redistributions [sic] through the terms in the original sales contract. But he must bring a contract suit, not an infringement action.  More often and more practically, however, the author will simply price the new copies or phonorecords to reflect the work’s value in a secondary market.

Conversely, where ownership is created through an illegal copy, the first sale doctrine does not provide a defense to a distribution suit. The distinction makes sense: where ownership is created through an illegal copy, the copyright holder has never had the chance to exercise his market rights over the copy. That is precisely the situation here.

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Check Your Understanding – London-Sire Recs.

Question 1. How does the court in London-Sire Recs. respond to defendants’ argument that digital music files are not “material objects”?

Question 2. How does the court in London-Sire Recs. respond to defendants’ argument that the distribution right only extends to “actual distributions,” as opposed to merely making copies of the works “available” to the public?

Some things to consider when reading Capitol Records v. ReDigi:

1. As mentioned earlier, as a practical matter it is often difficult, if not impossible, to sell a digital work without making a copy of it, and thereby infringing the copyright owner’s reproduction right. Significantly, the statutory provision which serves as the basis for copyright’s “first sale” doctrine literally applies only to the distribution right, not to the reproduction right. ReDigi thought it had come up with a technical solution to this problem, and used it to establish a platform which they believed would allow owners of digital copies of music to sell their copies without liability for copyright infringement. They failed, for the reasons discussed in the opinion.
2. Why did ReDigi’s first sale argument fail?
3. Can you think of a way that ReDigi might have provided a platform for the sale of digital music without incurring liability for copyright infringement?
4. What are the policy implications of this decision? Should Congress intervene by amending the copyright statute to better account for the nature of digital copyrighted works?
5. Note that the court rejects ReDigi’s fair use argument. Do you have any thoughts as to whether fair use should apply in this case? The fair use doctrine will receive extensive treatment later in this casebook.

Capitol Records, LLC v. ReDigi Inc.

910 F.3d 649 (2019)

LEVAL, Circuit Judge:

Defendant ReDigi, Inc. and its founders, Defendants Larry Rudolph and John Ossenmacher, appeal from the judgment of the United States District Court for the Southern District of New York in favor of Plaintiffs, Capitol Records, LLC, Capitol Christian Music Group, Inc., and Virgin Records IR Holdings, Inc. (“Plaintiffs”), finding copyright infringement. Defendants had created an Internet platform designed to enable the lawful resale, under the first sale doctrine, of lawfully purchased digital music files, and had hosted resales of such files on the platform. The district court concluded that, notwithstanding the “first sale” doctrine, codified in the Copyright Act of 1976, 17 U.S.C. § 109(a), ReDigi’s Internet system version 1.0 infringed the Plaintiffs’ copyrights by enabling the resale of such digital files containing sound recordings of Plaintiffs’ copyrighted music. We agree with the district court that ReDigi infringed the Plaintiffs’ exclusive rights under 17 U.S.C. § 106(1) to reproduce their copyrighted works. We make no decision whether ReDigi also infringed the Plaintiffs’ exclusive rights under 17 U.S.C. § 106(3) to distribute their works.

BACKGROUND

I. Facts

Plaintiffs are record companies, which own copyrights or licenses in sound recordings of musical performances. Plaintiffs distribute those sound recordings in numerous forms, of which the most familiar twenty years ago was the compact disc. Today, Plaintiffs also distribute their music in the form of digital files, which are sold to the public by authorized agent services, such as Apple iTunes, under license from Plaintiffs. Purchasers from the Apple iTunes online store download the files onto their personal computers or other devices.

ReDigi was founded by Defendants Ossenmacher and Rudolph in 2009 with the goal of creating enabling technology and providing a marketplace for the lawful resale of lawfully purchased digital music files.⁶ Ossenmacher served as ReDigi’s Chief Executive Officer and Rudolph, who spent twelve years as a Principal Research Scientist at the Massachusetts Institute of Technology, served as ReDigi’s Chief Technical Officer. During the period addressed by the operative complaint, ReDigi, through its system version 1.0, hosted resales of digital music files containing the Plaintiffs’ music by persons who had lawfully purchased the files from iTunes.

Considering the evidence in the light most favorable to ReDigi, ReDigi’s system version 1.0 operates as follows.

1. Music Manager: A person who owns a digital music file lawfully purchased from iTunes and intends to employ ReDigi’s system to resell it (the “user”) must first download and install onto her computer ReDigi’s “Music Manager” software program (“Music Manager”). Once Music Manager has been installed, it analyzes the digital file intended for resale, verifies that the file was originally lawfully purchased from iTunes, and scans it for indications of tampering. If the file was lawfully purchased,  Music Manager deems it an “Eligible File” that may be resold.

2. Data Migration: The ReDigi user must then cause the file to be transferred to ReDigi’s remote server, known as the “Cloud Locker.” To effectuate this transfer, ReDigi developed a new method that functions differently from the conventional file transfer. The conventional process is to reproduce the digital file at the receiving destination so that, upon completion of the transfer, the file exists simultaneously on both the receiving device and on the device from which it was transferred. If connectivity is disrupted during such a standard transfer, the process can be repeated because the file remains intact on the sender’s device.

Under ReDigi’s method—which it calls “data migration”—ReDigi’s software begins by breaking the digital music file into small “blocks” of data of roughly four thousand bytes in length. Once the file has been broken into blocks of data (“packets”), ReDigi’s system creates a “transitory copy” of each packet in the initial purchaser’s computer buffer. Upon copying (or “reading”) a packet into the initial purchaser’s computer buffer, ReDigi’s software sends a command to delete that packet of the digital file from permanent storage on the initial purchaser’s device. ReDigi’s software then sends the packet to the ReDigi software to be copied into the buffer and deleted from the user’s device. During the data migration process, the digital file cannot be accessed, played, or perceived. If connectivity is disrupted during the data migration process, the remnants of the digital file on the user’s device are unusable, and the transfer cannot be re-initiated. In such circumstances, ReDigi (according to its brief) bears the cost of the user’s loss.

Once all the packets of the source file have been transferred to ReDigi’s server, the Eligible File has been entirely removed from the user’s device. The packets are then re-assembled into a complete, accessible, and playable file on ReDigi’s server.

ReDigi describes its primary technological innovation using the metaphor of a train (the digital file) leaving from one station (the original purchaser’s device) and arriving at its destination (in the first instance, ReDigi’s server). Under either the typical method or ReDigi’s method, packets are sent sequentially, such that, conceptually, “each packet is a car” moving from the source to the destination device. Once all the packets arrive at the destination device, they are reassembled into a usable file. At that moment, in a typical transfer, the entire digital file in usable form exists on both devices. ReDigi’s system differs in that it effectuates a deletion of each packet from the user’s device immediately after the “transitory copy” of that packet arrives in the computer’s buffer (before the packet is forwarded to ReDigi’s server). In other words, as each packet “leaves the station,” ReDigi deletes it from the original purchaser’s device such that it “no longer exists” on that device. As a result, the entire file never exists in two places at once.

After the file has reached ReDigi’s server but before it has been resold, the user may continue to listen to it by streaming audio from the user’s Cloud Locker on ReDigi’s server. If the user later re-downloads the file from her Cloud Locker to her computer, ReDigi will delete the file from its own server.

3. Resale: Once an Eligible File has “migrated” to ReDigi’s server, it can be resold by the user utilizing ReDigi’s market function. If it is resold, ReDigi gives the new purchaser exclusive access to the file. ReDigi will (at the new purchaser’s option) either download the file to the new purchaser’s computer or other device (simultaneously deleting the file from its own server) or will retain the file in the new purchaser’s Cloud Locker on ReDigi’s server, from which the new purchaser can stream the music. ReDigi’s terms of service state that digital media purchases may be streamed or downloaded only for personal use.

4. Duplicates: ReDigi purports to guard against a user’s retention of duplicates of her digital music files after she sells the files through ReDigi. To that end, Music Manager continuously monitors the user’s computer hard drive and connected devices to detect duplicates. When a user attempts to upload an Eligible File to ReDigi’s server, ReDigi “prompt[s]” her to delete any pre-existing duplicates that Music Manager has detected. If ReDigi detects that the user has not deleted the duplicates, ReDigi blocks the upload of the Eligible File. After an upload is complete, Music Manager continues to search the user’s connected devices for duplicates. If it detects a duplicate of a previously uploaded Eligible File, ReDigi will prompt the user to authorize ReDigi to delete that duplicate from her personal device and, if authorization is not granted, it will suspend her account.

Plaintiffs point out, and ReDigi does not dispute, that these precautions do not prevent the retention of duplicates after resale through ReDigi. Suspension of the original purchaser’s ReDigi account does not negate the fact that the original purchaser has both sold and retained the digital music file after she sold it. So long as the user retains previously-made duplicates on devices not linked to the computer that hosts Music Manager, Music Manager will not detect them. This means that a user could, prior to resale through ReDigi, store a duplicate on a compact disc, thumb drive, or third-party cloud service unconnected to the computer that hosts Music Manager and access that duplicate post-resale. While ReDigi’s suspension of the original purchaser’s ReDigi account may be a disincentive to the retention of sold files, it does not prevent the user from retaining sold files.

II. Proceedings Below

On January 6, 2012, Plaintiffs brought this action, originally solely against ReDigi, Inc., alleging inter alia, that in the operation of ReDigi’s system version 1.0, it infringed Plaintiffs’ copyrights by unauthorized reproduction and distribution of Plaintiffs’ copyrighted works. The parties cross-moved for summary judgment. On March 30, 2013, the district court granted partial summary judgment in Plaintiffs’ favor finding infringement. Plaintiffs subsequently filed a first amended complaint, adding Ossenmacher and Rudolph as individual defendants. On November 2, 2015, the parties proposed a joint stipulation in which Ossenmacher and Rudolph waived their right to contest liability independent of ReDigi, Inc. On June 6, 2016, the district court entered a stipulated final judgment awarding damages to Plaintiffs in the amount of three million five hundred thousand dollars ($3,500,000) and permanently enjoining Defendants from operating the ReDigi system. In the stipulation, Defendants reserved the right to appeal solely from the district court’s finding of liability for reproduction and distribution as set forth in the summary judgment order. Defendants timely filed notice of this appeal on July 1, 2016. On August 11, 2016, the appeal was stayed as a result of the Defendants’ bankruptcy proceedings in the United States Bankruptcy Court for the Southern District of Florida. The stay was lifted on December 12, 2016.

DISCUSSION

I. The First Sale Doctrine

The primary issue on appeal is whether ReDigi’s system version 1.0 lawfully enables resales of its users’ digital files. Sections 106(1) and (3) of the Copyright Act respectively grant the owner of a copyright the exclusive right to control the reproduction and the distribution of the copyrighted work. 17 U.S.C. § 106(1) & (3). Under the first sale doctrine, codified in § 109(a), the rights holder’s control over the distribution of any particular copy or phonorecord that was lawfully made effectively terminates when that copy or phonorecord is distributed to its first recipient. Section 109(a) provides:

“Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.”

17 U.S.C. § 109(a).

Under this provision, it is well established that the lawful purchaser of a copy of a book is free to resell, lend, give, or otherwise transfer that copy without violating the copyright holder’s exclusive right of distribution. The copy so resold or re-transferred may be re-transferred again and again without violating the exclusive distribution right. See Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (2013); Quality King Distribs. v. L’Anza Research Int’l, Inc., 523 U.S. 135 (1998); Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908); see also 4 Patry on Copyright § 13:15 (“Placing a lawful copy of a work in commerce exhausts the distribution and display rights with respect to that particular copy ….”). It is undisputed that one who owns a digital file from iTunes of music that is fixed in a material object qualifies as “the owner of a particular … phonorecord lawfully made,” 17 U.S.C. § 109(a), and is thus entitled under § 109(a) “to sell or otherwise dispose of the possession of that … phonorecord,” id. (emphasis added), without violating § 106(3). On the other hand, § 109(a) says nothing about the rights holder’s control under § 106(1) over reproduction of a copy or phonorecord.

The district court found that resales through ReDigi were infringing for two reasons. The first reason was that, in the course of ReDigi’s transfer, the phonorecord has been reproduced in a manner that violates the Plaintiffs’ exclusive control of reproduction under § 106(1); the second was that the digital files sold through ReDigi, being unlawful reproductions, are not subject to the resale right established by § 109(a), which applies solely to a “particular … phonorecord … lawfully made.” 17 U.S.C. § 109(a). We agree with the first reason underlying the district court’s finding of infringement. As that is a sufficient reason for affirmance of the judgment, we make no ruling on the district court’s second reason.

ReDigi argues on appeal that its system effectuates transfer of the particular digital file that the user lawfully purchased from iTunes, that it should not be deemed to have reproduced that file, and that it should therefore come within the protection of 17 U.S.C. § 109(a). ReDigi makes two primary contentions in support of these arguments.

First, ReDigi asserts—as it must for its first sale argument to succeed—that the digital files should be considered “material objects” and therefore, under 17 U.S.C. § 101’s definition of “phonorecords” as “material objects,” should qualify as “phonorecords” eligible for the protection of § 109(a).

Second, ReDigi argues that from a technical standpoint, its process should not be seen as making a reproduction. ReDigi emphasizes that its system simultaneously “causes [packets] to be removed from the … file remaining in the consumer’s computer” as those packets are copied into the computer buffer and then transferred to the ReDigi server, so that the complete file never exists in more than one place at the same time, and the “file on the user’s machine continually shrinks in size while the file on the server grows in size.” ReDigi points out that the “sum of the size of the data” stored in the original purchaser’s computer and in ReDigi’s server never exceeds the “size of the original file,” which, according to ReDigi, “confirms that no reproductions are made during the transfer process.”

As for ReDigi’s first argument, that the digital file it transfers is a phonorecord protected by § 109(a), we do not decide this issue because we find that ReDigi effectuates an unlawful reproduction even if the digital file itself qualifies as a phonorecord.

As for ReDigi’s second argument, we reject it for the following reasons. The Copyright Act defines phonorecords as “material objects in which sounds … are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 101. Accordingly, when the purchaser of a digital music file from iTunes possesses that file, embodied “for a period of more than transitory duration” in a computer or other physical storage device, Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121, 127 (2d Cir. 2008) (quoting 17 U.S.C. § 101), that device—or at least the portion of it in which the digital music file is fixed (e.g., the location on the hard drive)—becomes a phonorecord. See London-Sire Records, Inc. v. Doe, 542 F.Supp.2d 153, 171 (D. Mass. 2008) (holding that the segment of a hard disc on which an electronic music file is encoded is a “phonorecord” under the Copyright Act). In the course of transferring a digital music file from an original purchaser’s computer, through ReDigi, to a new purchaser, the digital file is first received and stored on ReDigi’s server and then, at the new purchaser’s option, may also be subsequently received and stored on the new purchaser’s device. At each of these steps, the digital file is fixed in a new material object “for a period of more than transitory duration.” The fixing of the digital file in ReDigi’s server, as well as in the new purchaser’s device, creates a new phonorecord, which is a reproduction. ReDigi version 1.0’s process for enabling the resale of digital files thus inevitably involves the creation of new phonorecords by reproduction, even if the standalone digital file is deemed to be a phonorecord.

As for the argument that, as ReDigi copies a packet of data, it deletes the equivalent packet in the user’s device so that the amount of data extant in the transfer process remains constant, this does not rebut or nullify the fact that the eventual receipt and storage of that file in ReDigi’s server, as well as in the new purchaser’s device (at his option), does involve the making of new phonorecords. Unless the creation of those new phonorecords is justified by the doctrine of fair use, which we discuss and reject in a later portion of this opinion, the creation of such new phonorecords involves unauthorized reproduction, which is not protected, or even addressed, by § 109(a).

ReDigi next argues that, in the course of transferring a user’s file to ReDigi’s own server, and to the resale purchaser’s device, ReDigi sees to it that all of the original purchaser’s preexisting duplicates are destroyed. As an initial matter, as noted above, ReDigi here overclaims. It does not ensure against retention of duplicate phonorecords created by the original owner. In addition, even if ReDigi effectively compensated (by offsetting deletions) for the making of unauthorized reproductions in violation of the rights holder’s exclusive reproduction right under § 106(1), nonetheless ReDigi’s process itself involves the making of unauthorized reproductions that infringe the exclusive reproduction right unless justified under fair use.⁷ We are not free to disregard the terms of the statute merely because the entity performing an unauthorized reproduction makes efforts to nullify its consequences by the counterbalancing destruction of the preexisting phonorecords.

Finally, ReDigi argues that the district court’s conclusion makes no sense because it would “require a customer to sell her [valuable] computer in order to be able to sell a[n] … iTunes music file” that was lawfully purchased for under $1.00. Of course it would make no economic sense for a customer to sell her computer or even a $5.00 thumb drive in order to sell “a[n] … iTunes music file” purchased for $1.00. But ReDigi far overstates its economic argument when it asserts that the “district court’s ruling … eliminat[es] any meaningful competition from resellers” as “no secondary market … can ever develop if consumers are required to give away their computer hard disks as part of any resale.” A secondary market can readily be imagined for first purchasers who cost-effectively place 50 or 100 (or more) songs on an inexpensive device such as a thumb drive and sell it. See 4 Patry on Copyright § 13:23 (observing that § 109 permits the sale of an iPod that contains lawfully made digital music files). Furthermore, other technology may exist or be developed that could lawfully effectuate a digital first sale.

We conclude that the operation of ReDigi version 1.0 in effectuating a resale results in the making of at least one unauthorized reproduction. Unauthorized reproduction is not protected by § 109(a). It violates the rights holder’s exclusive reproduction rights under § 106(1) unless excused as fair use. For reasons explained below, we conclude that the making of such reproductions is not a fair use. ….

__________

Check Your Understanding – Capitol Records

Question 1. What were the developers of ReDigi attempting to accomplish?

Question 2. Why didn’t the first sale doctrine shield ReDigi from liability for copyright infringement?

D. The Public Performance and Public Display Rights

The Copyright Act also grants copyright owners the exclusive right to publicly perform and/or display their copyrighted works.⁸ 17 U.S.C. § 106(4-6). Section 101 sets forth the following pertinent definitions.

To “display” a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.

To “perform” a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.

To perform or display a work “publicly” means—

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

To “transmit” a performance or display is to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.

Thus, a public performance (or display) can be accomplished either live and in-person, or by transmission over the airwaves or through the Internet.

Unlike the reproduction, derivative works, and distribution rights, the public performance and public display rights are only available for certain categories of works. For example, architectural works are afforded neither public performance nor public display rights. Sound recordings are a unique case—they are not included within the categories of works listed in § 106(4), the statutory basis for the general public performance right, but § 106(6) sets forth a digital public performance right for sound recordings. As a consequence, the live performance of recorded music (e.g., playing recorded music at a bar or sporting event) cannot infringe copyright in the sound recording, nor would playing the recorded music over conventional broadcast radio (which is not digital). However, streaming the song over the Internet is digital and could infringe the digital public performance right in the sound recording. Note that playing the music at a bar or sporting event, or over the conventional radio waves, would generally constitute public performances under § 106(4), and thus could infringe the copyright in the musical work itself (as opposed to the sound recording), since musical works are included in § 106(4).

The public display right (but not the public performance right) is limited by § 109(c), which is related to the first sale doctrine:

Notwithstanding the provisions of section 106(5), the owner of a particular copy lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.

As a consequence, the owner of an authorized copy of a painting or sculpture, such as a museum or place of business, is free to display the work to the public, without risking liability for infringement of the copyright owner’s public display right. But can the museum display, reproduce, or distribute an unauthorized photograph of the work?

Some things to consider when reading Columbia Pictures v. Aveco:

1. Owners of copyrights in motion pictures successfully argue in this case that the defendant has infringed the public performance right by renting video cassettes of the movie in conjunction with a private room in which the individuals who have rented the movie can watch it in private. Does this seem like a “public performance” to you?
2. Note that the copyright owner must not only prove there was a “performance,” but also that the “performance” was “public.” Under the 1976 Act it is not necessary to prove that the performance was for “profit.”
3. Although it was the customers who actually “performed” the movies, the court found that the defendant was liable for “authorizing” these performances.
4. Would a hotel be liable for copyright infringement if it provided video cassette players in its guest rooms and rented video cassettes of copyrighted movies to hotel guests?

Columbia Pictures Indus., Inc. v. Aveco, Inc.

800 F.2d 59 (3d Cir. 1986)

STAPLETON, Circuit Judge.

Plaintiffs, appellees in this action, are producers of motion pictures (“Producers”) and bring this copyright infringement action against the defendant, Aveco, Inc. Producers claim that Aveco’s business, which includes renting video cassettes of motion pictures in conjunction with rooms in which they may be viewed, violates their exclusive rights under the Copyright Act of 1976, 17 U.S.C. § 101 et seq. The district court agreed and we affirm.

I

Among their other operations, Producers distribute video cassette copies of motion pictures in which they own registered copyrights. They do so knowing that many retail purchasers of these video cassettes, including Aveco, rent them to others for profit. Aveco also makes available private rooms of various sizes in which its customers may view the video cassettes that they have chosen from Aveco’s offerings. For example, at one location, Lock Haven, Aveco has thirty viewing rooms, each containing seating, a video cassette player, and television monitor. Aveco charges a rental fee for the viewing room that is separate from the charge for the video cassette rental.

Customers of Aveco may (1) rent a room and also rent a video cassette for viewing in that room, (2) rent a room and bring a video cassette obtained elsewhere to play in the room, or (3) rent a video cassette for out-of-store viewing.

Aveco has placed its video cassette players inside the individual viewing rooms and, subject to a time limitation, allows the customer complete control over the playing of the video cassettes. Customers operate the video cassette players in each viewing room and Aveco’s employees assist only upon request. Each video cassette may be viewed only from inside the viewing room, and is not transmitted beyond the particular room in which it is being played. Aveco asserts that it rents its viewing rooms to individual customers who may be joined in the room only by members of their families and social acquaintances. Furthermore, Aveco’s stated practice is not to permit unrelated groups of customers to share a viewing room while a video cassette is being played. For purposes of this appeal we assume the veracity of these assertions.

II

As the owners of copyrights in motion pictures, Producers possess statutory rights under the Copyright Act of 1976. Producers’ claim is based on the alleged infringement of their “exclusive right … to perform the copyrighted work publicly” and to “authorize” such performances. Producers assert that Aveco, by renting its viewing rooms to the public for the purpose of watching Producers’ video cassettes, is authorizing the public performance of copyrighted motion pictures.

Our analysis begins with the language of the Act. We first observe that there is no question that “performances” of copyrighted materials take place at Aveco’s stores. “To perform” a work is defined in the Act as, “in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.” Section 101. As the House Report notes, this definition means that an individual is performing a work whenever he does anything by which the work is transmitted, repeated, or made to recur.

Producers do not argue that Aveco itself performs the video cassettes. They acknowledge that under the Act Aveco’s customers are the ones performing the works, for it is they who actually place the video cassette in the video cassette player and operate the controls. As we said in Columbia Pictures Industries v. Redd Horne, 749 F.2d 154, 158 (3d Cir.1984), “[p]laying a video cassette … constitute[s] a performance under Section 101.” However, if there is a public performance, Aveco may still be responsible as an infringer even though it does not actually operate the video cassette players. In granting copyright owners the exclusive rights to “authorize” public performances, Congress intended “to avoid any questions as to the liability of contributory infringers. For example, a person who lawfully acquires an authorized copy of a motion picture would be an infringer if he or she engages in the business of renting it to others for purposes of an unauthorized public performance.” In our opinion, this rationale applies equally to the person who knowingly makes available other requisites of a public performance. Accordingly, we agree with the district court that Aveco, by enabling its customers to perform the video cassettes in the viewing rooms, authorizes the performances.

The performances of Producers’ motion pictures at Aveco’s stores infringe their copyrights, however, only if they are “public.” The copyright owners’ rights do not extend to control over private performances. The Act defines a public performance.

To perform … a work “publicly” means—

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances are gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same or at different times.

17 U.S.C. § 101.

We recently parsed this definition in Redd Horne, a case similar to the one at bar. The principal factual distinction is that in Redd Horne’s operation, known as Maxwell’s Video Showcase, Ltd. (“Maxwell’s”), the video cassette players were located in the stores’ central areas, not in each individual screening room. Maxwell’s customers would select a video cassette from Maxwell’s stock and rent a room which they entered to watch the motion picture on a television monitor. A Maxwell’s employee would play the video cassette for the customers in one of the centrally-located video cassette players and transmit the performance to the monitor located in the room. Thus, unlike Aveco’s customers, Maxwell’s clientele had no control over the video cassette players.

The Redd Horne court began its analysis with the observation that the two components of clause (1) of the definition of a public performance are disjunctive. “The first category is self-evident; it is ‘a place open to the public.’ The second category, commonly referred to as a semi-public place, is determined by the size and composition of the audience.”

The court then concluded that the performances were occurring at a place open to the public, which it found to be the entire store, including the viewing rooms.

Any member of the public can view a motion picture by paying the appropriate fee. The services provided by Maxwell’s are essentially the same as a movie theatre, with the additional feature of privacy. The relevant “place” within the meaning of Section 101 is each of Maxwell’s two stores, not each individual booth within each store. Simply because the cassettes can be viewed in private does not mitigate the essential fact that Maxwell’s is unquestionably open to the public.

749 F.2d at 159.

The Redd Horne court reached this conclusion despite the fact that when a customer watched a movie at Maxwell’s, the viewing room was closed to other members of the public. Nevertheless, Aveco asserts that factual differences between Maxwell’s stores and its own require a different result in this case.

Aveco first observes that when Maxwell’s employees “performed” the video cassettes, they did so in a central location, the store’s main area. This lobby was undeniably “open to the public.” Aveco suggests that, in Redd Horne, the location of the customers in the private rooms was simply irrelevant, for the performers were in a public place, the lobby. In the case at bar, Aveco continues, its employees do not perform anything, the customers do. Unlike Maxwell’s employees located in the public lobby, Aveco’s customers are in private screening rooms. Aveco argues that while these viewing rooms are available to anyone for rent, they are private during each rental period, and therefore, not “open to the public.” The performance—the playing of the video cassette—thus occurs not in the public lobby, but in the private viewing rooms.

We disagree. The necessary implication of Aveco’s analysis is that Redd Horne would have been decided differently had Maxwell’s located its video cassette players in a locked closet in the back of the stores. We do not read Redd Horne to adopt such an analysis. The Copyright Act speaks of performances at a place open to the public. It does not require that the public place be actually crowded with people. A telephone booth, a taxi cab, and even a pay toilet are commonly regarded as “open to the public,” even though they are usually occupied only by one party at a time. Our opinion in Redd Horne turned not on the precise whereabouts of the video cassette players, but on the nature of Maxwell’s stores. Maxwell’s, like Aveco, was willing to make a viewing room and video cassette available to any member of the public with the inclination to avail himself of this service. It is this availability that made Maxwell’s stores public places, not the coincidence that the video cassette players were situated in the lobby. Because we find Redd Horne indistinguishable from the case at bar, we find that Aveco’s operations constituted an authorization of public performances of Producers’ copyrighted works.

Aveco’s reliance on the first sale doctrine is likewise misplaced. The first sale doctrine, codified at 17 U.S.C. § 109(a), prevents the copyright owner from controlling future transfers of a particular copy of a copyrighted work after he has transferred its “material ownership” to another. Accordingly, under the first sale doctrine, Producers cannot claim that Aveco’s rentals or sales of lawfully acquired video cassettes infringe on their exclusive rights to vend those cassettes.

The rights protected by copyright are divisible and the waiver of one does not necessarily waive any of the others. In particular, the transfer of ownership in a particular copy of a work does not affect Producers’ Section 106(4) exclusive rights to do and to authorize public performances. It therefore cannot protect one who is infringing Producers’ Section 106(4) rights by the public performance of the copyrighted work.

III

We therefore conclude that Aveco, by renting its rooms to members of the general public in which they may view performances of Producers’ copyrighted video cassettes, obtained from any source, has authorized public performances of those cassettes. This is a violation of Producers’ Section 106 rights and is appropriately enjoined. We therefore will affirm the order of the district court.

__________

Check Your Understanding – Columbia Pictures v. Aveco

Question 1. True or false: The court in Columbia Pictures held that when the defendant’s customers played a video cassette, it was the defendant who was “performing” the copyrighted movie, not the customer.

Question 2. Why did the Columbia Pictures court conclude that the performance of the copyrighted movies was “public”?

Some things to consider when reading Cartoon Network:

1. Bear in mind the significance of the fact that “plaintiffs alleged theories only of direct infringement, not contributory infringement, and defendants waived any defense based on fair use.” Why do you think the parties decided to waive secondary liability and fair use arguments?
2. Note that there are three distinct allegations of direct copyright infringement by the defendant Cablevision (a cable TV company): (1) infringement of the reproduction right based on the copying of “buffer data,” (2) infringement of the reproduction right based on “playback copies,” and (3) infringement of the public performance right based on transmission of the playback copies. Why did the district court find infringement, and why did the Court of Appeals reverse?
3. What important questions does this decision leave unanswered?

Cartoon Network LP, LLLP v. CSC Holdings, Inc.

536 F.3d 121 (2d Cir. 2008)

JOHN M. WALKER, JR., Circuit Judge:

Defendant–Appellant Cablevision Systems Corporation (“Cablevision”) wants to market a new “Remote Storage” Digital Video Recorder system (“RS–DVR”), using a technology akin to both traditional, set-top digital video recorders, like TiVo (“DVRs”), and the video-on-demand (“VOD”) services provided by many cable companies. Plaintiffs–Appellees produce copyrighted movies and television programs that they provide to Cablevision pursuant to numerous licensing agreements. They contend that Cablevision, through the operation of its RS–DVR system as proposed, would directly infringe their copyrights both by making unauthorized reproductions, and by engaging in public performances, of their copyrighted works. The material facts are not in dispute. Because we conclude that Cablevision would not directly infringe plaintiffs’ rights under the Copyright Act by offering its RS–DVR system to consumers, we reverse the district court’s award of summary judgment to plaintiffs, and we vacate its injunction against Cablevision.

BACKGROUND

Today’s television viewers increasingly use digital video recorders (“DVRs”) instead of video cassette recorders (“VCRs”) to record television programs and play them back later at their convenience. DVRs generally store recorded programming on an internal hard drive rather than a cassette. But, as this case demonstrates, the generic term “DVR” actually refers to a growing number of different devices and systems. Companies like TiVo sell a stand-alone DVR device that is typically connected to a user’s cable box and television much like a VCR. Many cable companies also lease to their subscribers “set-top storage DVRs,” which combine many of the functions of a standard cable box and a stand-alone DVR in a single device.

In March 2006, Cablevision, an operator of cable television systems, announced the advent of its new “Remote Storage DVR System.” As designed, the RS–DVR allows Cablevision customers who do not have a stand-alone DVR to record cable programming on central hard drives housed and maintained by Cablevision at a “remote” location. RS–DVR customers may then receive playback of those programs through their home television sets, using only a remote control and a standard cable box equipped with the RS–DVR software. Cablevision notified its content providers, including plaintiffs, of its plans to offer RS–DVR, but it did not seek any license from them to operate or sell the RS–DVR.

Plaintiffs, which hold the copyrights to numerous movies and television programs, sued Cablevision for declaratory and injunctive relief. They alleged that Cablevision’s proposed operation of the RS–DVR would directly infringe their exclusive rights to both reproduce and publicly perform their copyrighted works. Critically for our analysis here, plaintiffs alleged theories only of direct infringement, not contributory infringement, and defendants waived any defense based on fair use.

Ultimately, the United States District Court for the Southern District of New York (Denny Chin, Judge), awarded summary judgment to the plaintiffs and enjoined Cablevision from operating the RS–DVR system without licenses from its content providers.

I. Operation of the RS–DVR System

Cable companies like Cablevision aggregate television programming from a wide variety of “content providers”—the various broadcast and cable channels that produce or provide individual programs—and transmit those programs into the homes of their subscribers via coaxial cable. At the outset of the transmission process, Cablevision gathers the content of the various television channels into a single stream of data. Generally, this stream is processed and transmitted to Cablevision’s customers in real time. Thus, if a Cartoon Network program is scheduled to air Monday night at 8pm, Cartoon Network transmits that program’s data to Cablevision and other cable companies nationwide at that time, and the cable companies immediately re-transmit the data to customers who subscribe to that channel.

Under the new RS–DVR, this single stream of data is split into two streams. The first is routed immediately to customers as before. The second stream flows into a device called the Broadband Media Router (“BMR”), which buffers the data stream, reformats it, and sends it to the “Arroyo Server,” which consists, in relevant part, of two data buffers and a number of high-capacity hard disks. The entire stream of data moves to the first buffer (the “primary ingest buffer”), at which point the server automatically inquires as to whether any customers want to record any of that programming. If a customer has requested a particular program, the data for that program move from the primary buffer into a secondary buffer, and then onto a portion of one of the hard disks allocated to that customer. As new data flow into the primary buffer, they overwrite a corresponding quantity of data already on the buffer. The primary ingest buffer holds no more than 0.1 seconds of each channel’s programming at any moment. Thus, every tenth of a second, the data residing on this buffer are automatically erased and replaced. The data buffer in the BMR holds no more than 1.2 seconds of programming at any time. While buffering occurs at other points in the operation of the RS–DVR, only the BMR buffer and the primary ingest buffer are utilized absent any request from an individual subscriber.

As the district court observed, “the RS–DVR is not a single piece of equipment,” but rather “a complex system requiring numerous computers, processes, networks of cables, and facilities staffed by personnel twenty-four hours a day and seven days a week.” To the customer, however, the processes of recording and playback on the RS–DVR are similar to that of a standard set-top DVR. Using a remote control, the customer can record programming by selecting a program in advance from an on-screen guide, or by pressing the record button while viewing a given program. A customer cannot, however, record the earlier portion of a program once it has begun. To begin playback, the customer selects the show from an on-screen list of previously recorded programs. The principal difference in operation is that, instead of sending signals from the remote to an on-set box, the viewer sends signals from the remote, through the cable, to the Arroyo Server at Cablevision’s central facility. In this respect, RS–DVR more closely resembles a VOD service, whereby a cable subscriber uses his remote and cable box to request transmission of content, such as a movie, stored on computers at the cable company’s facility. But unlike a VOD service, RS–DVR users can only play content that they previously requested to be recorded.

Cablevision has some control over the content available for recording: a customer can only record programs on the channels offered by Cablevision (assuming he subscribes to them). Cablevision can also modify the system to limit the number of channels available and considered doing so during development of the RS–DVR.

II. The District Court’s Decision

In the district court, plaintiffs successfully argued that Cablevision’s proposed system would directly infringe their copyrights in three ways. First, by briefly storing data in the primary ingest buffer and other data buffers integral to the function of the RS–DVR, Cablevision would make copies of protected works and thereby directly infringe plaintiffs’ exclusive right of reproduction under the Copyright Act. Second, by copying programs onto the Arroyo Server hard disks (the “playback copies”), Cablevision would again directly infringe the reproduction right. And third, by transmitting the data from the Arroyo Server hard disks to its RS–DVR customers in response to a “playback” request, Cablevision would directly infringe plaintiffs’ exclusive right of public performance. Agreeing with all three arguments, the district court awarded summary declaratory judgment to plaintiffs and enjoined Cablevision from operating the RS–DVR system without obtaining licenses from the plaintiff copyright holders.

DISCUSSION

Section 106 of the Copyright Act grants copyright holders a bundle of exclusive rights. This case implicates two of those rights: the right “to reproduce the copyrighted work in copies,” and the right “to perform the copyrighted work publicly.” 17 U.S.C. § 106(1), (4). As discussed above, the district court found that Cablevision infringed the first right by 1) buffering the data from its programming stream and 2) copying content onto the Arroyo Server hard disks to enable playback of a program requested by an RS–DVR customer. In addition, the district court found that Cablevision would infringe the public performance right by transmitting a program to an RS–DVR customer in response to that customer’s playback request. We address each of these three allegedly infringing acts in turn.

I. The Buffer Data

It is undisputed that Cablevision, not any customer or other entity, takes the content from one stream of programming, after the split, and stores it, one small piece at a time, in the BMR buffer and the primary ingest buffer. As a result, the information is buffered before any customer requests a recording, and would be buffered even if no such request were made. The question is whether, by buffering the data that make up a given work, Cablevision “reproduce[s]” that work “in copies,” 17 U.S.C. § 106(1), and thereby infringes the copyright holder’s reproduction right.

“Copies,” as defined in the Copyright Act, “are material objects … in which a work is fixed by any method … and from which the work can be … reproduced.” Id. § 101. The Act also provides that a work is “ ‘fixed’ in a tangible medium of expression when its embodiment … is sufficiently permanent or stable to permit it to be … reproduced … for a period of more than transitory duration.” Id. (emphasis added). We believe that this language plainly imposes two distinct but related requirements: the work must be embodied in a medium, i.e., placed in a medium such that it can be perceived, reproduced, etc., from that medium (the “embodiment requirement”), and it must remain thus embodied “for a period of more than transitory duration” (the “duration requirement”). Unless both requirements are met, the work is not “fixed” in the buffer, and, as a result, the buffer data is not a “copy” of the original work whose data is buffered.

The district court mistakenly limited its analysis primarily to the embodiment requirement. As a result of this error, once it determined that the buffer data was “[c]learly … capable of being reproduced,” i.e., that the work was embodied in the buffer, the district court concluded that the work was therefore “fixed” in the buffer, and that a copy had thus been made. In doing so, it relied on a line of cases beginning with MAI Systems Corp. v. Peak Computer Inc., 991 F.2d 511 (9th Cir.1993).

The district court’s reliance on cases like MAI Systems is misplaced. In general, those cases conclude that an alleged copy is fixed without addressing the duration requirement; it does not follow, however, that those cases assume, much less establish, that such a requirement does not exist. Indeed, the duration requirement, by itself, was not at issue in MAI Systems and its progeny. As a result, they do not speak to the issues squarely before us here: If a work is only “embodied” in a medium for a period of transitory duration, can it be “fixed” in that medium, and thus a copy? And what constitutes a period “of more than transitory duration”?

In MAI Systems, defendant Peak Computer, Inc., performed maintenance and repairs on computers made and sold by MAI Systems. In order to service a customer’s computer, a Peak employee had to operate the computer and run the computer’s copyrighted operating system software. The issue in MAI Systems was whether, by loading the software into the computer’s RAM, the repairman created a “copy” as defined in § 101. The resolution of this issue turned on whether the software’s embodiment in the computer’s RAM was “fixed,” within the meaning of the same section. The Ninth Circuit concluded that

by showing that Peak loads the software into the RAM and is then able to view the system error log and diagnose the problem with the computer, MAI has adequately shown that the representation created in the RAM is “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”

The MAI Systems court referenced the “transitory duration” language but did not discuss or analyze it. This is unsurprising, because it seems fair to assume that in these cases the program was embodied in the RAM for at least several minutes.

Accordingly, we construe MAI Systems and its progeny as holding that loading a program into a computer’s RAM can result in copying that program. We do not read MAI Systems as holding that, as a matter of law, loading a program into a form of RAM always results in copying. Such a holding would read the “transitory duration” language out of the definition, and we do not believe our sister circuit would dismiss this statutory language without even discussing it. It appears the parties in MAI Systems simply did not dispute that the duration requirement was satisfied; this line of cases simply concludes that when a program is loaded into RAM, the embodiment requirement is satisfied—an important holding in itself, and one we see no reason to quibble with here.

In sum, no case law or other authority dissuades us from concluding that the definition of “fixed” imposes both an embodiment requirement and a duration requirement. We now turn to whether, in this case, those requirements are met by the buffer data.

Cablevision does not seriously dispute that copyrighted works are “embodied” in the buffer. Data in the BMR buffer can be reformatted and transmitted to the other components of the RS–DVR system. Data in the primary ingest buffer can be copied onto the Arroyo hard disks if a user has requested a recording of that data. Thus, a work’s “embodiment” in either buffer “is sufficiently permanent or stable to permit it to be perceived, reproduced,” (as in the case of the ingest buffer) “or otherwise communicated” (as in the BMR buffer). 17 U.S.C. § 101.

Does any such embodiment last “for a period of more than transitory duration”? No bit of data remains in any buffer for more than a fleeting 1.2 seconds. And unlike the data in cases like MAI Systems, which remained embodied in the computer’s RAM memory until the user turned the computer off, each bit of data here is rapidly and automatically overwritten as soon as it is processed. While our inquiry is necessarily fact-specific, and other factors not present here may alter the duration analysis significantly, these facts strongly suggest that the works in this case are embodied in the buffer for only a “transitory” period, thus failing the duration requirement.

Given that the data reside in no buffer for more than 1.2 seconds before being automatically overwritten, and in the absence of compelling arguments to the contrary, we believe that the copyrighted works here are not “embodied” in the buffers for a period of more than transitory duration, and are therefore not “fixed” in the buffers. Accordingly, the acts of buffering in the operation of the RS–DVR do not create copies, as the Copyright Act defines that term.

II. Direct Liability for Creating the Playback Copies

In most copyright disputes, the allegedly infringing act and the identity of the infringer are never in doubt. These cases turn on whether the conduct in question does, in fact, infringe the plaintiff’s copyright. In this case, however, the core of the dispute is over the authorship of the infringing conduct. After an RS–DVR subscriber selects a program to record, and that program airs, a copy of the program—a copyrighted work—resides on the hard disks of Cablevision’s Arroyo Server, its creation unauthorized by the copyright holder. The question is who made this copy. If it is Cablevision, plaintiffs’ theory of direct infringement succeeds; if it is the customer, plaintiffs’ theory fails because Cablevision would then face, at most, secondary liability, a theory of liability expressly disavowed by plaintiffs.

Few cases examine the line between direct and contributory liability. Both parties cite a line of cases beginning with Religious Technology Center v. Netcom On–Line Communication Services, 907 F.Supp. 1361 (N.D.Cal.1995). In Netcom, a third-party customer of the defendant Internet service provider (“ISP”) posted a copyrighted work that was automatically reproduced by the defendant’s computer. The district court refused to impose direct liability on the ISP, reasoning that “[a]lthough copyright is a strict liability statute, there should still be some element of volition or causation which is lacking where a defendant’s system is merely used to create a copy by a third party.” Recently, the Fourth Circuit endorsed the Netcom decision, noting that

to establish direct liability under … the Act, something more must be shown than mere ownership of a machine used by others to make illegal copies. There must be actual infringing conduct with a nexus sufficiently close and causal to the illegal copying that one could conclude that the machine owner himself trespassed on the exclusive domain of the copyright owner.”

CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir.2004).

When there is a dispute as to the author of an allegedly infringing instance of reproduction, Netcom and its progeny direct our attention to the volitional conduct that causes the copy to be made. There are only two instances of volitional conduct in this case: Cablevision’s conduct in designing, housing, and maintaining a system that exists only to produce a copy, and a customer’s conduct in ordering that system to produce a copy of a specific program. In the case of a VCR, it seems clear—and we know of no case holding otherwise—that the operator of the VCR, the person who actually presses the button to make the recording, supplies the necessary element of volition, not the person who manufactures, maintains, or, if distinct from the operator, owns the machine. We do not believe that an RS–DVR customer is sufficiently distinguishable from a VCR user to impose liability as a direct infringer on a different party for copies that are made automatically upon that customer’s command.

The district court found Cablevision analogous to a copy shop that makes course packs for college professors. In the leading case involving such a shop, for example, “[t]he professor [gave] the copyshop the materials of which the coursepack [was] to be made up, and the copyshop [did] the rest.” Princeton Univ. Press v. Mich. Document Servs., 99 F.3d 1381, 1384 (6th Cir.1996) (en banc). There did not appear to be any serious dispute in that case that the shop itself was directly liable for reproducing copyrighted works. The district court here found that Cablevision, like this copy shop, would be “doing” the copying, albeit “at the customer’s behest.

But because volitional conduct is an important element of direct liability, the district court’s analogy is flawed. In determining who actually “makes” a copy, a significant difference exists between making a request to a human employee, who then volitionally operates the copying system to make the copy, and issuing a command directly to a system, which automatically obeys commands and engages in no volitional conduct. In cases like Princeton University Press, the defendants operated a copying device and sold the product they made using that device. Here, by selling access to a system that automatically produces copies on command, Cablevision more closely resembles a store proprietor who charges customers to use a photocopier on his premises, and it seems incorrect to say, without more, that such a proprietor “makes” any copies when his machines are actually operated by his customers.

The district court also emphasized Cablevision’s “unfettered discretion in selecting the programming that it would make available for recording.” This conduct is indeed more proximate to the creation of illegal copying than, say, operating an ISP or opening a copy shop, where all copied content was supplied by the customers themselves or other third parties. Nonetheless, we do not think it sufficiently proximate to the copying to displace the customer as the person who “makes” the copies when determining liability under the Copyright Act. Cablevision, we note, also has subscribers who use home VCRs or DVRs (like TiVo), and has significant control over the content recorded by these customers. But this control is limited to the channels of programming available to a customer and not to the programs themselves. Cablevision has no control over what programs are made available on individual channels or when those programs will air, if at all. In this respect, Cablevision possesses far less control over recordable content than it does in the VOD context, where it actively selects and makes available beforehand the individual programs available for viewing. For these reasons, we are not inclined to say that Cablevision, rather than the user, “does” the copying produced by the RS–DVR system. As a result, we find that the district court erred in concluding that Cablevision, rather than its RS–DVR customers, makes the copies carried out by the RS–DVR system.

III. Transmission of RS–DVR Playback

Plaintiffs’ final theory is that Cablevision will violate the Copyright Act by engaging in unauthorized public performances of their works through the playback of the RS–DVR copies. The Act grants a copyright owner the exclusive right, “in the case of … motion pictures and other audiovisual works, to perform the copyrighted work publicly.” 17 U.S.C. § 106(4). Section 101, the definitional section of the Act, explains that

[t]o perform or display a work “publicly” means (1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

The parties agree that this case does not implicate clause (1). Accordingly, we ask whether these facts satisfy the second, “transmit clause” of the public performance definition: Does Cablevision “transmit … a performance … of the work … to the public”? No one disputes that the RS–DVR playback results in the transmission of a performance of a work—the transmission from the Arroyo Server to the customer’s television set. Cablevision contends that (1) the RS–DVR customer, rather than Cablevision, does the transmitting and thus the performing and (2) the transmission is not “to the public” under the transmit clause.

As to Cablevision’s first argument, we note that our conclusion in Part II that the customer, not Cablevision, “does” the copying does not dictate a parallel conclusion that the customer, and not Cablevision, “performs” the copyrighted work. The definitions that delineate the contours of the reproduction and public performance rights vary in significant ways. For example, the statute defines the verb “perform” and the noun “copies,” but not the verbs “reproduce” or “copy.” We need not address Cablevision’s first argument further because, even if we assume that Cablevision makes the transmission when an RS–DVR playback occurs, we find that the RS–DVR playback, as described here, does not involve the transmission of a performance “to the public.”

The statute itself does not expressly define the term “performance” or the phrase “to the public.” It does explain that a transmission may be “to the public … whether the members of the public capable of receiving the performance … receive it in the same place or in separate places and at the same time or at different times.” This plain language instructs us that, in determining whether a transmission is “to the public,” it is of no moment that the potential recipients of the transmission are in different places, or that they may receive the transmission at different times. The implication from this same language, however, is that it is relevant, in determining whether a transmission is made to the public, to discern who is “capable of receiving” the performance being transmitted. The fact that the statute says “capable of receiving the performance,” instead of “capable of receiving the transmission,” underscores the fact that a transmission of a performance is itself a performance.

The legislative history of the transmit clause supports this interpretation. The House Report on the 1976 Copyright Act states that

[u]nder the bill, as under the present law, a performance made available by transmission to the public at large is “public” even though the recipients are not gathered in a single place, and even if there is no proof that any of the potential recipients was operating his receiving apparatus at the time of the transmission. The same principles apply whenever the potential recipients of the transmission represent a limited segment of the public, such as the occupants of hotel rooms or the subscribers of a cable television service.

From the foregoing, it is evident that the transmit clause directs us to examine who precisely is “capable of receiving” a particular transmission of a performance. Cablevision argues that, because each RS–DVR transmission is made using a single unique copy of a work, made by an individual subscriber, one that can be decoded exclusively by that subscriber’s cable box, only one subscriber is capable of receiving any given RS–DVR transmission. This argument accords with the language of the transmit clause, which, as described above, directs us to consider the potential audience of a given transmission. We are unpersuaded by the district court’s reasoning and the plaintiffs’ arguments that we should consider a larger potential audience in determining whether a transmission is “to the public.”

The district court, in deciding whether the RS–DVR playback of a program to a particular customer is “to the public,” apparently considered all of Cablevision’s customers who subscribe to the channel airing that program and all of Cablevision’s RS–DVR subscribers who request a copy of that program. Thus, it concluded that the RS–DVR playbacks constituted public performances because “Cablevision would transmit the same program to members of the public, who may receive the performance at different times, depending on whether they view the program in real time or at a later time as an RS–DVR playback.” In essence, the district court suggested that, in considering whether a transmission is “to the public,” we consider not the potential audience of a particular transmission, but the potential audience of the underlying work (i.e., “the program”) whose content is being transmitted.

We cannot reconcile the district court’s approach with the language of the transmit clause. That clause speaks of people capable of receiving a particular “transmission” or “performance,” and not of the potential audience of a particular “work.” Indeed, such an approach would render the “to the public” language surplusage. Doubtless the potential audience for every copyrighted audiovisual work is the general public. As a result, any transmission of the content of a copyrighted work would constitute a public performance under the district court’s interpretation. But the transmit clause obviously contemplates the existence of non-public transmissions; if it did not, Congress would have stopped drafting that clause after “performance.”

On appeal, plaintiffs offer a slight variation of this interpretation. They argue that both in its real-time cablecast and via the RS–DVR playback, Cablevision is in fact transmitting the “same performance” of a given work: the performance of the work that occurs when the programming service supplying Cablevision’s content transmits that content to Cablevision and the service’s other licensees.

Thus, according to plaintiffs, when Congress says that to perform a work publicly means to transmit … a performance … to the public, they really meant “transmit … the ‘original performance’ … to the public.” The implication of this theory is that to determine whether a given transmission of a performance is “to the public,” we would consider not only the potential audience of that transmission, but also the potential audience of any transmission of the same underlying “original” performance.

Like the district court’s interpretation, this view obviates any possibility of a purely private transmission. Furthermore, it makes Cablevision’s liability depend, in part, on the actions of legal strangers. Assume that HBO transmits a copyrighted work to both Cablevision and Comcast. Cablevision merely retransmits the work from one Cablevision facility to another, while Comcast retransmits the program to its subscribers. Under plaintiffs’ interpretation, Cablevision would still be transmitting the performance to the public, solely because Comcast has transmitted the same underlying performance to the public. Similarly, a hapless customer who records a program in his den and later transmits the recording to a television in his bedroom would be liable for publicly performing the work simply because some other party had once transmitted the same underlying performance to the public.

We do not believe Congress intended such odd results. Although the transmit clause is not a model of clarity, we believe that when Congress speaks of transmitting a performance to the public, it refers to the performance created by the act of transmission. Thus, HBO transmits its own performance of a work when it transmits to Cablevision, and Cablevision transmits its own performance of the same work when it retransmits the feed from HBO.

In sum, none of the arguments advanced by plaintiffs or the district court alters our conclusion that, under the transmit clause, we must examine the potential audience of a given transmission by an alleged infringer to determine whether that transmission is “to the public.” And because the RS–DVR system, as designed, only makes transmissions to one subscriber using a copy made by that subscriber, we believe that the universe of people capable of receiving an RS–DVR transmission is the single subscriber whose self-made copy is used to create that transmission.

Indeed, we believe that Columbia Pictures Industries, Inc. v. Redd Horne, Inc., 749 F.2d 154 (3d Cir.1984), relied on by both plaintiffs and the district court, supports our decision to accord significance to the existence and use of distinct copies in our transmit clause analysis. In that case, defendant operated a video rental store, Maxwell’s, which also housed a number of small private booths containing seats and a television. Patrons would select a film, enter the booth, and close the door. An employee would then load a copy of the requested movie into a bank of VCRs at the front of the store and push play, thereby transmitting the content of the tape to the television in the viewing booth.

The Third Circuit found that defendants’ conduct constituted a public performance under both clauses of the statutory definition. In concluding that Maxwell’s violated the transmit clause, that court explicitly relied on the fact that defendants showed the same copy of a work seriatim to its clientele, and it quoted a treatise emphasizing the same fact:

Professor Nimmer’s examination of this definition is particularly pertinent: “if the same copy … of a given work is repeatedly played (i.e., ‘performed’) by different members of the public, albeit at different times, this constitutes a ‘public’ performance.” 2 M. Nimmer, § 8.14[C][3], at 8–142 (emphasis in original)…. Although Maxwell’s has only one copy of each film, it shows each copy repeatedly to different members of the public. This constitutes a public performance.

Unfortunately, neither the Redd Horne court nor Prof. Nimmer explicitly explains why the use of a distinct copy affects the transmit clause inquiry. But our independent analysis confirms the soundness of their intuition: the use of a unique copy may limit the potential audience of a transmission and is therefore relevant to whether that transmission is made “to the public.” Plaintiffs’ unsupported arguments to the contrary are unavailing.

Given that each RS–DVR transmission is made to a given subscriber using a copy made by that subscriber, we conclude that such a transmission is not “to the public,” without analyzing the contours of that phrase in great detail.

In sum, we find that the transmit clause directs us to identify the potential audience of a given transmission, i.e., the persons “capable of receiving” it, to determine whether that transmission is made “to the public.” Because each RS–DVR playback transmission is made to a single subscriber using a single unique copy produced by that subscriber, we conclude that such transmissions are not performances “to the public,” and therefore do not infringe any exclusive right of public performance.

This holding, we must emphasize, does not generally permit content delivery networks to avoid all copyright liability by making copies of each item of content and associating one unique copy with each subscriber to the network, or by giving their subscribers the capacity to make their own individual copies. We do not address whether such a network operator would be able to escape any other form of copyright liability, such as liability for unauthorized reproductions or liability for contributory infringement.

__________

Check Your Understanding – Cartoon Network

Question 1. What was the outcome in Cartoon Network with respect to the plaintiffs’ argument that Cablevision’s proposed system would infringe their copyrights by briefly storing data in data buffers?

Question 2. What was the outcome in Cartoon Network with respect to the plaintiffs’ argument that Cablevision’s proposed system would infringe their copyrights by copying programs onto the Arroyo Server hard disks (the “playback copies”)?

Question 3. What was the outcome in Cartoon Network with respect to the plaintiffs’ argument that Cablevision’s proposed system would infringe their copyrights by transmitting the data from the Arroyo Server hard disks to its RS–DVR customers in response to a “playback” request?

Some things to consider when reading Aereo:

1. The defendant in this case, Aereo, relied on the Second Circuit’s holding in Cartoon Network to design a complicated system that was intended to provide the functional equivalent of a cable television service while avoiding infringement liability.⁹ The district court and Second Circuit would have found that the company had succeeded, and that under Cartoon Network Aereo was not liable for copyright infringement. On what basis did the Supreme Court majority reverse and find the defendant liable?
2. As was the case in Cartoon Network, the two pivotal questions are whether the defendant’s transmissions were “performances,” and if so whether they were “public.”
3. Note how the majority uses the legislative history of the 1976 Act, and imputed congressional intent, to support its holding.
4. After Aereo, is Cartoon Network still good law?
5. What are the implications of the decision for “cloud storage” of copyrighted works?
6. Note the significance of Aereo’s argument that, because the transmissions are recorded and then replayed shortly thereafter, the company is transmitting a “new performance created by its act of transmitting.”
7. What is the significance of the Court’s observation that “an entity that transmits a performance to individuals in their capacities as owners or possessors does not perform to ‘the public,’ whereas an entity like Aereo that transmits to large numbers of paying subscribers who lack any prior relationship to the works does so perform.”
8. Note Justice Scalia’s dissent, particularly his discussion of volitional conduct, and the proper roles of courts, “good lawyers,” and Congress when faced with apparent “loopholes” in a statute.

Am. Broad. Companies, Inc. v  Aereo, Inc.

573 U.S. 431 (2014)

Justice BREYER delivered the opinion of the Court.

The Copyright Act of 1976 gives a copyright owner the “exclusive right” to “perform the copyrighted work publicly.” 17 U.S.C. § 106(4). The Act’s Transmit Clause defines that exclusive right as including the right to

“transmit or otherwise communicate a performance … of the [copyrighted] work … to the public, by means of any device or process, whether the members of the public capable of receiving the performance … receive it in the same place or in separate places and at the same time or at different times.” § 101.

We must decide whether respondent Aereo, Inc., infringes this exclusive right by selling its subscribers a technologically complex service that allows them to watch television programs over the Internet at about the same time as the programs are broadcast over the air. We conclude that it does.

I

A

For a monthly fee, Aereo offers subscribers broadcast television programming over the Internet, virtually as the programming is being broadcast. Much of this programming is made up of copyrighted works. Aereo neither owns the copyright in those works nor holds a license from the copyright owners to perform those works publicly.

Aereo’s system is made up of servers, transcoders, and thousands of dime-sized antennas housed in a central warehouse. It works roughly as follows: First, when a subscriber wants to watch a show that is currently being broadcast, he visits Aereo’s website and selects, from a list of the local programming, the show he wishes to see.

Second, one of Aereo’s servers selects an antenna, which it dedicates to the use of that subscriber (and that subscriber alone) for the duration of the selected show. A server then tunes the antenna to the over-the-air broadcast carrying the show. The antenna begins to receive the broadcast, and an Aereo transcoder translates the signals received into data that can be transmitted over the Internet.

Third, rather than directly send the data to the subscriber, a server saves the data in a subscriber-specific folder on Aereo’s hard drive. In other words, Aereo’s system creates a subscriber-specific copy—that is, a “ personal” copy—of the subscriber’s program of choice.

Fourth, once several seconds of programming have been saved, Aereo’s server begins to stream the saved copy of the show to the subscriber over the Internet. The streaming continues, a mere few seconds behind the over-the-air broadcast, until the subscriber has received the entire show.

Aereo emphasizes that the data that its system streams to each subscriber are the data from his own personal copy, made from the broadcast signals received by the particular antenna allotted to him. Its system does not transmit data saved in one subscriber’s folder to any other subscriber. When two subscribers wish to watch the same program, Aereo’s system activates two separate antennas and saves two separate copies of the program in two separate folders. It then streams the show to the subscribers through two separate transmissions—each from the subscriber’s personal copy.

B

Petitioners are television producers, marketers, distributors, and broadcasters who own the copyrights in many of the programs that Aereo’s system streams to its subscribers. They brought suit against Aereo for copyright infringement in Federal District Court. They sought a preliminary injunction, arguing that Aereo was infringing their right to “perform” their works “publicly,” as the Transmit Clause defines those terms.

The District Court denied the preliminary injunction. A divided panel of the Second Circuit affirmed. In the Second Circuit’s view, Aereo does not perform publicly within the meaning of the Transmit Clause because it does not transmit “to the public.” Rather, each time Aereo streams a program to a subscriber, it sends a private transmission that is available only to that subscriber. We granted certiorari.

II

This case requires us to answer two questions: First, in operating in the manner described above, does Aereo “perform” at all? And second, if so, does Aereo do so “publicly”? We address these distinct questions in turn.

In Aereo’s view, it does not perform. It does no more than supply equipment that “emulate[s] the operation of a home antenna and [digital video recorder (DVR) ].” Like a home antenna and DVR, Aereo’s equipment simply responds to its subscribers’ directives. So it is only the subscribers who “perform” when they use Aereo’s equipment to stream television programs to themselves.

Considered alone, the language of the Act does not clearly indicate when an entity “perform[s]” (or “transmit[s]”) and when it merely supplies equipment that allows others to do so. But when read in light of its purpose, the Act is unmistakable: An entity that engages in activities like Aereo’s performs.

A

History makes plain that one of Congress’ primary purposes in amending the Copyright Act in 1976 was to overturn this Court’s determination that community antenna television (CATV) systems (the precursors of modern cable systems) fell outside the Act’s scope. In Fortnightly Corp. v. United Artists Television, Inc., 392 U.S. 390 (1968), the Court considered a CATV system that carried local television broadcasting, much of which was copyrighted, to its subscribers in two cities. The CATV provider placed antennas on hills above the cities and used coaxial cables to carry the signals received by the antennas to the home television sets of its subscribers. The system amplified and modulated the signals in order to improve their strength and efficiently transmit them to subscribers. A subscriber “could choose any of the … programs he wished to view by simply turning the knob on his own television set.” The CATV provider “neither edited the programs received nor originated any programs of its own.”

Asked to decide whether the CATV provider infringed copyright holders’ exclusive right to perform their works publicly, the Court held that the provider did not “perform” at all. The Court drew a line: “Broadcasters perform. Viewers do not perform.”  And a CATV provider “falls on the viewer’s side of the line.”

The Court reasoned that CATV providers were unlike broadcasters:

“Broadcasters select the programs to be viewed; CATV systems simply carry, without editing, whatever programs they receive. Broadcasters procure programs and propagate them to the public; CATV systems receive programs that have been released to the public and carry them by private channels to additional viewers.”

Instead, CATV providers were more like viewers, for “the basic function [their] equipment serves is little different from that served by the equipment generally furnished by” viewers. “Essentially,” the Court said, “a CATV system no more than enhances the viewer’s capacity to receive the broadcaster’s signals [by] provid[ing] a well-located antenna with an efficient connection to the viewer’s television set.” Viewers do not become performers by using “amplifying equipment,” and a CATV provider should not be treated differently for providing viewers the same equipment.

In Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974), the Court considered the copyright liability of a CATV provider that carried broadcast television programming into subscribers’ homes from hundreds of miles away. Although the Court recognized that a viewer might not be able to afford amplifying equipment that would provide access to those distant signals, it nonetheless found that the CATV provider was more like a viewer than a broadcaster. It explained: “The reception and rechanneling of [broadcast television signals] for simultaneous viewing is essentially a viewer function, irrespective of the distance between the broadcasting station and the ultimate viewer.”

B

In 1976 Congress amended the Copyright Act in large part to reject the Court’s holdings in Fortnightly and Teleprompter. See H.R.Rep. No. 94–1476, pp. 86–87 (1976) (hereinafter H.R. Rep.) (The 1976 amendments “completely overturned” this Court’s narrow construction of the Act in Fortnightly and Teleprompter ). Congress enacted new language that erased the Court’s line between broadcaster and viewer, in respect to “performing” a work. The amended statute clarifies that to “perform” an audiovisual work means “to show its images in any sequence or to make the sounds accompanying it audible.” Under this new language, both the broadcaster and the viewer of a television program “perform,” because they both show the program’s images and make audible the program’s sounds. See H.R. Rep., at 63 (“[A] broadcasting network is performing when it transmits [a singer’s performance of a song] … and any individual is performing whenever he or she … communicates the performance by turning on a receiving set”).

Congress also enacted the Transmit Clause, which specifies that an entity performs publicly when it “transmit[s] … a performance … to the public.” § 101; see ibid. (defining “[t]o ‘transmit’ a performance” as “to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent”). Cable system activities, like those of the CATV systems in Fortnightly and Teleprompter, lie at the heart of the activities that Congress intended this language to cover. See H.R. Rep., at 63 (“[A] cable television system is performing when it retransmits [a network] broadcast to its subscribers”). The Clause thus makes clear that an entity that acts like a CATV system itself performs, even if when doing so, it simply enhances viewers’ ability to receive broadcast television signals.

Congress further created a new section of the Act to regulate cable companies’ public performances of copyrighted works. Section 111 creates a complex, highly detailed compulsory licensing scheme that sets out the conditions, including the payment of compulsory fees, under which cable systems may retransmit broadcasts.

Congress made these three changes to achieve a similar end: to bring the activities of cable systems within the scope of the Copyright Act.

C

This history makes clear that Aereo is not simply an equipment provider. Rather, Aereo, and not just its subscribers, “perform[s]” (or “transmit[s]”). Aereo’s activities are substantially similar to those of the CATV companies that Congress amended the Act to reach. Aereo sells a service that allows subscribers to watch television programs, many of which are copyrighted, almost as they are being broadcast. In providing this service, Aereo uses its own equipment, housed in a centralized warehouse, outside of its users’ homes. By means of its technology (antennas, transcoders, and servers), Aereo’s system “receive[s] programs that have been released to the public and carr[ies] them by private channels to additional viewers.” Fortnightly, 392 U.S., at 400. It “ carr[ies] … whatever programs [it] receive[s],” and it offers “all the programming” of each over-the-air station it carries. Id., at 392, 400.

Aereo’s equipment may serve a “viewer function”; it may enhance the viewer’s ability to receive a broadcaster’s programs. It may even emulate equipment a viewer could use at home. But the same was true of the equipment that was before the Court, and ultimately before Congress, in Fortnightly and Teleprompter.

We recognize, and Aereo and the dissent emphasize, one particular difference between Aereo’s system and the cable systems at issue in Fortnightly and Teleprompter. The systems in those cases transmitted constantly; they sent continuous programming to each subscriber’s television set. In contrast, Aereo’s system remains inert until a subscriber indicates that she wants to watch a program. Only at that moment, in automatic response to the subscriber’s request, does Aereo’s system activate an antenna and begin to transmit the requested program.

This is a critical difference, says the dissent. It means that Aereo’s subscribers, not Aereo, “select the copyrighted content” that is “performed,” and for that reason they, not Aereo, “transmit” the performance. Aereo is thus like “a copy shop that provides its patrons with a library card.” A copy shop is not directly liable whenever a patron uses the shop’s machines to “reproduce” copyrighted materials found in that library. And by the same token, Aereo should not be directly liable whenever its patrons use its equipment to “transmit” copyrighted television programs to their screens.

In our view, however, the dissent’s copy shop argument, in whatever form, makes too much out of too little. Given Aereo’s overwhelming likeness to the cable companies targeted by the 1976 amendments, this sole technological difference between Aereo and traditional cable companies does not make a critical difference here. The subscribers of the Fortnightly and Teleprompter cable systems also selected what programs to display on their receiving sets. Indeed, as we explained in Fortnightly, such a subscriber “could choose any of the … programs he wished to view by simply turning the knob on his own television set.” The same is true of an Aereo subscriber. Of course, in Fortnightly the television signals, in a sense, lurked behind the screen, ready to emerge when the subscriber turned the knob. Here the signals pursue their ordinary course of travel through the universe until today’s “turn of the knob”—a click on a website—activates machinery that intercepts and reroutes them to Aereo’s subscribers over the Internet. But this difference means nothing to the subscriber. It means nothing to the broadcaster. We do not see how this single difference, invisible to subscriber and broadcaster alike, could transform a system that is for all practical purposes a traditional cable system into “a copy shop that provides its patrons with a library card.”

In other cases involving different kinds of service or technology providers, a user’s involvement in the operation of the provider’s equipment and selection of the content transmitted may well bear on whether the provider performs within the meaning of the Act. But the many similarities between Aereo and cable companies, considered in light of Congress’ basic purposes in amending the Copyright Act, convince us that this difference is not critical here. We conclude that Aereo is not just an equipment supplier and that Aereo “perform[s].”

III

Next, we must consider whether Aereo performs petitioners’ works “publicly,” within the meaning of the Transmit Clause. Under the Clause, an entity performs a work publicly when it “transmit[s] … a performance … of the work … to the public.” § 101. Aereo denies that it satisfies this definition. It reasons as follows: First, the “performance” it “transmit[s]” is the performance created by its act of transmitting. And second, because each of these performances is capable of being received by one and only one subscriber, Aereo transmits privately, not publicly. Even assuming Aereo’s first argument is correct, its second does not follow.

We begin with Aereo’s first argument. What performance does Aereo transmit? Under the Act, “[t]o ‘transmit’ a performance … is to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.” And “[t]o ‘perform’ ” an audiovisual work means “to show its images in any sequence or to make the sounds accompanying it audible.”

Petitioners say Aereo transmits a prior performance of their works. Thus when Aereo retransmits a network’s prior broadcast, the underlying broadcast (itself a performance) is the performance that Aereo transmits. Aereo, as discussed above, says the performance it transmits is the new performance created by its act of transmitting. That performance comes into existence when Aereo streams the sounds and images of a broadcast program to a subscriber’s screen.

We assume arguendo that Aereo’s first argument is correct. Thus, for present purposes, to transmit a performance of (at least) an audiovisual work means to communicate contemporaneously visible images and contemporaneously audible sounds of the work. Cf. United States v. American Soc. of Composers, Authors and Publishers, 627 F.3d 64, 73 (C.A.2 2010) (holding that a download of a work is not a performance because the data transmitted are not “contemporaneously perceptible”). When an Aereo subscriber selects a program to watch, Aereo streams the program over the Internet to that subscriber. Aereo thereby “communicate[s]” to the subscriber, by means of a “device or process,” the work’s images and sounds. And those images and sounds are contemporaneously visible and audible on the subscriber’s computer (or other Internet-connected device). So under our assumed definition, Aereo transmits a performance whenever its subscribers watch a program.

But what about the Clause’s further requirement that Aereo transmit a performance “to the public”? As we have said, an Aereo subscriber receives broadcast television signals with an antenna dedicated to him alone. Aereo’s system makes from those signals a personal copy of the selected program. It streams the content of the copy to the same subscriber and to no one else. One and only one subscriber has the ability to see and hear each Aereo transmission. The fact that each transmission is to only one subscriber, in Aereo’s view, means that it does not transmit a performance “to the public.”

In terms of the Act’s purposes, these differences do not distinguish Aereo’s system from cable systems, which do perform “publicly.” Viewed in terms of Congress’ regulatory objectives, why should any of these technological differences matter? They concern the behind-the-scenes way in which Aereo delivers television programming to its viewers’ screens. They do not render Aereo’s commercial objective any different from that of cable companies. Nor do they significantly alter the viewing experience of Aereo’s subscribers. Why would a subscriber who wishes to watch a television show care much whether images and sounds are delivered to his screen via a large multi-subscriber antenna or one small dedicated antenna, whether they arrive instantaneously or after a few seconds’ delay, or whether they are transmitted directly or after a personal copy is made? And why, if Aereo is right, could not modern CATV systems simply continue the same commercial and consumer-oriented activities, free of copyright restrictions, provided they substitute such new technologies for old? Congress would as much have intended to protect a copyright holder from the unlicensed activities of Aereo as from those of cable companies.

The text of the Clause effectuates Congress’ intent. Aereo’s argument to the contrary relies on the premise that “to transmit … a performance” means to make a single transmission. But the Clause suggests that an entity may transmit a performance through multiple, discrete transmissions. That is because one can “transmit” or “communicate” something through a set of actions. Thus one can transmit a message to one’s friends, irrespective of whether one sends separate identical e-mails to each friend or a single e-mail to all at once. So can an elected official communicate an idea, slogan, or speech to her constituents, regardless of whether she communicates that idea, slogan, or speech during individual phone calls to each constituent or in a public square.

The fact that a singular noun (“a performance”) follows the words “to transmit” does not suggest the contrary. One can sing a song to his family, whether he sings the same song one-on-one or in front of all together. Similarly, one’s colleagues may watch a performance of a particular play—say, this season’s modern-dress version of “Measure for Measure”—whether they do so at separate or at the same showings. By the same principle, an entity may transmit a performance through one or several transmissions, where the performance is of the same work.

The Transmit Clause must permit this interpretation, for it provides that one may transmit a performance to the public “whether the members of the public capable of receiving the performance … receive it … at the same time or at different times.” § 101. Were the words “to transmit … a performance” limited to a single act of communication, members of the public could not receive the performance communicated “at different times.” Therefore, in light of the purpose and text of the Clause, we conclude that when an entity communicates the same contemporaneously perceptible images and sounds to multiple people, it transmits a performance to them regardless of the number of discrete communications it makes.

We do not see how the fact that Aereo transmits via personal copies of programs could make a difference. The Act applies to transmissions “by means of any device or process.” And retransmitting a television program using user-specific copies is a “process” of transmitting a performance. A “cop[y]” of a work is simply a “material objec[t] … in which a work is fixed … and from which the work can be perceived, reproduced, or otherwise communicated.” So whether Aereo transmits from the same or separate copies, it performs the same work; it shows the same images and makes audible the same sounds. Therefore, when Aereo streams the same television program to multiple subscribers, it “transmit[s] … a performance” to all of them.

Moreover, the subscribers to whom Aereo transmits television programs constitute “the public.” Aereo communicates the same contemporaneously perceptible images and sounds to a large number of people who are unrelated and unknown to each other. This matters because, although the Act does not define “the public,” it specifies that an entity performs publicly when it performs at “any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.” The Act thereby suggests that “the public” consists of a large group of people outside of a family and friends.

Neither the record nor Aereo suggests that Aereo’s subscribers receive performances in their capacities as owners or possessors of the underlying works. This is relevant because when an entity performs to a set of people, whether they constitute “the public” often depends upon their relationship to the underlying work. When, for example, a valet parking attendant returns cars to their drivers, we would not say that the parking service provides cars “to the public.” We would say that it provides the cars to their owners. We would say that a car dealership, on the other hand, does provide cars to the public, for it sells cars to individuals who lack a pre-existing relationship to the cars. Similarly, an entity that transmits a performance to individuals in their capacities as owners or possessors does not perform to “the public,” whereas an entity like Aereo that transmits to large numbers of paying subscribers who lack any prior relationship to the works does so perform.

Finally, we note that Aereo’s subscribers may receive the same programs at different times and locations. This fact does not help Aereo, however, for the Transmit Clause expressly provides that an entity may perform publicly “whether the members of the public capable of receiving the performance … receive it in the same place or in separate places and at the same time or at different times.” In other words, “the public” need not be situated together, spatially or temporally. For these reasons, we conclude that Aereo transmits a performance of petitioners’ copyrighted works to the public, within the meaning of the Transmit Clause.

IV

Aereo and many of its supporting amici argue that to apply the Transmit Clause to Aereo’s conduct will impose copyright liability on other technologies, including new technologies, that Congress could not possibly have wanted to reach. We agree that Congress, while intending the Transmit Clause to apply broadly to cable companies and their equivalents, did not intend to discourage or to control the emergence or use of different kinds of technologies. But we do not believe that our limited holding today will have that effect.

For one thing, the history of cable broadcast transmissions that led to the enactment of the Transmit Clause informs our conclusion that Aereo “perform [s],” but it does not determine whether different kinds of providers in different contexts also “perform.” For another, an entity only transmits a performance when it communicates contemporaneously perceptible images and sounds of a work

Further, we have interpreted the term “the public” to apply to a group of individuals acting as ordinary members of the public who pay primarily to watch broadcast television programs, many of which are copyrighted. We have said that it does not extend to those who act as owners or possessors of the relevant product. And we have not considered whether the public performance right is infringed when the user of a service pays primarily for something other than the transmission of copyrighted works, such as the remote storage of content. See Brief for United States as Amicus Curiae 31 (distinguishing cloud-based storage services because they “offer consumers more numerous and convenient means of playing back copies that the consumers have already lawfully acquired” (emphasis in original)). In addition, an entity does not transmit to the public if it does not transmit to a substantial number of people outside of a family and its social circle.

We also note that courts often apply a statute’s highly general language in light of the statute’s basic purposes. Finally, the doctrine of “fair use” can help to prevent inappropriate or inequitable applications of the Clause. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984).

We cannot now answer more precisely how the Transmit Clause or other provisions of the Copyright Act will apply to technologies not before us. We agree with the Solicitor General that “[q]uestions involving cloud computing, [remote storage] DVRs, and other novel issues not before the Court, as to which ‘Congress has not plainly marked [the] course,’ should await a case in which they are squarely presented.” And we note that, to the extent commercial actors or other interested entities may be concerned with the relationship between the development and use of such technologies and the Copyright Act, they are of course free to seek action from Congress. Cf. Digital Millennium Copyright Act, 17 U.S.C. § 512.

* * *

For these reasons, we conclude that Aereo “perform[s]” petitioners’ copyrighted works “publicly,” as those terms are defined by the Transmit Clause. We therefore reverse the contrary judgment of the Court of Appeals, and we remand the case for further proceedings consistent with this opinion.

Justice SCALIA, with whom Justice THOMAS and Justice ALITO join, dissenting.

This case is the latest skirmish in the long-running copyright battle over the delivery of television programming. The Networks sued Aereo for several forms of copyright infringement, but we are here concerned with a single claim: that Aereo violates the Networks’ “exclusive righ[t]” to “perform” their programs “publicly.” 17 U.S.C. § 106(4). That claim fails at the very outset because Aereo does not “perform” at all. The Court manages to reach the opposite conclusion only by disregarding widely accepted rules for service-provider liability and adopting in their place an improvised standard (“looks-like-cable-TV”) that will sow confusion for years to come.

I. Legal Standard

Most suits against equipment manufacturers and service providers involve secondary-liability claims. For example, when movie studios sued to block the sale of Sony’s Betamax videocassette recorder (VCR), they argued that Sony was liable because its customers were making unauthorized copies. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 434–435 (1984). Record labels and movie studios relied on a similar theory when they sued Grokster and StreamCast, two providers of peer-to-peer file-sharing software. See Metro–Goldwyn–Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 920-21, 927 (2005).

This suit, or rather the portion of it before us here, is fundamentally different. The Networks claim that Aereo directly infringes their public-performance right. Accordingly, the Networks must prove that Aereo “perform [s]” copyrighted works, § 106(4), when its subscribers log in, select a channel, and push the “watch” button. That process undoubtedly results in a performance; the question is who does the performing. See Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 130 (C.A.2 2008). If Aereo’s subscribers perform but Aereo does not, the claim necessarily fails.

The Networks’ claim is governed by a simple but profoundly important rule: A defendant may be held directly liable only if it has engaged in volitional conduct that violates the Act. This requirement is firmly grounded in the Act’s text, which defines “perform” in active, affirmative terms: One “perform[s]” a copyrighted “audiovisual work,” such as a movie or news broadcast, by “show[ing] its images in any sequence” or “mak[ing] the sounds accompanying it audible.” § 101. And since the Act makes it unlawful to copy or perform copyrighted works, not to copy or perform in general, see § 501(a), the volitional-act requirement demands conduct directed to the plaintiff’s copyrighted material. Every Court of Appeals to have considered an automated-service provider’s direct liability for copyright infringement has adopted that rule. See Fox Broadcasting Co. v. Dish Network LLC, 747 F.3d 1060, 1066–1068 (C.A.9 2014); Cartoon Network, supra, at 130–131 (C.A.2 2008); CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 549–550 (C.A.4 2004). Although we have not opined on the issue, our cases are fully consistent with a volitional-conduct requirement. For example, we gave several examples of direct infringement in Sony, each of which involved a volitional act directed to the plaintiff’s copyrighted material.

The volitional-conduct requirement is not at issue in most direct-infringement cases; the usual point of dispute is whether the defendant’s conduct is infringing (e.g., Does the defendant’s design copy the plaintiff’s?), rather than whether the defendant has acted at all (e.g., Did this defendant create the infringing design?). But it comes right to the fore when a direct-infringement claim is lodged against a defendant who does nothing more than operate an automated, user-controlled system. Internet-service providers are a prime example. When one user sends data to another, the provider’s equipment facilitates the transfer automatically. Does that mean that the provider is directly liable when the transmission happens to result in the “reproduc[tion],” § 106(1), of a copyrighted work? It does not. The provider’s system is “totally indifferent to the material’s content,” whereas courts require “some aspect of volition” directed at the copyrighted material before direct liability may be imposed. The defendant may be held directly liable only if the defendant itself trespassed on the exclusive domain of the copyright owner. Most of the time that issue will come down to who selects the copyrighted content: the defendant or its customers. See Cartoon Network, supra, at 131–132.

A comparison between copy shops and video-on-demand services illustrates the point. A copy shop rents out photocopiers on a per-use basis. One customer might copy his 10–year–old’s drawings—a perfectly lawful thing to do—while another might duplicate a famous artist’s copyrighted photographs—a use clearly prohibited by § 106(1). Either way, the customer chooses the content and activates the copying function; the photocopier does nothing except in response to the customer’s commands. Because the shop plays no role in selecting the content, it cannot be held directly liable when a customer makes an infringing copy.

Video-on-demand services, like photocopiers, respond automatically to user input, but they differ in one crucial respect: They choose the content. When a user signs in to Netflix, for example, “thousands of … movies [and] TV episodes” carefully curated by Netflix are “available to watch instantly.” See How [D]oes Netflix [W]ork?, online at http://help.netflix.com/en/node/412 (as visited June 20, 2014, and available in Clerk of Court’s case file). That selection and arrangement by the service provider constitutes a volitional act directed to specific copyrighted works and thus serves as a basis for direct liability.

The distinction between direct and secondary liability would collapse if there were not a clear rule for determining whether the defendant committed the infringing act. The volitional-conduct requirement supplies that rule; its purpose is not to excuse defendants from accountability, but to channel the claims against them into the correct analytical track. Thus, in the example given above, the fact that the copy shop does not choose the content simply means that its culpability will be assessed using secondary-liability rules rather than direct-liability rules.

II. Application to Aereo

So which is Aereo: the copy shop or the video-on-demand service? In truth, it is neither. Rather, it is akin to a copy shop that provides its patrons with a library card. Aereo offers access to an automated system consisting of routers, servers, transcoders, and dime-sized antennae. Like a photocopier or VCR, that system lies dormant until a subscriber activates it. When a subscriber selects a program, Aereo’s system picks up the relevant broadcast signal, translates its audio and video components into digital data, stores the data in a user-specific file, and transmits that file’s contents to the subscriber via the Internet—at which point the subscriber’s laptop, tablet, or other device displays the broadcast just as an ordinary television would. The result of that process fits the statutory definition of a performance to a tee: The subscriber’s device “show[s]” the broadcast’s “images” and “make[s] the sounds accompanying” the broadcast “audible.” § 101. The only question is whether those performances are the product of Aereo’s volitional conduct.

They are not. Unlike video-on-demand services, Aereo does not provide a prearranged assortment of movies and television shows. Rather, it assigns each subscriber an antenna that—like a library card—can be used to obtain whatever broadcasts are freely available. Some of those broadcasts are copyrighted; others are in the public domain. The key point is that subscribers call all the shots: Aereo’s automated system does not relay any program, copyrighted or not, until a subscriber selects the program and tells Aereo to relay it. Aereo’s operation of that system is a volitional act and a but-for cause of the resulting performances, but, as in the case of the copy shop, that degree of involvement is not enough for direct liability.

In sum, Aereo does not “perform” for the sole and simple reason that it does not make the choice of content. And because Aereo does not perform, it cannot be held directly liable for infringing the Networks’ public-performance right.3 That conclusion does not necessarily mean that Aereo’s service complies with the Copyright Act. Quite the contrary. The Networks’ complaint alleges that Aereo is directly and secondarily liable for infringing their public-performance rights (§ 106(4)) and also their reproduction rights (§ 106(1)). Their request for a preliminary injunction—the only issue before this Court—is based exclusively on the direct-liability portion of the public-performance claim (and further limited to Aereo’s “watch” function, as opposed to its “record” function). Affirming the judgment below would merely return this case to the lower courts for consideration of the Networks’ remaining claims.

III. Guilt By Resemblance

The Court’s conclusion that Aereo performs boils down to the following syllogism: (1) Congress amended the Act to overrule our decisions holding that cable systems do not perform when they retransmit over-the-air broadcasts; (2) Aereo looks a lot like a cable system; therefore (3) Aereo performs. That reasoning suffers from a trio of defects.

First, it is built on the shakiest of foundations. Perceiving the text to be ambiguous, the Court reaches out to decide the case based on a few isolated snippets of legislative history. The Court treats those snippets as authoritative evidence of congressional intent even though they come from a single report issued by a committee whose members make up a small fraction of one of the two Houses of Congress. Little else need be said here about the severe shortcomings of that interpretative methodology.

Second, the Court’s reasoning fails on its own terms because there are material differences between the cable systems at issue in Teleprompter and Fortnightly, on the one hand and Aereo on the other. The former (which were then known as community-antenna television systems) captured the full range of broadcast signals and forwarded them to all subscribers at all times, whereas Aereo transmits only specific programs selected by the user, at specific times selected by the user. The Court acknowledges this distinction but blithely concludes that it “does not make a critical difference.” Even if that were true, the Court fails to account for other salient differences between the two technologies. Though cable systems started out essentially as dumb pipes that routed signals from point A to point B, by the 1970’s, that kind of service no longer existed. At the time of our Teleprompter decision, cable companies performed the same functions as broadcasters by deliberately selecting and importing distant signals, originating programs, and selling commercials, thus making them curators of content—more akin to video-on-demand services than copy shops. So far as the record reveals, Aereo does none of those things.

Third, and most importantly, even accepting that the 1976 amendments had as their purpose the overruling of our cable-TV cases, what they were meant to do and how they did it are two different questions—and it is the latter that governs the case before us here. The injury claimed is not violation of a law that says operations similar to cable TV are subject to copyright liability, but violation of § 106(4) of the Copyright Act. And whatever soothing reasoning the Court uses to reach its result (“this looks like cable TV”), the consequence of its holding is that someone who implements this technology “perform[s]” under that provision. That greatly disrupts settled jurisprudence which, before today, applied the straightforward, bright-line test of volitional conduct directed at the copyrighted work. If that test is not outcome determinative in this case, presumably it is not outcome determinative elsewhere as well. And it is not clear what the Court proposes to replace it. Perhaps the Court means to adopt (invent, really) a two-tier version of the Copyright Act, one part of which applies to “cable companies and their equivalents” while the other governs everyone else.

Making matters worse, the Court provides no criteria for determining when its cable-TV-lookalike rule applies. Must a defendant offer access to live television to qualify? If similarity to cable-television service is the measure, then the answer must be yes. But consider the implications of that answer: Aereo would be free to do exactly what it is doing right now so long as it built mandatory time shifting into its “watch” function. Aereo would not be providing live television if it made subscribers wait to tune in until after a show’s live broadcast ended. A subscriber could watch the 7 p.m. airing of a 1–hour program any time after 8 p.m. Assuming the Court does not intend to adopt such a do-nothing rule (though it very well may), there must be some other means of identifying who is and is not subject to its guilt-by-resemblance regime.

* * *

I share the Court’s evident feeling that what Aereo is doing (or enabling to be done) to the Networks’ copyrighted programming ought not to be allowed. But perhaps we need not distort the Copyright Act to forbid it. As discussed at the outset, Aereo’s secondary liability for performance infringement is yet to be determined, as is its primary and secondary liability for reproduction infringement. If that does not suffice, then (assuming one shares the majority’s estimation of right and wrong) what we have before us must be considered a “loophole” in the law. It is not the role of this Court to identify and plug loopholes. It is the role of good lawyers to identify and exploit them, and the role of Congress to eliminate them if it wishes. Congress can do that, I may add, in a much more targeted, better informed, and less disruptive fashion than the crude “looks-like-cable-TV” solution the Court invents today.

We came within one vote of declaring the VCR contraband 30 years ago in Sony. The dissent in that case was driven in part by the plaintiffs’ prediction that VCR technology would wreak all manner of havoc in the television and movie industries.

The Networks make similarly dire predictions about Aereo. We are told that nothing less than “the very existence of broadcast television as we know it” is at stake. Aereo and its amici dispute those forecasts and make a few of their own, suggesting that a decision in the Networks’ favor will stifle technological innovation and imperil billions of dollars of investments in cloud-storage services. We are in no position to judge the validity of those self-interested claims or to foresee the path of future technological development. Hence, the proper course is not to bend and twist the Act’s terms in an effort to produce a just outcome, but to apply the law as it stands and leave to Congress the task of deciding whether the Copyright Act needs an upgrade.

I respectfully dissent.

__________

Check Your Understanding – Aereo

Question 1. On what basis did the Court conclude that Aereo’s service constituted the public performance of plaintiff’s copyrighted works?

Question 2. What does the Court have to say about the implications of Aereo for “cloud storage” of copyrighted works?

Some things to consider when reading Perfect 10 v. Amazon:

1. The plaintiff’s argument that Google’s “Google Image” function infringes the display and distribution rights with respect to plaintiff’s copyrighted images.
2. The distinction between the thumbnail versions of Perfect 10’s images, which Google makes and stores on its servers, and the full-size versions, which Google only provides a link to.
3. The so-called “server test,” which the Ninth Circuit appears to embrace in this decision. We will see later that other courts have rejected the server test.

Perfect 10, Inc. v. Amazon.com, Inc.

508 F.3d 1146 (9th Cir. 2007)

IKUTA, Circuit Judge:

In this appeal, we consider a copyright owner’s efforts to stop an Internet search engine from facilitating access to infringing images. Perfect 10, Inc. sued Google Inc., for infringing Perfect 10’s copyrighted photographs of nude models, among other claims. The district court preliminarily enjoined Google from creating and publicly displaying thumbnail versions of Perfect 10’s images, Perfect 10 v. Google, Inc., 416 F.Supp.2d 828 (C.D.Cal.2006), but did not enjoin Google from linking to third-party websites that display infringing full-size versions of Perfect 10’s images.

The district court handled this complex case in a particularly thoughtful and skillful manner. Nonetheless, the district court erred on certain issues, as we will further explain below. We affirm in part, reverse in part, and remand.

I

Background

Google’s computers, along with millions of others, are connected to networks known collectively as the “Internet.” Computer owners can provide information stored on their computers to other users connected to the Internet through a medium called a webpage. A webpage consists of text interspersed with instructions written in Hypertext Markup Language (“HTML”) that is stored in a computer. No images are stored on a webpage; rather, the HTML instructions on the webpage provide an address for where the images are stored, whether in the webpage publisher’s computer or some other computer. In general, webpages are publicly available and can be accessed by computers connected to the Internet through the use of a web browser.

Google operates a search engine, a software program that automatically accesses thousands of websites (collections of webpages) and indexes them within a database stored on Google’s computers. When a Google user accesses the Google website and types in a search query, Google’s software searches its database for websites responsive to that search query. Google then sends relevant information from its index of websites to the user’s computer. Google’s search engines can provide results in the form of text, images, or videos.

The Google search engine that provides responses in the form of images is called “Google Image Search.” In response to a search query, Google Image Search identifies text in its database responsive to the query and then communicates to users the images associated with the relevant text. Google’s software cannot recognize and index the images themselves. Google Image Search provides search results as a webpage of small images called “thumbnails,” which are stored in Google’s servers. The thumbnail images are reduced, lower-resolution versions of full-sized images stored on third-party computers.

When a user clicks on a thumbnail image, the user’s browser program interprets HTML instructions on Google’s webpage. These HTML instructions direct the user’s browser to cause a rectangular area (a “window”) to appear on the user’s computer screen. The window has two separate areas of information. The browser fills the top section of the screen with information from the Google webpage, including the thumbnail image and text. The HTML instructions also give the user’s browser the address of the website publisher’s computer that stores the full-size version of the thumbnail. By following the HTML instructions to access the third-party webpage, the user’s browser connects to the website publisher’s computer, downloads the full-size image, and makes the image appear at the bottom of the window on the user’s screen. Google does not store the images that fill this lower part of the window and does not communicate the images to the user; Google simply provides HTML instructions directing a user’s browser to access a third-party website. However, the top part of the window (containing the information from the Google webpage) appears to frame and comment on the bottom part of the window. Thus, the user’s window appears to be filled with a single integrated presentation of the full-size image, but it is actually an image from a third-party website framed by information from Google’s website. The process by which the webpage directs a user’s browser to incorporate content from different computers into a single window is referred to as “in-line linking.” Kelly v. Arriba Soft Corp., 336 F.3d 811, 816 (9th Cir.2003). The term “framing” refers to the process by which information from one computer appears to frame and annotate the in-line linked content from another computer.

Google also stores webpage content in its cache. For each cached webpage, Google’s cache contains the text of the webpage as it appeared at the time Google indexed the page, but does not store images from the webpage. Google may provide a link to a cached webpage in response to a user’s search query. However, Google’s cache version of the webpage is not automatically updated when the webpage is revised by its owner. So if the webpage owner updates its webpage to remove the HTML instructions for finding an infringing image, a browser communicating directly with the webpage would not be able to access that image. However, Google’s cache copy of the webpage would still have the old HTML instructions for the infringing image. Unless the owner of the computer changed the HTML address of the infringing image, or otherwise rendered the image unavailable, a browser accessing Google’s cache copy of the website could still access the image where it is stored on the website publisher’s computer. In other words, Google’s cache copy could provide a user’s browser with valid directions to an infringing image even though the updated webpage no longer includes that infringing image.

Perfect 10 markets and sells copyrighted images of nude models. Among other enterprises, it operates a subscription website on the Internet. Subscribers pay a monthly fee to view Perfect 10 images in a “members’ area” of the site.

Some website publishers republish Perfect 10’s images on the Internet without authorization. Once this occurs, Google’s search engine may automatically index the webpages containing these images and provide thumbnail versions of images in response to user inquiries. When a user clicks on the thumbnail image returned by Google’s search engine, the user’s browser accesses the third-party webpage and in-line links to the full-sized infringing image stored on the website publisher’s computer. This image appears, in its original context, on the lower portion of the window on the user’s computer screen framed by information from Google’s webpage.

III

Direct Infringement

Perfect 10 claims that Google’s search engine program directly infringes two exclusive rights granted to copyright holders: its display rights and its distribution rights. Plaintiffs must satisfy two requirements to present a prima facie case of direct infringement: (1) they must show ownership of the allegedly infringed material and (2) they must demonstrate that the alleged infringers violate at least one exclusive right granted to copyright holders under 17 U.S.C. § 106.

Perfect 10’s ownership of at least some of the images at issue is not disputed.

The district court held that Perfect 10 was likely to prevail in its claim that Google violated Perfect 10’s display right with respect to the infringing thumbnails. However, the district court concluded that Perfect 10 was not likely to prevail on its claim that Google violated either Perfect 10’s display or distribution right with respect to its full-size infringing images. We review these rulings for an abuse of discretion.

A. Display Right

In considering whether Perfect 10 made a prima facie case of violation of its display right, the district court reasoned that a computer owner that stores an image as electronic information and serves that electronic information directly to the user (“i.e., physically sending ones and zeroes over the [I]nternet to the user’s browser,” is displaying the electronic information in violation of a copyright holder’s exclusive display right. 17 U.S.C. § 106(5). Conversely, the owner of a computer that does not store and serve the electronic information to a user is not displaying that information, even if such owner in-line links to or frames the electronic information. The district court referred to this test as the “server test.”

Applying the server test, the district court concluded that Perfect 10 was likely to succeed in its claim that Google’s thumbnails constituted direct infringement but was unlikely to succeed in its claim that Google’s in-line linking to full-size infringing images constituted a direct infringement. As explained below, because this analysis comports with the language of the Copyright Act, we agree with the district court’s resolution of both these issues.

We have not previously addressed the question when a computer displays a copyrighted work for purposes of section 106(5). Section 106(5) states that a copyright owner has the exclusive right “to display the copyrighted work publicly.” The Copyright Act explains that “display” means “to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process….” 17 U.S.C. § 101. Section 101 defines “copies” as “material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Finally, the Copyright Act provides that “[a] work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”

We must now apply these definitions to the facts of this case. A photographic image is a work that is “ ‘fixed’ in a tangible medium of expression,” for purposes of the Copyright Act, when embodied (i.e., stored) in a computer’s server (or hard disk, or other storage device). The image stored in the computer is the “copy” of the work for purposes of copyright law. See MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 517–18 (9th Cir.1993) (a computer makes a “copy” of a software program when it transfers the program from a third party’s computer (or other storage device) into its own memory, because the copy of the program recorded in the computer is “fixed” in a manner that is “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration” (quoting 17 U.S.C. § 101)). The computer owner shows a copy “by means of a … device or process” when the owner uses the computer to fill the computer screen with the photographic image stored on that computer, or by communicating the stored image electronically to another person’s computer. 17 U.S.C. § 101. In sum, based on the plain language of the statute, a person displays a photographic image by using a computer to fill a computer screen with a copy of the photographic image fixed in the computer’s memory. There is no dispute that Google’s computers store thumbnail versions of Perfect 10’s copyrighted images and communicate copies of those thumbnails to Google’s users. Therefore, Perfect 10 has made a prima facie case that Google’s communication of its stored thumbnail images directly infringes Perfect 10’s display right.

Google does not, however, display a copy of full-size infringing photographic images for purposes of the Copyright Act when Google frames in-line linked images that appear on a user’s computer screen. Because Google’s computers do not store the photographic images, Google does not have a copy of the images for purposes of the Copyright Act. In other words, Google does not have any “material objects … in which a work is fixed … and from which the work can be perceived, reproduced, or otherwise communicated” and thus cannot communicate a copy. 17 U.S.C. § 101.

Instead of communicating a copy of the image, Google provides HTML instructions that direct a user’s browser to a website publisher’s computer that stores the full-size photographic image. Providing these HTML instructions is not equivalent to showing a copy. First, the HTML instructions are lines of text, not a photographic image. Second, HTML instructions do not themselves cause infringing images to appear on the user’s computer screen. The HTML merely gives the address of the image to the user’s browser. The browser then interacts with the computer that stores the infringing image. It is this interaction that causes an infringing image to appear on the user’s computer screen. Google may facilitate the user’s access to infringing images. However, such assistance raises only contributory liability issues, and does not constitute direct infringement of the copyright owner’s display rights.

Our ruling that a computer owner does not display a copy of an image when it communicates only the HTML address of the copy [does not] erroneously collapse the display right in section 106(5) into the reproduction right set forth in section 106(1). Nothing in the Copyright Act prevents the various rights protected in section 106 from overlapping. Indeed, under some circumstances, more than one right must be infringed in order for an infringement claim to arise. For example, a “Game Genie” device that allowed a player to alter features of a Nintendo computer game did not infringe Nintendo’s right to prepare derivative works because the Game Genie did not incorporate any portion of the game itself. See Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 967 (9th Cir.1992). We held that a copyright holder’s right to create derivative works is not infringed unless the alleged derivative work “incorporate[s] a protected work in some concrete or permanent ‘form.’ ” In other words, in some contexts, the claimant must be able to claim infringement of its reproduction right in order to claim infringement of its right to prepare derivative works.

Because Google’s cache merely stores the text of webpages, our analysis of whether Google’s search engine program potentially infringes Perfect 10’s display and distribution rights is equally applicable to Google’s cache. Perfect 10 is not likely to succeed in showing that a cached webpage that in-line links to full-size infringing images violates such rights. For purposes of this analysis, it is irrelevant whether cache copies direct a user’s browser to third-party images that are no longer available on the third party’s website, because it is the website publisher’s computer, rather than Google’s computer, that stores and displays the infringing image.

B. Distribution Right

The district court also concluded that Perfect 10 would not likely prevail on its claim that Google directly infringed Perfect 10’s right to distribute its full-size images. The district court reasoned that distribution requires an “actual dissemination” of a copy. Because Google did not communicate the full-size images to the user’s computer, Google did not distribute these images.

Again, the district court’s conclusion on this point is consistent with the language of the Copyright Act. Section 106(3) provides that the copyright owner has the exclusive right “to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. § 106(3). As noted, “copies” means “material objects … in which a work is fixed.” 17 U.S.C. § 101. The Supreme Court has indicated that in the electronic context, copies may be distributed electronically. See N.Y. Times Co. v. Tasini, 533 U.S. 483, 498 (2001) (a computer database program distributed copies of newspaper articles stored in its computerized database by selling copies of those articles through its database service). Google’s search engine communicates HTML instructions that tell a user’s browser where to find full-size images on a website publisher’s computer, but Google does not itself distribute copies of the infringing photographs. It is the website publisher’s computer that distributes copies of the images by transmitting the photographic image electronically to the user’s computer. As in Tasini, the user can then obtain copies by downloading the photo or printing it.

Perfect 10 incorrectly relies on Hotaling v. Church of Jesus Christ of Latter–Day Saints and Napster for the proposition that merely making images “available” violates the copyright owner’s distribution right. Hotaling v. Church of Jesus Christ of Latter–Day Saints, 118 F.3d 199 (4th Cir.1997); Napster, 239 F.3d 1004. Hotaling held that the owner of a collection of works who makes them available to the public may be deemed to have distributed copies of the works. Hotaling, 118 F.3d at 203. Similarly, the distribution rights of the plaintiff copyright owners were infringed by Napster users (private individuals with collections of music files stored on their home computers) when they used the Napster software to make their collections available to all other Napster users. Napster, 239 F.3d at 1011–14.

This “deemed distribution” rule does not apply to Google. Unlike the participants in the Napster system or the library in Hotaling, Google does not own a collection of Perfect 10’s full-size images and does not communicate these images to the computers of people using Google’s search engine. Though Google indexes these images, it does not have a collection of stored full-size images it makes available to the public. Google therefore cannot be deemed to distribute copies of these images under the reasoning of Napster or Hotaling. Accordingly, the district court correctly concluded that Perfect 10 does not have a likelihood of success in proving that Google violates Perfect 10’s distribution rights with respect to full-size images.

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Check Your Understanding – Perfect 10 v. Amazon

Question 1. True or false: According to the Ninth Circuit’s “Server Test,” a computer owner that stores an image as electronic information and serves that electronic information directly to the user is displaying the electronic information in violation of a copyright holder’s exclusive display right.  17 U.S.C. § 106(5). Conversely, the owner of a computer that does not store and serve the electronic information to a user is not displaying that information, even if such owner in-line links to or frames the electronic information.

Question 2. Why did the Perfect 10 court conclude that the plaintiff had made a prima facie case of direct infringement with respect to the thumbnail images, but not the full-size photographic images?

Some things to consider when reading Nicklen:

1. In this decision, a district court residing in the Second Circuit rejects the Ninth Circuit’s “Server Test,” which the court relied on in Perfect 10. Which court do you agree with?
2. The primary issue for the court is whether embedding a copyrighted video on Instagram without authorization can constitute infringement of the display right.
3. Nicklen is not the only district court decision to either reject or limit the Server Test.¹⁰ In a 2023 decision, Hunley v. Instagram,¹¹ the Ninth Circuit acknowledges these district court decisions, but states that at least “no circuit [court] has disapproved of Perfect 10” and its Server Test. In Hunley, the Ninth Circuit held that the Supreme Court’s decision in Aereo is not inconsistent with Perfect 10 and the Server Test.

Nicklen v. Sinclair Broad. Grp., Inc.

2021 WL 3239510 (S.D.N.Y. July 30, 2021)

JED S. RAKOFF, U.S.D.J.

Plaintiff Paul Nicklen captured footage of a starving polar bear and posted the video to his Instagram and Facebook accounts. Dozens of news outlets and online publishers, including Sinclair Broadcast Group, Inc. and its affiliates (collectively, the “Sinclair Defendants”), embedded the video in online articles without first obtaining a license. Nicklen then sued the Sinclair Defendants for copyright infringement. The Sinclair Defendants now move to dismiss the Second Amended Complaint, arguing that embedding a video does not “display” the video within the meaning of the Copyright Act and that the video’s inclusion in an article about the video’s popularity was fair use. For the reasons that follow, the Court denies the motion to dismiss.

FACTUAL AND PROCEDURAL BACKGROUND

I. Factual Allegations

The following allegations are presumed true for purposes of the motion to dismiss. Paul Nicklen is a Canadian nature photographer, filmmaker, and founder of the nonprofit conservationist organization SeaLegacy. Nicklen is the author and registered copyright owner of a video of an emaciated polar bear wandering the Canadian Arctic (“the Video”). On December 5, 2017, Nicklen posted the Video to his Instagram and Facebook accounts. In a caption, Nicklen urged his social media followers to consider the “haunt[ing]” and “soul-crushing scene” and to take steps to mitigate the harms of climate change. Nicklen added that “[w]e must reduce our carbon footprint, eat the right food, stop cutting down our forests, and begin putting the Earth — our home — first.” He then invited his followers to “join us at @sea_legacy as we search for and implement solutions for the oceans and the animals that rely on them — including us humans.” Finally, the caption noted that the Video “is exclusively managed by Caters News” and directed those seeking “[t]o license or use [the Video] in a commercial player” to contact Caters News.

Sinclair Broadcast Group, Inc. is a Maryland-based media conglomerate that owns “over 200” local television stations and 118 wholly owned subsidiaries nationwide (“Sinclair Affiliates”). On or around December 11, 2017, Sinclair Broadcast Group published an article titled “Starving polar bear goes viral in heartbreaking video.” Sinclair Broadcast Group included the Video in this article using the Instagram or Facebook application programing interface (“API”) embed tool. Sinclair Broadcast Group “embedded” the Video by including in its website an HTML code provided by Instagram or Facebook that directed web browsers to retrieve the Video from the Instagram or Facebook server for viewing on Sinclair’s website. The Video appeared within the body of the Sinclair article even when a reader took no action to retrieve the Video or to navigate to Nicklen’s Facebook or Instagram account, and even when a reader did not have a Facebook or Instagram account.

The Sinclair Broadcast Group article opens by stating that “[a] photograph of a polar bear is grabbing attention as it shows the animal slowly succumbing to starvation.” The article goes on to repeat quotes Nicklen gave to National Geographic and to explain that Nicklen “advocated for the reduction of the carbon footprint,” quoting the portion of Nicklen’s Instagram caption that described the polar bear population’s battle against extinction. The article closes by noting that “[t]he video has already reached over 1 million views on Facebook.” Nicklen alleges upon information and belief that this Sinclair Broadcast Group article was reposted — and the Video was re-embedded — on all television station websites operated by the Sinclair Defendants.

Though Nicklen provided licensing information in the text of his Instagram post, the Sinclair Defendants did not obtain a license or Nicklen’s consent before embedding the Video. On or about December 8, 2020, Nicklen sent the Sinclair Affiliates a takedown notice, but the Video remains displayed on television station websites owned by Sinclair Broadcast Group, Inc. and Sinclair Affiliates.

II. Procedural Background

Nicklen and Christina Mittermeier¹² sued the Sinclair Defendants, among others, for copyright infringement. In the operative complaint, Nicklen alleges that by embedding Nicklen’s copyrighted video on Sinclair websites using the Instagram or Facebook API, the Sinclair Defendants infringed his exclusive reproduction, distribution, and display rights in violation of 17 U.S.C. §§ 106(1), (3), and (5). The Sinclair Defendants move to dismiss the Second Amended Complaint.

DISCUSSION

I. Copyright Infringement

The fundamental question at issue here is whether embedding a video “displays” the video within the meaning of the Copyright Act of 1976. This Court concludes that it does.

Under the Copyright Act, “[t]o ‘display’ a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.” 17 U.S.C. § 101. A device or process is defined as “one now known or later developed,” and to show means “to cause or permit to be seen.” See Show, Merriam-Webster Online Dictionary, https://www.merriam-webster.com/dictionary/show (last visited July 27, 2021); accord Show, v., Oxford English Dictionary, https://www.oed.com/view/Entry/178737 (defining to “show” as “[t]o present or display (an object) in order that it may be looked at; to expose or exhibit to view”). Thus, under the plain meaning of the Copyright Act, a defendant violates an author’s exclusive right to display an audiovisual work publicly when the defendant without authorization causes a copy of the work, or individual images of the work, to be seen — whether directly or by means of any device or process known in 1976 or developed thereafter.

In 1976, Congress crafted a broad display right, conscious that section 106(5) “represent[ed] the first explicit statutory recognition in American copyright law of an exclusive right to show a copyrighted work, or an image of it, to the public.” The display right as initially drafted was “analogous to the traditional common-law right of first publication in a literary work, or to the moral right of divulgation in continental law, but that right would cease as soon as a copy of the work was transferred.” R. Anthony Reese, The Public Display Right: The Copyright Act’s Neglected Solution to the Controversy Over RAM “Copies”, 2001 U. of Ill. L. Rev. 83, 95 (2001). But this approach was ultimately set aside. The display right in its final form encompasses “not only the initial rendition or showing, but also any further act by which that rendition or showing is transmitted or communicated to the public.” H.R. Rep. 94-1476, at 63. As such, an infringer displays a work by showing “a copy” of the work — not the first copy, or the only copy, but any copy of the work. See 17 U.S.C. § 101.

Further, the exclusive display right set forth in the Copyright Act is technology-neutral, covering displays made directly or by means of any device or process “now known or later developed.” The concept of “display” thus includes “the projection of an image on a screen or other surface by any method, the transmission of an image by electronic or other means, and the showing of an image on a cathode ray tube, or similar viewing apparatus connected with any sort of information storage and retrieval system.” H.R. Rep. No. 94-1476, at 64 (1976). The right is concerned not with how a work is shown, but that a work is shown.

The Copyright Act’s text and history establish that embedding a video on a website “displays” that video, because to embed a video is to show the video or individual images of the video nonsequentially by means of a device or process. Nicklen alleges that the Sinclair Defendants included in their web pages an HTML code that caused the Video to “appear[ ]” within the web page “no differently than other content within the Post,” although “the actual Video … was stored on Instagram’s server.” The embed code on the Sinclair Defendants’ webpages is simply an information “retrieval system” that permits the Video or an individual image of the Video to be seen. The Sinclair Defendants’ act of embedding therefore falls squarely within the display right.

The Sinclair Defendants nevertheless insist that embedding is not display and ask the Court to adopt the Ninth Circuit’s “server rule.” Under that rule, a website publisher displays an image by “using a computer to fill a computer screen with a copy of the photographic image fixed in the computer’s memory.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1160 (9th Cir. 2007). In contrast, when a website publisher embeds an image, HTML code “gives the address of the image to the user’s browser” and the browser “interacts with the [third-party] computer that stores the infringing image.” Because the image remains on a third-party’s server and is not fixed in the memory of the infringer’s computer, therefore, under the “server rule,” embedding is not display.

The server rule is contrary to the text and legislative history of the Copyright Act. The Act defines to display as “to show a copy of” a work, 17 U.S.C. § 101, not “to make and then show a copy of the copyrighted work.” The Ninth Circuit’s approach, under which no display is possible unless the alleged infringer has also stored a copy of the work on the infringer’s computer, makes the display right merely a subset of the reproduction right. See Jane C. Ginsburg & Luke Ali Budiardjo, Embedding Content or Interring Copyright: Does the Internet Need the “Server Rule”?, 32 Colum. J. L. & Arts 417, 430 (2019) (explaining that the server rule “convert[s] the display right into an atrophied appendage of the reproduction right” and thereby “ignores Congress’s endeavor to ensure that the full ‘bundle’ of exclusive rights will address evolving modes of exploitation of works”). Further, the server rule distinguishes between showing a copy possessed by the infringer and showing a copy possessed by someone else. See Perfect 10, 508 F.3d at 1161 (concluding that “Google does not … display a copy of full-size infringing photographic images for purposes of the Copyright Act” because “Google does not have a copy of the images for purposes of the Copyright Act”). As discussed above, when a copy of a work is shown, the Copyright Act makes no such distinction. See, e.g., Am. Broad. Companies, Inc. v. Aereo, Inc., 573 U.S. 431, 441-48 (2014) (holding that, despite technological complexity concerning the “behind-the-scenes” delivery of images, the defendant violated the exclusive right to “show [an audiovisual work’s] images in any sequence,” because “whether Aereo transmits from the same or separate copies, it … shows the same images and makes audible the same sound”). Rather, to “show a copy” is to display it. 17 U.S.C. § 101.

Further, the Ninth Circuit’s reasoning in Perfect 10 should be cabined by two facts specific to that case: (1) the defendant operated a search engine and (2) the copyrighted images were displayed only if a user clicked on a link. See Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 595 (S.D.N.Y. 2018) (distinguishing Perfect 10 on these grounds). When a user “open[s] up a favorite blog or website to find a full color image awaiting the user, whether he or she asked for it, looked for it, clicked on it, or not,” the Ninth Circuit’s approach is inapt. See id. This case does not involve a search engine, and Nicklen alleges that no user intervention was required to display the Video’s individual images nonsequentially. An individual still image from the Video awaits Sinclair readers whether they click the image to play the video or not. Thus, Perfect 10’s test is a poor fit for this case, and the Court declines to adopt it.

Proponents of the server rule suggest that a contrary rule would impose far-reaching and ruinous liability, supposedly grinding the internet to a halt. These speculations seem farfetched, but are, in any case, just speculations. Moreover, the alternative provided by the server rule is no more palatable. Under the server rule, a photographer who promotes his work on Instagram or a filmmaker who posts her short film on YouTube surrenders control over how, when, and by whom their work is subsequently shown — reducing the display right, effectively, to the limited right of first publication that the Copyright Act of 1976 rejects. The Sinclair Defendants argue that an author wishing to maintain control over how a work is shown could abstain from sharing the work on social media, pointing out that if Nicklen removed his work from Instagram, the Video would disappear from the Sinclair Defendants’ websites as well. But it cannot be that the Copyright Act grants authors an exclusive right to display their work publicly only if that public is not online.

For the foregoing reasons, Nicklen has plausibly alleged that by embedding the Video without authorization, the Sinclair Defendants violated the display right.

__________

Check Your Understanding – Nicklen

Question 1. In Nicklen, why did the court reject the defendants’ argument that they had not infringed the plaintiff’s public display right because the copyrighted video was embedded in a story, but not stored on defendants’ computer?

E. The Digital Public Performance Right

Recall that § 106(4) specifically recites the categories of copyrighted works with respect to which its public performance right applies, i.e., “literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works.” While the list includes musical works, sound recordings are conspicuously absent. In 1995, Congress partially addressed this concern when it enacted the Digital Performance Right in Sound Recordings Act of 1995 (“DPSR”), which introduced a new exclusive right, i.e., the digital public performance right, as set forth in 17 U.S.C. § 106(6). In particular, § 106(6) confers upon copyright owners the exclusive right, “in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.”

Significantly, this is not the “general public performance right” of § 106(4), but is limited in a number of important respects. In particular, § 106(6) is limited to “digital” audio transmissions. In other words, it does not encompass traditional analog transmissions by terrestrial radio stations. Congress also created a number of other limitations, many of which are set forth in 17 U.S.C. § 114(d). This section of the Copyright Act is extremely complicated, but some of its most important features can be summarized as follows.

Section 114 explicitly exempts some digital transmissions from the digital public performance right, particularly FCC-licensed, non-subscription, over-the-air broadcasts. Significantly, this exemption does not apply in the case of a traditional analog radio station that re-broadcasts its content in digital format over the Internet. See Bonneville International Corp. v. Peters, 347 F.3d 485 (3^rd Cir 2003).

Section 114 also provides for a compulsory license in the case of nonexempt digital performances which are “non-interactive,” i.e., that transmit sound recordings in a manner that, for the most part, cannot be controlled by the consumer. The terms of this statutory license, e.g., the royalty rate, is set by the Copyright Royalty Board.¹³ The statute provides for the distribution of compulsory license fees among a number of stakeholders, including not only the record company but also the performing artists. A music webcasting service like Pandora, which allows the listeners of its free service only a limited ability to select which recordings they will hear, is designed to fall within this category of “non-interactive” services, and thereby eligible for the statutory compulsory license.

Finally, digital performances that are “interactive,” i.e., that allow users to choose which songs they will hear, are subject to the digital public performance right and not eligible for any statutory compulsory license. As a result, these interactive digital services, such as Spotify, are required to negotiate an express license from the sound recording owner, and pay a royalty based on the outcome of that negotiation.

The distinction between “interactive” and “non-interactive” digital music platforms is thus very significant. If a service such as Pandora qualifies as “non-interactive,” it can take advantage of the statutory compulsory license. On the other hand, if the service is deemed “interactive,” it will not qualify for the compulsory license, and must negotiate a license in order to broadcast a copyrighted sound recording (as well as a license to the musical work, which will often be owned by a different copyright owner). In the following decision, the court is tasked with deciding whether or not a Pandora-like “webcasting” service called LAUNCHcast is interactive.

Some things to consider when reading Arista Recs.:

1. In drawing the line between “interactive” and “non-interactive” webcasting services, the court relies heavily on Congress’s purpose in creating the distinction between the two, i.e., what Congress was trying to accomplish when it created a statutory compulsory license that is only available for non-interactive services.
2. Note the discussion of the evolving relationship between record labels and music broadcasters, and why it is significant in discerning congressional intent in this case.
3. How, and why, did Congress amend § 114 in 1998?
4. Why does the court find that the “degree of predictability” with respect to which song will play next is critical to determining whether or not the webcast is “interactive”?
5. Why does the court conclude that LAUNCHcast is not an interactive service within the meaning of 17 U.S.C. § 114(j)(7)?

Arista Recs., LLC v. Launch Media, Inc.

578 F.3d 148 (2d Cir. 2009)

WESLEY, Circuit Judge:

We are the first federal appellate court called upon to determine whether a webcasting service that provides users with individualized internet radio stations—the content of which can be affected by users’ ratings of songs, artists, and albums—is an interactive service within the meaning of 17 U.S.C. § 114(j)(7). If it is an interactive service, the webcasting service would be required to pay individual licensing fees to those copyright holders of the sound recordings of songs the webcasting service plays for its users. If it is not an interactive service, the webcasting service must only pay a statutory licensing fee set by the Copyright Royalty Board. A jury determined that the defendant does not provide an interactive service and therefore is not liable for paying the copyright holders, a group of recording companies, a licensing fee for each individual song. The recording companies appeal claiming that as a matter of law the webcasting service is an interactive service. We affirm; the webcasting service is not an interactive service as a matter of law.

Background

On May 24, 2001 Arista Records, LLC, Bad Boy Records, BMG Music, and Zomba Recording LLC (collectively, “BMG”) brought suit against Launch Media, Inc. (“Launch”) alleging that Launch violated provisions of the Digital Millennium Copyright Act of 1998 (the “DMCA”), codified in relevant part in 17 U.S.C. § 114, by willfully infringing sound recording copyrights of BMG from 1999 to 2001. The case was tried before a jury, and after the district court denied BMG’s motion for judgment as a matter of law, the jury returned a verdict for Launch.

Launch operates an internet radio website, or “webcasting” service, called LAUNCHcast, which enables a user to create “stations” that play songs that are within a particular genre or similar to a particular artist or song the user selects. BMG holds the copyrights in the sound recordings of some of the songs LAUNCHcast plays for users.

BMG, as a sound recording copyright holder, has no copyright in the general performance of a sound recording, see 17 U.S.C. §§ 106(4), 114(a), but BMG does have the exclusive right “to perform the copyrighted [sound recording] publicly by means of a digital audio transmission,” 17 U.S.C. § 106(6). Launch does not dispute that LAUNCHcast provides a digital audio transmission within the definition of § 106(6). See 17 U.S.C. §§ 101, 114(j)(5). BMG has a right to demand that those who perform—i.e., play or broadcast—its copyrighted sound recording pay an individual licensing fee to BMG if the performance of the sound recording occurs through an “interactive service.” See 17 U.S.C. § 114(d)(3)(C).

An interactive service is defined as a service “that enables a member of the public to receive a transmission of a program specially created for the recipient, or on request, a transmission of a particular sound recording …, which is selected by or on behalf of the recipient.” Id. § 114(j)(7). If a digital audio transmission is not an interactive service and its “primary purpose … is to provide to the public such audio or other entertainment programming,” id. § 114(j)(6), the transmitter need only pay a compulsory or statutory licensing fee set by the Copyright Royalty Board made up of Copyright Royalty Judges appointed by the Library of Congress.

At trial, BMG claimed that between November 1999 and May 2001 Launch—through LAUNCHcast—provided an interactive service and therefore was required to obtain individual licenses from BMG to play BMG’s sound recordings. The jury returned a verdict in favor of Launch.

Discussion

We agree with BMG that the central issue of this case—interactivity—presents an issue of law. The parties do not materially disagree on how LAUNCHcast works; their point of conflict centers on whether the program is “interactive” as defined by the statute—clearly an issue of law and therefore strictly under the purview of the courts.

An “interactive service” according to the statute “is one that enables a member of the public to receive a transmission of a program specially created for the recipient, or on request, a transmission of a particular sound recording, whether or not as part of a program, which is selected by or on behalf of the recipient.” 17 U.S.C. § 114(j)(7).

BMG sees the issue as a simple one. BMG argues that any service that reflects user input is specially created for and by the user and therefore qualifies as an interactive service. But we should not read the statute so broadly. The meaning of the phrase in question must significantly depend on the context in which Congress chose to employ it.

Congress extended the first copyright protection for sound recordings in 1971 by creating a right to reproduce and distribute tangible copies of sound recordings. Sound Recording Act of 1971 (the “SRA”). Congress drafted the SRA to address its concern about preventing “phonorecord piracy due to advances in duplicating technology.” Notably, unlike the copyright of musical works, the sound recording copyright created by the SRA did not include a right of performance. Therefore, holders of sound recording copyrights—principally recording companies such as BMG—had no right to extract licensing fees from radio stations and other broadcasters of recorded music. The reason for this lack of copyright protection in sound recordings was that the recording industry and radio broadcasters existed in a sort of symbiotic relationship wherein the recording industry recognized that radio airplay was free advertising that lured consumers to retail stores where they would purchase recordings. However, the relationship has been, and continues to be, more nuanced and occasionally antagonistic. In response to continued lobbying by the recording industry, Congress and the Copyright Office (the “Office”) studied the need for stronger copyright protection for sound recordings for two decades after passage of the SRA.

With the inception and public use of the internet in the early 1990s, the recording industry became concerned that existing copyright law was insufficient to protect the industry from music piracy. At the time, the United States Register of Copyrights referred to the internet as “the world’s biggest copying machine.” What made copying music transmitted over the internet more dangerous to recording companies than traditional analog copying with a tape recorder was the fact that there is far less degradation of sound quality in a digital recording than an analog recording. Although data transmission over the internet was slow—in 1994 it took on average twenty minutes to download one song—the recording industry foresaw the internet as a threat to the industry’s business model. If an internet user could listen to music broadcast over, or downloaded from, the internet for free, the recording industry worried that the user would stop purchasing music. Jason Berman, president of the Recording Industry Association of America (the “RIAA”), the lobbying arm of the recording industry, stated in 1994 that without a copyright in a right of performance via internet technology, the industry would be “unable to compete in this emerging digital era.” Berman warned that “digital delivery would siphon off and eventually eliminate the major source of revenue for investing in future recordings” and that “[o]ver time, this [would] lead to a vast reduction in the production of recorded music.” Digital Performance Right in Sound Recording: Hearing on H.R. 1506 Before the H. Comm. on the Judiciary, Subcomm. on Courts & Intellectual Prop., 104th Cong. (1995) (statement of Jason Berman, President, RIAA).

The Commerce Department, which oversees the Copyright Office, recognized that failing to provide more protections to the recording industry would drive the music industry away from using the internet as a medium for legitimate music distribution. As then-Assistant Secretary of Commerce Bruce Lehman said, “If we don’t make it clear you can’t transmit a work without the permission of the owner, copyright owners aren’t going to use the information highway …. There won’t be any cars on the highway if we don’t make certain the cars don’t get hijacked at the entrance ramp.” In a white paper to President Clinton, an information infrastructure task force chaired by Lehman recommended that Congress give sound recording copyright holders a right of performance.

In light of these concerns, and recognizing that digital transmission of sound recordings were likely to become a very important outlet for the performance of recorded music, Congress enacted the Digital Performance Right in Sound Recordings Act of 1995 (the “DPSR”), giving sound recording copyright holders an exclusive but “narrow” right to perform—play or broadcast—sound recordings via a digital audio transmission. The right was limited to exclusive performance of digital audio transmissions through paid subscriptions services and “interactive services.” See 17 U.S.C. § 114(d) (1995). While non-interactive subscription services qualified for statutory licensing, interactive services were required to obtain individual licenses for each sound recording those interactive services played via a digital transmission. Under the DPSR, interactive service was defined as

one that enables a member of the public to receive, on request, a transmission of a particular sound recording chosen by or on behalf of the recipient. The ability of individuals to request that particular sound recordings be performed for reception by the public at large does not make a service interactive. If an entity offers both interactive and non-interactive services (either concurrently or at different times), the non-interactive component shall not be treated as part of an interactive service.

17 U.S.C. § 114(j)(4) (1995).

The House report noted that the DPSR was enacted to address two related concerns. First, without “appropriate copyright protection in the digital environment, the creation of new sound recordings and musical works could be discouraged, ultimately denying the public some of the potential benefits of the new digital transmission technologies.” Second, “certain types of subscription and interaction audio services might adversely affect sales of sound recordings and erode copyright owners’ ability to control and be paid for use of their work.” With regard to the latter concern, the House noted that “interactive services are most likely to have a significant impact on traditional record sales, and therefore pose the greatest threat to the livelihoods of those whose income depends upon revenues derived from traditional record sales.” These interactive services were likely to have an impact on record sales because the more advance information the user has about the digital transmission, the more the transmission facilitated a user’s private copying (in perfect digital copies) of the recorded performance, or, at least, enabled the user to substitute listening to the targeted performance for purchasing a copy of it.

The House also noted the importance of striking a balance between, on one hand, protecting sound recording copyright holders to promote sales, distribution, and development of new music, and, on the other hand, making development of new media and forms of distribution economically feasible. Congress attempted to address this concern by making the right “narrow”—limiting it to performance of digital audio transmissions and exempting nonsubscriber services.

Fairly soon after Congress enacted the DPSR, critics began to call for further legislation, charging that the DPSR was too narrowly drawn and did not sufficiently protect sound recording copyright holders from further internet piracy. For instance, webcasting services, which provide free—i.e., nonsubscription—services that do not provide particular sound recording on request and are therefore not interactive within the meaning of term under the DPSR, at that time fell outside the sound recording copyright holder’s right of control. Recording companies became concerned that these webcasting services were allowing users to copy music transmitted to their computer via webcast for free, or to listen to these webcasting services in lieu of purchasing music. Record companies were concerned that these webcasting services were causing a diminution in record sales, which the companies feared would cut into profits and stunt development of the recording industry. According to Cary Sherman, Senior Executive Vice President and General Counsel of the RIAA, by 1997, the record industry was losing $1 million a day due to music piracy. Copyright Piracy in the Internet: Hearing on H.R. 2265 Before H. Comm. on the Judiciary, Subcomm. on Courts & Intellectual Prop., 105th Cong. (1997) (statement of Cary H. Sherman, Senior Executive Vice President and General Counsel of the RIAA).

In light of these concerns, Congress enacted the current version of § 114 under the DMCA in 1998. The term “interactive service” was expanded to include “those that are specially created for a particular individual.” As enacted, the definition of “interactive service” was now a service “that enables a member of the public to receive a transmission of a program specially created for the recipient, or on request, a transmission of a particular sound recording, whether or not as part of a program, which is selected by or on behalf of the recipient.” 17 U.S.C. § 114(j)(7).

According to the House conference report,

The conferees intend that the phrase “program specially created for the recipient” be interpreted reasonably in light of the remainder of the definition of “interactive service.” For example, a service would be interactive if it allowed a small number of individuals to request that sound recordings be performed in a program specially created for that group and not available to any individuals outside of that group. In contrast, a service would not be interactive if it merely transmitted to a large number of recipients of the service’s transmissions a program consisting of sound recordings requested by a small number of those listeners.

The House report continued that a transmission is considered interactive “if a transmission recipient is permitted to select particular sound recordings in a prerecorded or predetermined program.” “For example, if a transmission recipient has the ability to move forward and backward between songs in a program, the transmission is interactive. It is not necessary that the transmission recipient be able to select the actual songs that comprise the program.”

On April 17, 2000, the Digital Media Association (“DiMA”), the lobbying arm of transmitters of digital media such as Launch, filed a petition with the Copyright Office requesting that the Office amend the definition of “service” “to state that a service is not interactive simply because it offers the consumer some degree of influence over the programming offered by the webcaster.” DiMA asked the Copyright Office to adopt the following as a rule:

A Service making transmissions that otherwise meet the requirements for the section 114(f) statutory license is not rendered “interactive,” and thus ineligible for the statutory license, simply because the consumer may express preferences to such Service as to the musical genres, artists and sound recordings that may be incorporated into the Service’s music programming to the public.

The DiMA did not ask the Copyright Office to determine whether any particular services was non-interactive.

On November 21, 2000, the Copyright Office issued a letter stating that because “of the rapidly changing business models emerging in today’s digital marketplace, no rule can accurately draw the line demarcating the limits between an interactive service and a noninteractive service. Nor can one readily classify an entity which makes transmissions as exclusively interactive or noninteractive.” The Copyright Office stated that determinations of interactivity “must be made on a case-by-case basis after the development of a full evidentiary record.”

Despite refusing to make a broad rule governing interactivity, the Copyright Office did opine that in enacting the § 114(j)(7), “Congress sought to identify a service as interactive according to the amount of influence a member of the public would have on the selection and performance of a particular sound recording.” However, the Office stated that “the fact that some degree of consumer influence on a service’s programming is permissible does not mean that a regulation to clarify that fact is necessary or even desirable.” The Copyright Office also noted that “because the law and the accompanying legislative history make it clear that consumers can have some influence on the offerings made by a service without making the service interactive, there is no need to amend the regulations to make this point.”

In sum, from the SRA to the DMCA, Congress enacted copyright legislation directed at preventing the diminution in record sales through outright piracy of music or new digital media that offered listeners the ability to select music in such a way that they would forego purchasing records.

[Editor’s note: At this point in the decision, the court provides a detailed explanation of the complex processes by which LAUNCHcast decides which songs to play for a subscriber, based largely on choices made by the subscriber. In one aspect of the service, for example, a complicated algorithm is used to compile a “playlist” of fifty songs, based on the subscriber’s expressed preferences with respect to music genres, artists, and specific songs. LAUNCHcast orders the playlist. The ordering of the songs is random, but LAUNCHcast is designed so it will not play more than two songs in the same album or three songs by the same artist consecutively. While a song is playing, the user has the ability to pause the song, skip the song, or delete the song from the station by rating the song zero. Notably, the user may not go back to restart the song that is playing, or repeat any of the previously played songs in the playlist.]

It is hard to think of a more complicated way to “select songs,” but this is the nature of webcast music broadcasting in the digital age. Given LAUNCHcast’s format, we turn to the question of whether LAUNCHcast is an interactive service as a matter of law. As we have already noted, a webcasting service such as LAUNCHcast is interactive under the statute if a user can either (1) request—and have played—a particular sound recording, or (2) receive a transmission of a program “specially created” for the user. 42 U.S.C. § 114(j)(7). A LAUNCHCAST user cannot request and expect to hear a particular song on demand; therefore, LAUNCHcast does not meet the first definition of interactive. But LAUNCHcast may still be liable if it enables the user to receive a transmission of a program “specially created” for the user. It comes as no surprise to us that the district court, the parties, and others have struggled with what Congress meant by this term.

The language and development of the DPSR and DMCA make clear that Congress enacted both statutes to create a narrow copyright in the performance of digital audio transmissions to protect sound recording copyright holders—principally recording companies—from the diminution in record sales. Congress created this narrow right to ensure that “the creation of new sound recordings and musical works [would not] be discouraged,” and to prevent the “threat to the livelihoods of those whose income depends upon revenues derived from traditional record sales.”

Contrary to BMG’s contentions, Congress was clear that the statute sought to prevent further decreases in revenues for sound recording copyright holders due to significant reductions in record sales, perceived in turn to be a result of the proliferation of interactive listening services. If the user has sufficient control over the interactive service such that she can predict the songs she will hear, much as she would if she owned the music herself and could play each song at will, she would have no need to purchase the music she wishes to hear. Therefore, part and parcel of the concern about a diminution in record sales is the concern that an interactive service provides a degree of predictability—based on choices made by the user—that approximates the predictability the music listener seeks when purchasing music.

The current version § 114(j)(7) was enacted because Congress determined that the DPSR was not up to the task of protecting sound recording copyright holders from diminution in record sales, presumably because programs not covered by the DPSR’s definition of interactive service provided a degree of control—predictability—to internet music listeners that dampened the music listeners’ need to purchase music recordings. By giving sound recording copyright holders the right to require individual licenses for transmissions of programs specially created for users, Congress hoped to plug the loophole the DPSR had left open for webcasting services.

To determine what additional service or program Congress intended to include as an interactive service under the DMCA, we look to what language was added to the definition of interactive service. One term notably absent from the DPSR definition, which was later included under the DMCA, is “transmission of a program.” 17 U.S.C. § 114(j)(7). While not semantically identical, Title 17 defines “transmission program” as “a body of material that, as an aggregate, has been produced for the sole purpose of transmission to the public in sequence and as a unit.” 17 U.S.C. § 101. This definition views a transmission program as a body of material presented as a single unit, as opposed to a selection of individual works. Therefore, in expanding the definition of interactive service to include the transmission of programs specially created for the user, Congress intended to include bodies of pre-packaged material, such as groups of songs or playlists specially created for the user. Given this definition, we turn to the ultimate issue of whether the LAUNCHcast playlists, uniquely generated for the user each time the user selects a station, are specially created and therefore interactive.

Launch does not deny that each playlist generated when a LAUNCHcast user selects a radio station is unique to that user at that particular time. However, this does not necessarily make the LAUNCHcast playlist specially created for the user. Based on a review of how LAUNCHcast functions, it is clear that LAUNCHcast does not provide a specially created program within the meaning of § 114(j)(7) because the webcasting service does not provide sufficient control to users such that playlists are so predictable that users will choose to listen to the webcast in lieu of purchasing music, thereby—in the aggregate—diminishing record sales.

First, the rules governing what songs are pooled ensure that the user has almost no ability to choose, let alone predict, which specific songs will be pooled in anticipation for selection to the playlist. Second, the selection of songs to be included in the playlist is governed by rules preventing the user’s explicitly rated songs from being anywhere near a majority of the songs on the playlist.

Even the ways in which songs are rated include variables beyond the user’s control. There are restrictions placed on the number of times songs by a particular artist or from a particular album can be played, and there are restrictions on consecutive play of the same artist or album. Finally, because each playlist is unique to each user each time the user logs in, a user cannot listen to the playlist of another user and anticipate the songs to be played from that playlist, even if the user has selected the same preferences and rated all songs, artists, and albums identically as the other user. Relatedly, a user who hears a song she likes and wants to hear again cannot do so by logging off and back on to reset her station to disable the restriction against playing the same song twice on a playlist. Even if a user logs off LAUNCHcast then logs back on and selects the same station, the user will still hear the remainder of the playlist to which she had previously been listening with its restrictions still in operation, provided there were at least eight songs left to be played on the playlist—or, in other words, until the user listens to at least forty-two of the playlist’s songs.

Finally, after navigating these criteria to generate a playlist, LAUNCHcast randomly orders the playlist. This randomization is limited by restrictions on the consecutive play of artists or albums, which further restricts the user’s ability to choose the artists or albums they wish to hear. LAUNCHcast also does not enable the user to view the unplayed songs in the playlist, ensuring that a user cannot sift through a playlist to choose the songs the user wishes to hear.

It appears the only thing a user can predict with certainty—the only thing the user can control—is that by rating a song at zero the user will not hear that song on that station again. But the ability not to listen to a particular song is certainly not a violation of a copyright holder’s right to be compensated when the sound recording is played.

In short, to the degree that LAUNCHcast’s playlists are uniquely created for each user, that feature does not ensure predictability. Indeed, the unique nature of the playlist helps Launch ensure that it does not provide a service so specially created for the user that the user ceases to purchase music. LAUNCHcast listeners do not even enjoy the limited predictability that once graced the AM airwaves on weekends in America when “special requests” represented love-struck adolescents’ attempts to communicate their feelings to “that special friend.” Therefore, we cannot say LAUNCHcast falls within the scope of the DMCA’s definition of an interactive service created for individual users.

When Congress created the sound recording copyright, it explicitly characterized it as “narrow.” There is no general right of performance in the sound recording copyright. There is only a limited right to performance of digital audio transmission with several exceptions to the copyright, including the one at issue in this case. We find that LAUNCHcast is not an interactive service within the meaning of 17 U.S.C. § 114(j)(7). Because we so conclude, we need not reach the other issues raised by BMG on appeal.

__________

Check Your Understanding – Arista Recs.

Question 1. Which of the following must pay a statutory licensing fee to sound recording copyright holders?

Question 2. In Arista Recs., why did the court conclude that LAUNCHcast is a noninteractive webcasting service?

Question 3. True or false: When copyright protection was first extended to sound recordings in 1971, the copyright did not include a public performance right because it was thought that the recording industry and radio broadcasters existed in a sort of symbiotic relationship, wherein the recording industry recognized that radio airplay was free advertising that lured consumers to retail stores where they would purchase recordings.

In 2018, Congress enacted the Classics Protection and Access Act as Title II of the Music Modernization Act (MMA),¹⁴ which brought pre-1972 sound recordings partially into the federal copyright system. The legislation created a new chapter 14 of the copyright law, title 17 United States Code, which, among other things, extends remedies for copyright infringement to owners of sound recordings fixed before February 15, 1972 (“Pre-1972 Sound Recordings”) when the recordings are used without authorization. The new chapter includes several limitations and exceptions to the eligibility for these remedies, as well as related administrative procedures.

F. Moral Rights and VARA

Outside the United States, many countries, particularly in continental Europe, have long recognized an author’s “moral rights” in that authors work, which exist even after the author has sold the work. This applies both to the copyright in the work, as well as an actual copy of the work, such as a painting or sculpture. Although the specific scope of moral rights will vary from country to country, they generally include a “right of integrity,” i.e., the right to insist that the work not be mutilated or distorted, and a “right of attribution,” i.e., the right to be acknowledged as the author of the work and to prevent others from naming anyone else as the creator. Historically, U.S. federal copyright law has not provided moral rights to authors, focusing more on the economic interests of copyright owners.

The Berne Convention requires all signatory nations to protect the rights of integrity and attribution in their domestic laws. The United States joined the Berne Convention in the 1980s, and Congress enacted the Berne Convention Implementation Act of 1988 in order to bring U.S. copyright law into compliance with Berne. The Implementation Act did not explicitly introduce any moral rights provisions into the Copyright Act, which some might argue renders the U.S. out of compliance with the Convention. However, the U.S. has taken the position that, although the Copyright Act does not explicitly provide for moral rights, in fact a variety of state and federal laws outside of the Copyright Act do, in their totality, provide authors with the functional equivalent of moral rights. The leading de facto moral rights case is Gilliam v. American Broadcasting Cos. Inc., 538 F.2d 14 (2^nd Cir. 1976), in which the creators of Monty Python’s Flying Circus successfully asserted § 43(a) of the Lanham Act to hold ABC liable for abridging episodes of the television show in a manner that distorted the integrity of their work, resulting in harm to their reputation.

In 1990, Congress enacted the Visual Artists Rights Act of 1990 (“VARA”), which provides some protection of moral rights for a limited category of copyright works, particularly “works of visual art.”¹⁵ Section 101 of the Copyright Act defines a “work of visual art” as:

(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author…; or

(2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.

With respect to the attribution right, VARA allows authors to: (1) claim authorship of works they created; (2) prevent the use of their names on works that they did not create; and (3) prevent use of their names when works they created have been distorted in a way that would harm their reputation.¹⁶ With respect to the integrity right, VARA allows authors to prevent the intentional mutilation or distortion of their works in a way that would harm their reputation.¹⁷ Furthermore, VARA allows the authors of “works of recognized stature” to prevent the destruction of such a work.¹⁸

VARA rights are only available for the author, and they end when the author dies. An author can waive their VARA rights in writing, but the rights cannot be transferred to another. The assignment of copyright in a work neither conveys VARA rights nor constitutes a waiver of those rights.

Some things to consider when reading Castillo:

1. In this decision, the court must first decide whether the copyrighted works at issue (aerosol paintings on the defendant’s building) qualify under VARA as works of “recognized stature,” and after concluding that they do, the court has to determine whether the defendant violated the artists’ VARA rights (he did).
2. This case introduces the topic of “statutory damages,” which is a form of remedy unique to copyright law, and which will be addressed in more detail later in this casebook.

Castillo v. G&M Realty L.P.

950 F.3d 155 (2d Cir. 2020)

BARRINGTON D. PARKER, Circuit Judge:

Defendants-Appellants G&M Realty L.P. and Gerald Wolkoff (collectively “Wolkoff”) appeal from a judgment of the United States District Court for the Eastern District of New York. The court concluded that Wolkoff violated the Visual Artists Rights Act of 1990, 17 U.S.C. § 106A (“VARA”), by destroying artwork of Plaintiffs-Appellees, artists who created and displayed their work at the 5Pointz site in Long Island City, New York. We hold that the district court correctly concluded that the artwork created by Appellees was protected by VARA and that Wolkoff’s violation of the statute was willful. Furthermore, the damages awarded involved no abuse of discretion. Accordingly, we affirm the judgment below.

The facts as found by the district court established that in 2002, Wolkoff undertook to install artwork in a series of dilapidated warehouse buildings that he owned in Long Island City, New York. Wolkoff enlisted Appellee Jonathan Cohen, a distinguished aerosol artist, to turn the warehouses into an exhibition space for artists. Cohen and other artists rented studio spaces in the warehouses and filled the walls with aerosol art, with Cohen serving as curator. Under Cohen’s leadership, the site, known as 5Pointz, evolved into a major global center for aerosol art. It attracted thousands of daily visitors, numerous celebrities, and extensive media coverage.

“Creative destruction” was an important feature of the 5Pointz site. Some art at the site achieved permanence, but other art had a short lifespan and was repeatedly painted over. An elaborate system of norms—including Cohen’s permission and often consent of the artist whose work was overpainted—governed the painting process. Cohen divided the walls into “short-term rotating walls,” where works would generally last for days or weeks, and “longstanding walls,” which were more permanent and reserved for the best works at the site. During its lifespan, 5Pointz was home to a total of approximately 10,650 works of art.

In May 2013, Cohen learned that Wolkoff had sought municipal approvals looking to demolish 5Pointz and to build luxury apartments on the site. Seeking to prevent that destruction, Cohen applied to the New York City Landmark Preservation Commission to have 5Pointz designated a site of cultural significance. The application was unsuccessful, as were Cohen’s efforts to raise money to purchase the site.

At that point, Cohen, joined by numerous 5Pointz artists, sued under VARA to prevent destruction of the site. VARA, added to the copyright laws in 1990, grants visual artists certain “moral rights” in their work. See 17 U.S.C. § 106A(a). Specifically, the statute prevents modifications of artwork that are harmful to artists’ reputations. Id. § 106A(a)(3)(A). The statute also affords artists the right to prevent destruction of their work if that work has achieved “recognized stature” and carries over this protection even after the work is sold. Id. § 106A(a)(3)(B). Under §§ 504(b) and (c) an artist who establishes a violation of VARA may obtain actual damages and profits or statutory damages, which are enhanced if the artist proves that a violation was willful.

Early in the litigation, Plaintiffs applied for a temporary restraining order to prevent the demolition of the site, which the district court granted. As the TRO expired, Plaintiffs applied for a preliminary injunction. On November 12, 2013, the court denied the application in a minute order but told the parties that a written opinion would soon follow.

That night, Wolkoff began to destroy the artwork. He banned the artists from the site and refused them permission to recover any work that could be removed. Several nights later (and before the district court’s written opinion could issue), Wolkoff deployed a group of workmen who, at his instruction, whitewashed the art.

On November 20, 2013, the district court issued its opinion denying the preliminary injunction. Judge Block concluded that, although some of the 5Pointz paintings may have achieved recognized stature, resolution of that question was best reserved for trial. The court also decided that, given the transitory nature of much of the work, preliminary injunctive relief was inappropriate and that the monetary damages available under VARA could remediate any injury proved at trial.

Following the destruction of the art, nine additional artists sued Wolkoff. The two lawsuits were consolidated for trial, which would primarily address whether the artwork had achieved recognized stature and, if it had, the value of the art Wolkoff destroyed. The three-week trial included testimony from 29 witnesses and saw the admission of voluminous documentary evidence.

Although Plaintiffs had initially demanded a trial by jury, near the conclusion of the trial, the parties agreed to waive a jury, and the district court converted it to an advisory jury. On November 15, 2017, the advisory jury returned its verdict. It made individualized findings as to each artist and work and found violations of VARA as to 36 of the 49 works that were whitewashed. More precisely, the advisory jury found that 28 works had achieved recognized stature and had been unlawfully destroyed and that 8 other works had been mutilated or distorted to the detriment of the artists’ reputations. It recommended an award of $545,750 in actual damages and $651,750 in statutory damages.

On February 12, 2018, the district court issued its findings of fact and conclusions of law. Drawing on a vast record, the court found that 45 of the works had achieved recognized stature, that Wolkoff had violated VARA by destroying them, and that the violation was willful. More specifically, the court observed that the works “reflect[ed] striking technical and artistic mastery and vision worthy of display in prominent museums if not on the walls of 5Pointz.” The findings emphasized Cohen’s prominence in the world of aerosol art, the significance of his process of selecting the artists who could exhibit at 5Pointz, and the fact that, while much of the art was temporary, other works were on display for several years. Judge Block credited the artists’ evidence of outside recognition of the 5Pointz works and expert testimony as to the works’ stature. The court declined to impose liability with respect to the four remaining works because they had not achieved long-term preservation, were insufficiently discussed outside of 5Pointz, and were not modified to the detriment of the artists’ reputations.

Where a violation of VARA is established, the statute permits the injured party to recover either actual damages and profits or statutory damages. 17 U.S.C. § 504. The statute fixes statutory damages between $750 and $30,000 per work but authorizes damages of up to $150,000 per work if a litigant proves that a violation was “willful.” Id. § 504(c). There was extensive expert testimony as to actual damages. Elizabeth Littlejohn, the artists’ expert, testified that each of the works in question had a substantial monetary value, employing a complex formula that attempted to scale that value to account for the relative merit and recognition of each work. On the other hand, Christopher Gaillard, Wolkoff’s expert, testified that, given the difficulties of removing and selling the 5Pointz paintings and the 5Pointz artists’ limited sales history, the destroyed works did not have a reliable market value. Ultimately, the district court concluded that it could not reliably fix the market value of the destroyed paintings and, for that reason, declined to award actual damages. The court said that Littlejohn’s formula was flawed and that Gaillard credibly testified to challenges that would impede calculation of a market value.

Nonetheless, the court did award statutory damages. It determined that statutory damages would serve to sanction Wolkoff’s conduct and to vindicate the policies behind VARA. In addition, and in accord with the advisory jury’s verdict, the court found that Wolkoff had acted willfully. This finding was based on Wolkoff’s awareness of the ongoing VARA litigation and his refusal to afford the artists the 90-day opportunity provided by the statute to salvage their artwork, some of which was removable. See 17 U.S.C. § 113(d)(2)(B). Judge Block was unpersuaded by Wolkoff’s assertion that he whitewashed the artwork to prevent the artists from engaging in disruption and disorderly behavior at the site. Instead, he found that Wolkoff acted out of “pure pique and revenge for the nerve of the plaintiffs to sue to attempt to prevent the destruction of their art.” Judge Block awarded the maximum amount of statutory damages: $150,000 for each of the 45 works, for a total of $6.75 million.

Appellants then moved, pursuant to Fed. R. Civ. P. 52(b) and 59(a), to set aside the court’s findings of fact and conclusions of law and to retry the case. The district court denied this motion and, in a lengthy appendix, marshalled the evidence in the record supporting the court’s findings as to the recognized stature of each work in question.

The court also offered additional support for its finding of willfulness. The court concluded that Wolkoff’s affidavit testimony submitted during the preliminary injunction proceedings contained material untruths. Wolkoff’s affidavit stated that the demolition of 5Pointz had to be completed by the beginning of 2014, with construction to commence in April 2014. At trial, however, Wolkoff testified that he did not apply for a demolition permit until March 2014. The district court stated that it would have granted the preliminary injunction had Wolkoff testified earlier that demolition could be delayed until March. This appeal followed.

DISCUSSION

I

VARA creates a scheme of moral rights for artists. “The right of attribution generally consists of the right of an artist to be recognized by name as the author of his work or to publish anonymously or pseudonymously ….” Carter v. Helmsley-Spear, Inc., 71 F.3d 77, 81 (2d Cir. 1995). It further includes the right to prevent the artist’s work from being attributed to another and to prevent the use of the artist’s name on works created by others. The right of integrity allows the [artist] to prevent any deforming or mutilating changes to his work, even after title in the work has been transferred.

Most importantly for this appeal, VARA gives “the author of a work of visual art” the right “to prevent any destruction of a work of recognized stature” and provides that “any intentional or grossly negligent destruction of that work is a violation of that right.” 17 U.S.C. § 106A(a)(3)(B). VARA further permits the artist “to prevent any intentional distortion, mutilation, or other modification of [his or her work] which would be prejudicial to his or her honor or reputation,” and provides that “any intentional distortion, mutilation, or modification of that work is a violation of that right.” 17 U.S.C. § 106A(a)(3)(A). The latter provision applies regardless of a work’s stature. These rights may not be transferred, but they “may be waived if the author expressly agrees to such waiver in a written instrument signed by the author.” Id. § 106A(e)(1).

Additionally, the statute contains specific provisions governing artwork incorporated into a building. If the artwork is incorporated “in such a way that removing the work from the building will cause the destruction, distortion, mutilation, or other modification of the work,” then the artist’s rights may be waived if and only if he “consented to the installation of the work in the building … in a written instrument.” Id. § 113(d)(1). This instrument must be “signed by the owner of the building and the author” and must “specif[y] that the installation of the work may subject the work to destruction, distortion, mutilation, or other modification, by reason of its removal.” However, “[i]f the owner of a building wishes to remove a work of visual art which is a part of such building and which can be removed from the building without the destruction, distortion, mutilation, or other modification of the work,” then the artist’s rights prevail unless one of two things has occurred. Id. § 113(d)(2). First, the building’s owner “has made a diligent, good faith attempt without success to notify the author of the owner’s intended action affecting the work of visual art.” Or second, the owner has “provide[d] such notice in writing and the person so notified failed, within 90 days after receiving such notice, either to remove the work or to pay for its removal.”

Damages for violations of VARA’s rights of attribution and integrity are governed by general copyright law and include both actual and statutory damages. Statutory damages may range from $750 to $30,000 per work “as the court considers just.” Id. § 504(c)(1). However, if “the [artist] sustains the burden of proving, and the court finds, that [a violation of VARA] was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000 [per work].” Id. § 504(c)(2).

II

The crux of the parties’ dispute on this appeal is whether the works at 5Pointz were works of “recognized stature,” thereby protected from destruction under § 106A(a)(3)(B). We conclude that a work is of recognized stature when it is one of high quality, status, or caliber that has been acknowledged as such by a relevant community. See Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303, 324-25 (S.D.N.Y. 1994); see also, e.g., Martin v. City of Indianapolis, 192 F.3d 608, 612 (7th Cir. 1999). A work’s high quality, status, or caliber is its stature, and the acknowledgement of that stature speaks to the work’s recognition.

The most important component of stature will generally be artistic quality. The relevant community will typically be the artistic community, comprising art historians, art critics, museum curators, gallerists, prominent artists, and other experts. Since recognized stature is necessarily a fluid concept, we can conceive of circumstances under which, for example, a “poor” work by an otherwise highly regarded artist nonetheless merits protection from destruction under VARA. This approach helps to ensure that VARA protects the public interest in preserving the nation’s culture. This approach also ensures that the personal judgment of the court is not the determinative factor in the court’s analysis.

After all, we are mindful of Justice Holmes’s cautionary observation that “[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [visual art],” Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903). For that reason, aside from the rare case where an artist or work is of such prominence that the issue of recognized stature need not be tried, expert testimony or substantial evidence of non-expert recognition will generally be required to establish recognized stature.

III

Accordingly, to establish a violation of VARA in this case, the artists were required to demonstrate that their work had achieved recognized stature. Judge Block found that they did so. He concluded that “the plaintiffs adduced such a plethora of exhibits and credible testimony, including the testimony of a highly regarded expert, that even under the most restrictive of evidentiary standards almost all of the plaintiffs’ works easily qualify as works of recognized stature.” These findings of fact are reviewable only for clear error.  A finding is “clearly erroneous” when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.” Appellants do not hurdle this high bar.

In attempting to do so, Wolkoff takes issue with a number of the decisions Judge Block made in the process of reaching his conclusions. The proceedings below were contested by able counsel and involved voluminous exhibits and extensive lay and expert testimony. On this appeal, Wolkoff would have us revisit and reconsider a number of those decisions that were debatable. But on this appeal, Wolkoff must demonstrate that Judge Block abused his discretion or that findings of fact he made were clearly erroneous, not simply debatable.

Initially, Wolkoff contends that the great majority of the works in question were temporary ones which, for that reason, could not meet the recognized stature requirement. We disagree. We see nothing in VARA that excludes temporary artwork from attaining recognized stature. Unhelpful to this contention is the fact that Wolkoff’s own expert acknowledged that temporary artwork can achieve recognized stature.

The statute does not adopt categories of “permanent” and “temporary” artwork, much less include a definition of these terms. VARA is distinctive in that a work of visual art is defined by the Act in terms both positive (what it is) and negative (what it is not). In narrowing the scope of the statute, Congress adopted a highly specific definition of visual art. In light of this specificity, we see no justification for adopting an additional requirement not included by Congress, even if that requirement is styled as a component of recognized stature. To do so would be to upset the balance achieved by the legislature.

Additionally, at least as recently as 2005, New York City saw a clear instance where temporary artwork achieved recognized stature. That winter, artists Christo Vladimirov Javacheff and Jeanne-Claude Denat, known collectively as “Christo,” installed 7,503 orange draped gates in Central Park. This work, known as “The Gates,” lasted only two weeks but was the subject of significant critical acclaim and attention, not just from the art world but also from the general public. As Wolkoff concedes, “The Gates” achieved recognized stature and would have been protected under VARA.

In recent years, “street art,” much of which is “temporary,” has emerged as a major category of contemporary art. As one scholar has noted, “street art” has “blossomed into far more than spray-painted tags and quickly vanishing pieces … painted by rebellious urbanites. In some quarters, it has become high art.” For example, noted street artist Banksy has appeared alongside President Barack Obama and Apple founder Steve Jobs on Time magazine’s list of the world’s 100 most influential people. Though often painted on building walls where it may be subject to overpainting, Banksy’s work is nonetheless acknowledged, both by the art community and the general public, as of significant artistic merit and cultural importance. Famously, Banksy’s Girl with a Balloon self-destructed after selling for $1.4 million at Sotheby’s, but, as with Banksy’s street art, the temporary quality of this work has only added to its recognition.¹⁹

A Banksy painting at 5Pointz would have possessed recognized stature, even if it were temporary. Even if “The Gates” had been replaced with another art exhibit, that work would have maintained its recognized stature. Although a work’s short lifespan means that there will be fewer opportunities for the work to be viewed and evaluated, the temporary nature of the art is not a bar to recognized stature.

The district court correctly observed that when Congress wanted to impose durational limits on work subject to VARA, it knew how to do so. For example, the statute provides that “[t]he modification of a work of visual art which is a result of the passage of time or the inherent nature of the materials is not a distortion, mutilation, or other modification described in subsection (a)(3)(A).” 17 U.S.C. § 106A(c)(1). For that reason, the gradual erosion of outdoor artwork exposed to the elements or the melting of an ice sculpture does not threaten liability. Congress also imposed a durational limit insofar as the statute protects only works that are “fixed”—“sufficiently permanent … to be perceived … for a period of more than transitory duration.” Id. §§ 101, 102(a). We have held that a work that exists for only 1.2 seconds is of merely transitory duration but have noted with approval cases holding that a work “embodied … for at least several minutes” is of more than transitory duration. Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 127-28 (2d Cir. 2008). It is undisputed that the 5Pointz works survived far longer than this and therefore satisfied the statute’s minimal durational requirement.

As a variation on the theme that temporary artwork does not merit VARA protection, Wolkoff contends that because the artists were aware that the 5Pointz buildings might eventually be torn down, they should have expected their work to be destroyed. The district court correctly observed, however, that VARA accounts for this possibility. Under § 113(d), if the art at 5Pointz was incorporated into the site such that it could not be removed without being destroyed, then Wolkoff was required to obtain “a written instrument … that [was] signed by the owner of the building and the [artist] and that specifie[d] that installation of the work may subject the work to destruction, distortion, mutilation, or other modification, by reason of its removal.” 17 U.S.C. § 113(d)(1)(B). It is undisputed that no such instrument was executed. If, on the other hand, the 5Pointz art could have been safely removed, then Wolkoff was required to provide written notice of the planned demolition and to allow the artists 90 days to remove the work or to pay for its removal. See id. § 113(d)(2)(B). Again, it is undisputed that Wolkoff did none of this.

IV

Wolkoff contends that the district court erroneously focused on the stature of the 5Pointz site rather than the individual 5Pointz works. Yet again we see no error. The district court did not focus exclusively on the stature of the site. The court considered the individual works at the site and determined that some were not of recognized stature. Setting that aside, we easily conclude that the site of a work is relevant to its recognition and stature and may, in certain cases, render the recognition and stature of a work beyond question. Appearance at a major site—e.g., the Louvre or the Prado—ensures that a work will be recognized, that is, seen and appreciated by the public and the art community. The appearance of a work of art at a curated site such as a museum or 5Pointz means that the work has been deemed meritorious by the curator and therefore is evidence of stature. When the curator is distinguished, his selection of the work is especially probative. Consequently, we see no error when the district court considered the 5Pointz site itself as some evidence of the works’ recognized stature.

Because the district court applied the correct legal standard and did not commit clear error, its determination as to liability is affirmed.

V

Appellants next challenge the district court’s award of damages. The court did not award actual damages because it could not quantify the market value of the 5Pointz art. However, the court found that Appellants’ violation of VARA was willful, and the advisory jury arrived at the same conclusion. See 17 U.S.C. § 504(c)(2). A violation is willful when a defendant had knowledge that its conduct was unlawful or recklessly disregarded that possibility.

We review the district court’s finding of willfulness for clear error, and we see none. As Judge Block found, Wolkoff admitted his awareness, prior to destroying 5Pointz, that the artists were pressing VARA claims. Additionally, VARA contains provisions limiting artists’ rights vis-à-vis building owners when owners give them 90 days’ notice and the opportunity to remove their artwork, 17 U.S.C. § 113(d)(2), but Wolkoff testified that, although he was advised by counsel both before and after the destruction, he chose “to hire people to whitewash[ ] it in one shot instead of waiting for three months.” The district court found that this testimony evinced a deliberate choice to violate VARA rather than to follow the statutory notice procedures. Wolkoff did not help his cause when he later reminded the district court that he “would make the same decision today.”

Most troubling to the district court and to us is Wolkoff’s decision to whitewash the artwork at all. Nothing in the record indicates that it was necessary to whitewash the artwork before beginning construction of the apartments. The district court found that Wolkoff could have allowed the artwork to remain visible until demolition began, giving the artists time to photograph or to recover their work. Instead, he destroyed the work immediately after the district court denied the preliminary injunction and before the district court could finalize its promised written opinion.

Wolkoff testified that he whitewashed the work to prevent the artists from illegally salvaging their work. However, he offered no basis for this belief and, to the contrary, testified that the artists had always behaved lawfully. The district court was entitled to conclude, based on this record, that Wolkoff acted willfully and was liable for enhanced statutory damages.

VI

Finally, we address Wolkoff’s challenge to the amount of the statutory damages awarded—$6,750,000—the maximum amount allowed. District courts enjoy wide discretion in setting statutory damages. We review the award of those damages for abuse of discretion. To find an abuse of discretion, we must be convinced that the district court based its decision on an error of law, applied the incorrect legal standard, made a clearly erroneous factual finding, or reached a conclusion that cannot be located within the range of permissible decisions. We see no abuse here.

The district court carefully considered the six factors relevant to a determination of statutory damages and concluded that “Wolkoff rings the bell on each relevant factor.” Those six, drawn from copyright law, are “(1) the infringer’s state of mind; (2) the expenses saved, and profits earned, by the infringer; (3) the revenue lost by the copyright holder; (4) the deterrent effect on the infringer and third parties; (5) the infringer’s cooperation in providing evidence concerning the value of the infringing material; and (6) the conduct and attitude of the parties.”

First, Wolkoff’s state of mind is documented in the district court’s extensive finding on willfulness, which we see no reason to disturb. In other respects, this factor cuts in the artists’ favor. As the district court properly found, Wolkoff, a sophisticated real estate developer, was “willing to run the risk of being held liable for substantial statutory damages rather than to jeopardize his multimillion dollar luxury condo project.” Moreover, Wolkoff whitewashed the artworks without any genuine business need to do so. It was simply, as the district court found, an “act of pure pique and revenge” toward the artists who had sued him. As the district court also found, Wolkoff set out in the dark of night, using the cheapest paint available, standing behind his workers and urging them to “keep painting” and “paint everything.” The whitewashing did not end the conflict in a single evening. The effects lingered for almost a year. The district court noted that the sloppy, half-hearted nature of the whitewashing left the works easily visible under layers of cheap white paint, reminding the artists on a daily basis of what had happened to them. Moreover, the mutilated artworks were visible to millions of people passing the site on the subway.

The lost revenue prong is not as straightforward but nonetheless also tips toward the artists. The district court declined to award actual damages, which Wolkoff takes to mean that the artists suffered no loss in revenue. However, as the district court said, this decision was based on the difficulty of quantifying Appellees’ loss, not on the absence of any loss. Unlike actual damages, statutory damages do not require the precise monetary quantification of injury. Consequently, the district court was within its discretion in determining that Appellees’ loss was significant, for purposes of statutory damages, but not compensable through actual damages. As the district court expressly recognized, “[t]he value of 5Pointz to the artists’ careers was significant, and its loss, though difficult to quantify, precluded future opportunities and acclaim.”

The deterrent effect on the infringer and third parties also supports the amount of statutory damages imposed by the court. Wolkoff admitted that he had no remorse for his actions. To the contrary he confessed that he “would make the same decision today.” In these circumstances, a maximum statutory award could serve to deter Wolkoff from future violations of VARA. It could further encourage other building owners to negotiate in good faith with artists whose works are incorporated into structures and to abide by the 90-day notice provision set forth in VARA when incorporated art can be removed without destruction or other modification.

The final factor—the conduct and attitude of the parties—also cuts in favor of the maximum statutory award. During the preliminary injunction phase, Wolkoff testified that it was critical that demolition of the site occur within a few months at most because otherwise he stood to lose millions of dollars in credits and possibly the entire project. Wolkoff later changed his testimony and stated that at the time of the preliminary injunction hearing, there was at most a “possibility” that a delay would have caused him financial loss. Subsequently, the evidence at trial established that Wolkoff had not even applied for a demolition permit until four months after the whitewashing, and he admitted that he suffered no loss for the delay. The district court described these statements as “conscious material misrepresentation[s]” and noted that had they not been made, it would have granted the preliminary injunction.

In contrast, throughout the proceedings below, the artists complied with what the law required. Cohen sought landmark designation and, when that option became unavailable, sought to purchase the site. Judge Block noted that the artists “conducted themselves with dignity, maturity, respect, and at all times within the law.” In sum, we conclude that the district court appropriately analyzed each relevant factor and see no abuse of discretion. We have considered Wolkoff’s other contentions and conclude that they lack merit.

__________

Check Your Understanding – Castillo

Question 1. True or false: The owner of any copyright in a “work of recognized stature” created after the implementation date of the Visual Artists Rights Act of 1990 (“VARA”) enjoys the rights of attribution and integrity with respect to that work.

Question 2. What is the significance of the designation “work of recognized stature” under VARA?

FOOTNOTES: