COPYRIGHT LAW FALL 2006 PROFESSOR FISCHER THE CATHOLIC UNIVERSITY OF AMERICA OCTOBER 10, 2006

WRAP-UP Government works S. 105 State government legislation and judicial opinions Banks Other state or local government works such as maps

Privately Drafted Legislative Codes Can legislative codes that are privately drafted but later adopted by states as law be the subject of copyright? See Veeck v. SBCCI, Inc., (5 th Cir. en banc 2002)

OTHER PUBLIC POLICY ISSUES To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. Does “to promote the Progress of Science and useful Arts” preclude copyrightability for obscene works?

OTHER PUBLIC POLICY ISSUES Does “to promote the Progress of Science and useful Arts” preclude copyrightability for obscene works? No - see Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852 (5 th Cir. 1979) (no content based restriction in IP Clause)

COMPARE: TRADEMARKS Lanham Act s. 2(a) (15 U.S.C. s. 1052(a)): No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute...

Compare: Patents Doctrine of Moral Utility Juicy Whip v. Orange Bang, 185 F.3d 1364 (Fed.Cir.1999)

Compare: Patents Doctrine of Moral Utility – probably dead Juicy Whip v. Orange Bang, 185 F.3d 1364 (Fed.Cir.1999) (invention with deceptive purpose could still satisfy utility requiement)

AUTHORSHIP 3 possible philosophical concepts of authorship: A. Conception of the work B. Execution of the Work C. Financing the Work

Lindsay v. R.M.S. Titanic et al. Which conception of authorship does this court choose?

WORKS MADE FOR HIRE WHAT’S A WORK MADE FOR HIRE?

DEFINITION OF WORKS MADE FOR HIRE - 2 TYPES A “work made for hire” is defined in section 101 works prepared by employees AND within the scope of employment (and also 201(b) requirement that work be prepared FOR employer) specially ordered or commissioned works - must be within certain categories and there must be a written work made for hire agreement.

CONSTITUTIONALITY OF WORK MADE FOR HIRE DOCTRINE ? To think about: is the work made for hire doctrine constitutional? Can providing money to create a work amount to “authorship”? Note that not all countries in the world have such a doctrine

CCNV v. Reid (1989) (CB p. 305) Facts of dispute? Issue for U.S. Supreme Court?

CCNV v. Reid: Who is an “employee”? According to the U.S. Supreme Court, is the sculpture a work for hire under the definition in section 101 of the 1976 Copyright Act? Specifically, was the work prepared by an employee?

CCNV v. Reid Court canvasses 4 possible tests for when a work is prepared by employee in scope of employment 1. RIGHT TO CONTROL test 2. ACTUAL CONTROL test (Aldon Accessories 2d Cir, also 4 th and 7 th Cir) 3. AGENCY LAW test (Easter Seals – 5 th Cir, DC Court of Appeals in CCNV) 4. FORMAL SALARIED EMPLOYEE test (Dumas (1989) – 9 th Cir)

AGENCY TEST Must consider “the hiring party’s right to control the manner and means by which the product is accomplished” and also nonexhaustive list of other factors to determine this (see CB p. 314)

REID IS AN INDEPENDENT CONTRACTOR What is the reasoning of Court – is it right?

WHO IS THE COPYRIGHT OWNER OF THE SCULPTURE? If it is not a work for hire, doesn’t Reid own copyright in the sculpture?

WHO IS THE COPYRIGHT OWNER OF THE SCULPTURE? Supreme Court says CCNV may be a joint author. Remands for determination of this issue. Submitted to mediation.

LATER CONSENT JUDGMENT in CCNV (Jan. 7, 1991) Terms of this judgment? Further dispute about Reid’s access to original sculpture when he sought to make a master mold. Parties came to some agreement in unpublished order.

WHY DOES IT MATTER Whether a work is a work made for hire?

TERMINATION OF TRANSFERS Work for hire is exempt If not, 35 years after work’s publication, copyright owner has a 5 year period to terminate grants of right of publication (or terminate other grants for 5 year period starting 35 years after the grant) (see s. 203)

OTHER ISSUES Different duration period for works for hire (See s. 302 – NOT LIFE PLUS 70, but 95 years from publication or 120 years from creation, whichever expires first) Exempt from moral rights for works of visual art in s. 106A - Carter v. Helmsley- Spear, 71 F.3d 77 (2d Cir. 1995) (CB p. 317)

AYMES v. BONELLI (2d Cir. 1992) CB p. 317 Were Aymes computer programs works made for hire according to the 2d Circuit? Why or why not?

AYMES v. BONELLI (2d Cir. 1992) CB p. 317 Were Aymes computer programs works made for hire according to the 2d Circuit? Why or why not? No. Some CCNV factors are more significant than others, and these caused balance to weigh in Aymes’ favor Which CCNV factors were the most significant?

AYMES v. BONELLI (2d Cir. 1992) CB p. 317 Which CCNV factors were the most significant? Right to control means & manner of creation, skill required, provision of employee benefits, tax treatment of hiring party, whether hiring party has right to assign additional projects to hired party ACCORD: Carter v. Helmsley-Spear, 71 F.3d 77 (2d Cir. 1995) (CB p. 317)

WORK MADE FOR HIRE: TO THINK ABOUT Does the CCNV test for a work made for hire, as elaborated in Aymes v. Bonelli, enhance the stated policy goal in CCNV of enhancing certainty and predictability?

Dominant Employees nominally employed by a corporation E.g. Martha Graham or loan out corporations for motion pictures. Is the Second Circuit’s ruling in the Martha Graham case a good decision as a matter of policy?

SCOPE OF EMPLOYMENT CCNV dealt with whether an author is an employee. How do the courts determine “scope of employment” ?

SCOPE OF EMPLOYMENT CCNV dealt with when an author is an employee. How do the courts determine “scope of employment”?

SCOPE OF EMPLOYMENT CCNV dealt with when an author is an employee. How do the courts determine “scope of employment”? Courts rely on test in Restatement (Second) of Agency. Employer must show: 1. Work of type employee hired to perform 2. Creation of work occurred “substantially within the authorized time and space limits” of the job 3. Work “actuated, at least in part, by a purpose to serve” interests of employer

SCOPE OF EMPLOYMENT See Avtec (4 th Cir. 1995) (CB p. 321) – development of computer programs at employee’s home outside of normal business hours not within scope of employment. Is this consistent with Cramer (4 th Cir. 1995) (CB p. 321)

SCOPE OF EMPLOYMENT Courts take a case-by-case fact-specific approach to this issue in applying the Restatement factors

THE TEACHER EXCEPTION If the teacher exception exists, it is an exception to the work made for hire doctrine for academic writings Did the 1976 Act abolish it? Many college and university IP policies adopt the view that teacher exception exists See CUA IP Policy at: /IntellectualProperty/i ndex.cfm

THE TEACHER EXCEPTION Are tests and homework assignments prepared on teacher’s own time and at home works for hire?

THE TEACHER EXCEPTION What about academic writing by college or university professors? Se Weinstein v. University of Illinois, 811 F.2d 1091 (7 th Cir. 1987) (Easterbrook, J.) Hays v. Sony, 847 F.2d 412 (7 th Cir. 1998) (Posner, J.)

SPECIALLY ORDERED/COMMISSIONED WORKS Statutory categories in s. 101 – work must fall into one of these 9 categories “a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”

Lulirama v. Axcess Broadcasting (5 th Cir. 1997) Was the advertising jingles at issue works for hire? Why or why not?

SOUND RECORDINGS AND WORKS MADE FOR HIRE In 1999 Congress added sound recordings to section 101 list of works that could be commissioned works for hire “Millennial Flip-Flop”(2000)

WORK FOR HIRE AGREEMENTS At what point do parties have to execute work made for hire agreements under 101(2)? At time of commissioning? When commissioning party pays creator? When work is being created? Compare Schiller (7th Cir.) and Playboy v. Dumas (2d Cir.)

WORK FOR HIRE AGREEMENTS Does the agreement have to include “work for hire” language? See Armento v. Lasar Image, Inc. (W.D.N.C. 1996)