1. Copyright Law: Spring 2002 Professor Susanna Fischer CLASS 12 February 20, 2002

2. ANNOUNCEMENT U.S. Supreme Court yesterday granted certiorari to review Eldred v. Ashcroft, case brought by HTML book publisher Eric Eldred challenging retrospective term extensions in Sonny Bono Copyright Term Extension Act of 1998. Case argued in D.C. Circuit Court of Appeals by Stanford Law Professor Lawrence Lessig

3. GOALS FOR CLASS To finish up doctrine of works made for hire To learn about another authorship doctrine, joint works

4. WRAP UP POINTS: GOVERNMENT WORKS Under section 105, “works of the United States Government”, as defined in s. 101, are not copyrightable U.S. Government employees copyright works made outside of their government duties Copyright Act does not prohibit copyright for works made under Government contract or grant, but House Report notes that there may be cases where copyright should be denied as not in the public interest.

5. WRAP UP POINTS: COPYRIGHT IN OBSCENE WORKS There is no defense of “obscenity” or “unclean hands obscenity” to copyright infringement suits (Mitchell Bros.) However, in Devil’s Films, a district court in a different circuit found that it had equitable discretion to refuse a TRO application to seize obscene films in a copyright infringement action.

6. WRAP UP POINT: OBSCENITY According to Mitchell Bros, it is not constitutionally necessary that each work sought to be copyrighted promotes the progress of knowledge Thus, the Copyright Office does not have to make an obscenity determination before registration of a work PTO can refuse to register immoral or scandalous trademarks (though rarely does so in practice)

7. WRAP UP POINTS: AUTHORSHIP 3 philosophical concepts of authorship: A. Conception of the work B. Execution of the Work C. Financing the Work The Lindsay and Andrien decisions reflect the predominant view preferring A over B. However, according to the work made for hire doctrine, C may also be a crucial determinant of authorship

8. WRAP UP POINTS: WORKS MADE FOR HIRE 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.

9. 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”?

10. CCNV v. Reid What are the relevant facts of this dispute, and what issue did the U.S. Supreme Court have to rule on?

11. CCNV v. Reid: Who is an “employee”? According to the U.S. Supreme Court, is the work a work for hire under either part of the definition in section 101 of the 1976 Copyright Act? What is the Court’s reasoning? What is the correct test for determining when a work was prepared by an employee?

12. CCNV v. Reid 4 possible tests for when a work is prepared by employee in scope of employment 1. RIGHT TO CONTROL test 2. ACTUAL CONTROL test 3. AGENCY LAW test 4. FORMAL SALARIED EMPLOYEE test Supreme Court uses statutory interpretation, legislative history, and policy argument based on need for certainty to conclude that (3) applies.

13. AGENCY TEST Must consider “the hiring party’s right to control the manner and means by which the product is accomplished” look at nonexhaustive list of factors to determine this (see CB p. 272) Applying these factors, was Reid an employee?

14. REID IS AN INDEPENDENT CONTRACTOR True, some control by CCNV in providing specifications for sculpture But weighing against that: skilled occupation, provision of own tools, work in own premises, no daily supervision of work by CCNV, absolute freedom to decide when and how long to work, payment for specific job, total discretion in hiring and paying assistants, CCNV not in the sculpture business, CCNV did not pay payroll or social security taxes or pay other employee benefits

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

16. WHO IS THE COPYRIGHT OWNER OF THE SCULPTURE? If it is not a work for hire, doesn’t Reid own copyright in the sculpture? Supreme Court says CCNV may be a joint author. Remands for determination of this issue. Submitted to mediation.

17. CONSENT JUDGMENT in CCNV (Jan. 7, 1991) Consent judgment: CCNV sole owner of original physical sculpture while Reid is sole author of the work. Reid has exclusive right to make 3-D reproductions of sculpture (without base/inscription), while both Reid and CCNV can make 2-D reproductions (if CCNV gives credit to Reid). 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.

18. AYMES v. BONELLI (2d Cir. 1992) Were Aymes computer programs works made for hire? Why or why not? Which CCNV factors were the most significant?

19. AYMES v. BONELLI (2d Cir. 1992) CB p. 274 Were Aymes computer programs works made for hire according to the 2d Circuit? Why or why not? No. Some factors are more significant than others, and these caused balance to weigh in Aymes’ favor 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

20. CARTER V. HELMSLEY- SPEAR (2d Cir. 1995) p. 275 Why did it matter whether the sculpture was a work made for hire? What CCNV factors were critical?

21. CARTER V. HELMSLEY- SPEAR Why did it matter whether the sculpture was a work made for hire? If it was a work for hire it would not get the protection of VARA which introduced certain moral rights into the Copyright Act What CCNV factors were critical? 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

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

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

24. SCOPE OF EMPLOYMENT: Work at home outside of normal business hours Compare Avtec (4th Cir. 1994) (CB p. 277) and Cramer (4th Cir. 1995) (CB p. 277) (both concern development of computer programs at employee’s home outside of normal business hours). Can these cases be reconciled?

25. Food Lion Inc. v. Capital Cities/ABC (M.D.N.C. 1996) Affirmed by Fourth Circuit (1997) What were the works at issue in this case? Were they works for hire?

26. THE TEACHER EXCEPTION What is it? Does it still exist under the 1976 Act? Does it make sense?

27. THE TEACHER EXCEPTION If the teacher exception exists, it is an exception to the work made for hire doctrine for academic writings Issue is whether the 1976 Act abolished it See draft CUA IP Policy at: http://counsel.cua.edu/ mainpage/

28. SPECIALLY ORDERED/COMMISSIONED WORKS Lulirama v. Axcess Broadcasting (5th Cir. 1997) Was there a work made for hire agreement? Were the jingles works made for hire? Why or why not?

29. SPECIALLY ORDERED/COMMISSIONED WORKS Lulirama v. Axcess Broadcasting (5th Cir. 1997) Was there a work made for hire agreement? There was a jingle writing agreement with notation by Axcess that it was a work for hire Were the jingles works made for hire? No Why or why not? Did not fall into statutory categories in section 101. Audio works only - not audiovisual works