1. COPYRIGHT LAW FALL 2008 CLASS 9 PROFESSOR FISCHER THE CATHOLIC UNIVERSITY OF AMERICA September 17, 2008

2. CLASS OUTLINE Goals for this Class 1. To be able to analyze the copyrightability fo compilations after Feist 2. Goal for this class: To be able to analyze the copyrightability of a derivative work

3. PICKING NUMBERS – COPYRIGHTABLE? Compare Southco (3d Cir. en banc 2004) [CB p. 147] and ATC (6th Cir. 2005) [CB p. 148]. Are these consistent with Feist or CCC?

4. PICKING NUMBERS – COPYRIGHTABLE? Compare Southco at CB p. 147 and ATC at CB p. 148. Are these consistent with Feist or CCC? Photo Southco Captive Screw Part Number: 47-10-101-15 Color: Bright Finish: Color Fully Retractable: Yes Head Style: Slotted Recess Installation: Flare-in Knob Material: Aluminum Knob Style: Smooth Series: Designer Thread Size: 4-40 Fastened Screw Projection: 4 mm (0.16 in) OP Thickness: 1.5 mm (0.06 in) Unfastened Screw Projection: 0.8 mm (0.03 in)

5. WIREdata p. 152 CB Why couldn’t AT succeed in stopping WIREdata from extracting noncopyrighted data based on its compilation copyright?

6. Fairness Feist CB p. 121: “It may seem unfair that much of the fruit of the compiler’s labor may be used by others without compensation” Do you agree?

7. Sui Generis Right The European Union has issued a directive (96/9/EC) requiring member states to provide sui generis protection against extraction and reutilization of a substantial part of a database manifesting qualitatively or quantitatively a substantial investment in the obtaining, verification, or presentation of the contents. How has the scope of this right been narrowed Is there a need for a sui generis right protecting databases in the US?

8. Sparaco v. Lawler (2d Cir. 2002) To what extent are maps copyrightable? As pictorial works? As compilations? (remember maps were included as copyrightable subject matter as far back as the 1790 Copyright Act) In Sparaco, did the district court err in concluding that copying the site plan would take nothing protected by copyright? Why or why not?

9. Protectable as Compilations– Yes No BAPCO yellow pages (149) Roth greeting card– (total concept & feel) (131) Videogames may be (see Atari 133) Furniture arrangement may be (see Baldine 134) CCC Red Book (140) Rural’s white pages (112) Sem-Torq sign set (132) West cases & page numbers (135) ATC part numbers catalogue

10. Hypo Jon compiles a list of all 50 states. Can she argue that her list is copyrightable? What if Jon compiles a list of the 12 states containing the best dressed models? Does it matter if Jon arranges the states in alphabetical order?

11. DERIVATIVE WORKS What is a “derivative work”?

12. DERIVATIVE WORKS 17 U.S.C. § 101: 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''.

13. 103(b) (b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

14. 103(a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material ahs been used unlawfully. See e.g. Palldium Music Inc. v. EatSleepMusic Inc. (10 th Cir. 2005) [CB p. 179]

15. VIEWED BROADLY, ALMOST ALL WORKS ARE DERIVATIVE ! Mr. Justice Story in Emerson v. Davies “In truth, in literature, in science and in art, there are, and can be, few, if any, things which, in an abstract sense, are strictly new and original throughout. Every book in literature, science and art, borrows and must necessarily borrow, and use much which was well known and used before.”

16. BATLIN V. SNYDER (2d Cir. 1976) CB p. 164

17. TEST FOR ORIGINALITY FOR DERIVATIVE WORK According to the Batlin majority, what is the proper test for originality for a derivative work?

18. TEST FOR ORIGINALITY FOR DERIVATIVE WORK According to the Batlin majority, what is the proper test for originality for a derivative work? There must be a “distinguishable variation” that is more than “merely trivial.”

19. TEST FOR ORIGINALITY FOR DERIVATIVE WORK Is Batlin really distinguishable from Alva Studios v. Winninger (the “Hand of God” case)?

20. TEST FOR ORIGINALITY FOR DERIVATIVE WORK Why does Meskill CJ dissent? Do you agree with the dissent’s lower standard of originality required for a derivative work to be copyrightable?

21. Derivative Works: Harassment Fears Batlin majority: “To extend copyrightability to miniscule variations would simply put a weapon for harassment in the hands of mischievous copiers intent on appropriating and monopolizing public domain works.” [p. 168 CB] Is this fear justified, in your view? Why or why not?

22. Gracen v. Bradford Exchange CB p. 174 What was the issue in this case? What test for originality did the 7th circuit apply? Is it a higher standard than the Batlin majority? What was the 7 th Circuit afraid of?

23. GRACEN COURT “[I]f the difference between the original and A’s reproduction is slight, the difference between A’s and B’s reproduction 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.”

24. MIRAGE v. Albuquerque A.R.T. (9th Cir. 1988) Mirage published Nagel/owns coyrights Albuquerque bought books and mounted them on tiles Were they derivative works? If so, infringed Mirage’s rights

25. 9th Circuit: A Lesser Test for Originality for Derivative Works Seems to follow Catalda case, which required only a modest grade of originality (a de minimis standard). Batlin majority seems to suggest some higher standard of creativity required. See e.g. cases like the Mirage case - mounting artworks on tiles found to be a derivative work (856 F. 2d. 1341 (1988))

26. Retreat from Gracen standard By Judge Posner in Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923 (7 th Circ. 2003). Stated “the only “originality” required for the new [derivative] work to be copyrightable...is enough expressive variation from public-domain or other existing works to enable to new work to be readily distinguished from its predecessors.” Called the requirement “undemanding.”

27. Ets-Hokin v. Skyy Spirits, 323 F.3d 763 Did the first photographer’s photograph have enough originality to be copyrightable? (see photos on p. 176 of Supp) Did the second photograph infringe?

28. WRAP UP: DERIVATIVE WORKS In determining whether a derivative work is original enough to be copyrightable, the Second and Seventh Circuits have been motivated by a fear of harassment by the person or entity claiming copyright in the derivative work. The fear is that that person would use its copyright in the derivative work to improperly claim copyright in a public domain work, or to effectively prevent or greatly limit the licensor in relicensing a copyrighted work to someone else. The Ninth Circuit is less worried about this, and has accepted a lesser standard of originality for derivative works than the Second/Seventh Circuits.