The Illustrated Story of Copyright
© 2000 by Edward Samuels
There are several “exclusive rights” of copyright. Within limits, the authors of copyrighted works may prevent other people from copying or distributing their works; from transforming them into what are known as “derivative” works (translations and adaptations); and in some cases from publicly performing or publicly displaying their works. We’ll look at each of these and other exclusive rights in more detail later in this chapter. However, overarching all of these exclusive rights is a core concept that is easy to state, but sometimes complex to apply: the concept of “substantial similarity.”
It’s an infringement of copyright for a user to make a copy of a copyrighted work without the permission of the copyright owner. In Part One, we looked at technological copying in the context of books, sound recordings, videotapes, computer programs, and the Internet. Since much of the copying is of entire works, such unauthorized copying (subject to various exceptions we’ll discuss in the next chapter) is usually infringement. The major issue raised by the new technologies is that copying is done by hundreds or thousands or millions of individuals, and the problem is how to adjust the law to take account of such decentralized but massive copying. As we saw, the law has developed considerably in recent years to deal with the problem.
We’re now going to focus on a different issue. What if the second work is not an exact duplicate of the original, but rather an independent work that incorporates certain, but not all, aspects of the copyrighted  work? For example, a writer incorporates a paragraph of dialogue from a copyrighted book or play, or a songwriter repeats a pattern of six notes of a copyrighted song, or a painter incorporates into a new painting a single figure from someone else’s painting. Has the second author infringed the copyright of the first?
The issue in these cases is whether the second work is “substantially similar” to the first. It doesn’t have to be an exact duplicate to be an infringement, but it does have to take enough of the copyrighted work that it can be said that the second work was not “independently created.” Drawing the line between noninfringement and infringement, between independent creation and substantial similarity, can be frustratingly difficult. The courts have pretty well refused to adopt a simple numerical test to resolve this issue, instead relying upon general statements of policy, and sensitivity to the facts of particular cases. What is clear, however, is that taking even a small portion of a copyrighted work can constitute copyright infringement.
Let’s see how the substantial similarity test works in the context of several different types of copyrighted works. We’ll see that the test is intimately related to several other key copyright doctrines that are also used to distinguish what infringes from what doesn’t.
Steven Spielberg has been sued, it seems, for just about every movie he’s ever made. Lisa Litchfield wrote a musical about Fudinkle and Lokey, two aliens from Maldemar who are temporarily stranded on earth and befriended by children who are living with their scientist father at the North Pole. Gary Zambito wrote Black Rainbow, a screenplay about the fictional archeologist Zeke Banarro and his expedition in search of pre-Columbian gold artifacts. Geoffrey Williams wrote a children’s book about an imaginary zoo containing cloned prehistoric animals. And Barbara Chase-Riboud wrote Echo of Lions, a historical novel about a mutiny by slaves aboard the slaveship Amistad. All of these authors saw similarities between their own works and Spielberg’s movies: E. T. The Extraterrestrial, Raiders of the Lost Ark, Jurassic Park, and Amistad. Paul Schrader, who had written an ultimately rejected screenplay of Close Encounters of the Third Kind, appealed to the Writers Guild to obtain a screenplay credit. Yet,  Spielberg ultimately won each case. (Of the five, Chase-Riboud apparently fared the best. After she lost in her efforts to enjoin the release of Amistad, she withdrew the suit and praised Spielberg’s production. It was assumed that she received a payment in settlement of her claim.)
The problem with analyzing these or thousands of similar cases is that the plots of stories, books, movies, and plays are quite intricate, and it’s not easy to summarize the issues for someone who has not in fact viewed or read both works. The judges typically devote as much as half their opinions to detailed descriptions of the two works. Judge Learned Hand was the author of two of the leading cases. In the first, he considered the claim that a motion picture, The Cohens and the Kellys, had infringed on Anne Nichols’s popular play, Abie’s Irish Rose (1922). Judge Hand conceded that “It is of course essential to any protection of literary property . . . that  the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations.” Although there were similarities in idea or theme, Hand concluded that “The stories are quite different,” and that “A comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters, is no more susceptible of copyright than the outline of Romeo and Juliet.”
 A Promising Theme.
 A piece of buncombe.
Yet in the second case, Hand reached the exact opposite result. He found that the movie Letty Lynton (1932), produced by Metro-Goldwyn Pictures and starring Joan Crawford and Robert Montgomery, infringed upon Edward Sheldon’s play Dishonored Lady. After a careful analysis, Hand found “parallelism” of character and incident sufficient to constitute substantial similarity, even though the dialogue of the works was different, and even though both works were based loosely upon an actual murder case in which Madeleine  Smith in 1857 poisoned her former lover, but was found by a jury not to be guilty of the crime.
Ever since Hand decided these classic cases, law professors have delighted in assigning them to students, in order to underscore how difficult it can be to reconcile the outcome of complicated cases. In these and later cases (particularly Peter Pan Fabrics, from which the following quote is taken), Judge Hand himself recognized the difficulty of drawing the line between noninfringement and infringement:
The test for infringement of a copyright is of necessity vague. In the case of verbal “works” it is well settled that although the “proprietor’s” monopoly extends beyond an exact reproduction of the words, there can be no copyright in the “ideas” disclosed but only in their “expression.”* 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.
 A squalidly romantic murder play.
The hacks tainted talented writers who might have accomplished something of permanent significance if the standards of the time had been more discriminating. A case in point was Edward B. Sheldon. . . . Since Sheldon was an educated young man with a genuine understanding of the craft of the theater and cultivated standards of taste in literature, he was qualified to write on a higher level than his contemporaries. But, like them, he thought of plays in terms of craftsmanship. He was not motivated to write by what he saw and experienced in life. He wrote on plausible topics that might produce a hit.
 The padded-shoulder look.Joan Crawford and Nils Asther in Metro-Goldwyn’s Letty Lynton. The movie is noted for ushering in Crawford’s “padded-shoulder look,” developed by the Hollywood costume designer Adrian.
At least one thing is clear, however. If someone does copy the exact language of a copyrighted work, then it can be infringement even if it represents only a small portion of that work. In one recent case, The Nation magazine printed an article that copied between three hundred and four hundred words from Gerald Ford’s as yet unpublished memoirs.† The article focused upon the circumstances surrounding the Nixon pardon, and was designed to “scoop” Time magazine’s “first serial rights,” for which Time had paid $25,000. The Supreme Court, by a vote of 6 to 3, held that the taking of as little as three hundred words from the original unpublished manuscript constituted copyright infringement.
 Remind everybody of Watergate.
In justifying the pardon, Ford goes out of his way to assure the reader that “compassion for Nixon as an individual hadn’t prompted my decision at all.” Rather, he did it because he had “to get the monkey off my back one way or the other.” . . .
Ultimately, Ford sums up the philosophy underlying his decision as one he picked up as a student at Yale Law School many years before. “I learned that public policy often took precedence over a rule of law. Although I respected the tenet that no man should be above the law, public policy demanded that I put Nixon—and Watergate—behind us as quickly as possible.”
Later, when Ford learned that Nixon’s phlebitis had acted up and his health was seriously impaired, he debated whether to pay the ailing former President a visit. “If I made the trip it would remind everybody of Watergate and the pardon. If I didn’t, people would say I lacked compassion.” Ford went.
He was stretched out flat on his back. There were tubes in his nose and mouth, and wires led from his arms, chest and legs to machines with orange lights that blinked on and off. His face was ashen, and I thought I had never seen anyone closer to death.
The issue of substantial similarity can be better conveyed in the context of visual works, because then you  can see the entire works at a glance, and make your own assessment of the similarity of the two. One of the leading cases was again decided by Judge Learned Hand. It involved fabric designs by Peter Pan Fabrics, Inc., which were allegedly infringed by Martin Weiner Corp.
The Peter Pan fabric was a quiltlike montage of individual squares based upon traditional Turkish designs. Martin Weiner created its fabric by carefully—but only slightly—altering the design of the individual elements, while maintaining the same overall appearance. Judge Hand was not impressed.
No one disputes that the copyright extends beyond a photographic reproduction of the design, but one cannot say how far an imitator must depart from an undeviating reproduction to escape infringement. . . . In the case at bar we must try to estimate how far its overall appearance will determine its aesthetic appeal when the cloth is made into a garment. Both designs have the same general color, and the arches, scrolls, rows of symbols, etc. on one resemble those on the other though they are not identical. Moreover, the patterns in which these figures are distributed to make up the design as a whole are not identical. However, 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. That is enough; and indeed, it is all that can be said, unless protection against infringement is to be denied because of variants irrelevant to the purpose for which the design is intended.
 “That famous poster.”
On the Hudson.
Another leading case is that of Saul Steinberg, a cartoonist for The New Yorker magazine. His illustration for a cover of the magazine became an immediate classic, and was afterward distributed in poster form. Later, a movie company incorporated some of the features of this cartoon into an advertisement for one of its movies, Moscow on the Hudson (1984). Clearly, the works are not identical: they show different buildings, and they even show views looking in opposite directions from New York.
However, the court focused on numerous similarities, including the general style of the posters, the use of a blue wash across the top to represent the sky and of a red band to represent the horizon, the use of similar typeface, similar perspective and layout, and similar details, such as the water towers, cars, buildings, and other features. Citing the oft quoted lines that “no plagiarist can excuse the wrong by showing how much of his work he did not pirate,” and that “copyright infringement may occur by reason of a substantial similarity that involves only a small portion of each work,” the court found that the movie poster infringed Steinberg’s artwork.
A recent case from the world of television highlights how
difficult and fact-intensive the cases can be. Sid & Marty Krofft created a
very successful children’s television program in the 1960s, H. R. Pufnstuf, that generated a line of
unique products and endorsements. McDonald’s Corp. decided to develop a series
of commercials that used characters obviously inspired by the Krofft
characters. Take a look at the pictures, and  decide
for yourself whether the characters were “substantially similar.” There were
certainly differences in details, but the jury in the trial court concluded,
and the circuit court on appeal agreed, that the similarities in overall
appearance were too great, and that McDonald’s had infringed.
 Try this at home.
| Top, Sid & Marty Krofft’s Pufnstuf and Witchiepoo. Below, Mayor McCheese and Hamburglar, circa 1971. The court held that the substantial similarities were evident in the “total concept and feel” of the Pufnstuf Living Island and the McDonaldland settings, including the other characters and the backgrounds.|
 The case was very much flavored by two different factors: first, Needham, Harper & Steers, the advertising agency for McDonald’s, had been negotiating with the Kroffts to use the Pufnstuf characters in the proposed McDonald’s advertising campaign, and, after breaking off the negotiations, proceeded to develop Krofft-like characters anyway. Indeed, Needham even hired former Krofft employees to design and construct the costumes and supply the voices for the McDonaldland characters. Such behavior might have demonstrated a certain bad faith on the part of the agency, which led the court to be less sympathetic to them and McDonald's.
Secondly, the court felt that the intended
audience—children might be unsophisticated and therefore not likely to catch
the subtle distinctions between the characters. For example, in response to
McDonald’s assertion of differences between the Pufnstuf and Mayor McCheese
characters, the court stated: “We do not believe that the ordinary reasonable person,
let alone a child, viewing these works will even notice that Pufnstuf is
wearing a cummerbund while Mayor McCheese is wearing a diplomat’s sash.” It was
also clear that the Kroffts were injured by the infringement; after the
McDonald’s campaign, the Kroffts began having trouble making or extending their
own licensing arrangements. To add insult to injury, the Ice Capades, which had
previously licensed the Pufnstuf characters, discontinued their license with
the Kroffts and signed on to use the McDonald’s characters!
 Ansel Adams (right).
Some summers ago, on a family vacation to the Grand Canyon, I took what has become one of my favorite photographs, shown on the next page. Later that same summer, I saw for sale on the sidewalk in Greenwich Village in New York the poster shown on the  page: a copy of a photograph by Ansel Adams (in the bargain bin for a mere $5, including the frame). Could my photograph be an infringement of the Ansel Adams photograph?
The answer is clearly no, my photograph does not infringe. I didn’t in fact copy Ansel Adams’s photograph, and so, no matter how similar the resulting picture may be, mine didn’t infringe his. Indeed, when I took my photo, I wasn’t even aware there was such an Ansel Adams photograph, and so could not possibly have copied it.
The situation illustrates the doctrine of “independent creation.” Two authors may independently create similar works, and they may each have a copyright if they did not copy the other. Similarly, neither one infringes the other. I assume that there are thousands of photographs more or less similar to these—taken of the most conspicuous formation in the Grand Canyon looking south from the main visitors’ center on the north rim—and that they are each copyrightable, for what it’s worth, and each not an infringement of any of the others.
 Astounding interpretations.
Trained as a pianist, I am aware that I depended upon the music of the past (Bach through Scriabin) as the source for my musical expressions. As most musicians, I am not a composer. Photographers are, in a sense, composers and the negatives are their scores. They first perform their own works, but I see no reason why they should not be available for others to perform. In the electronic age, I am sure that scanning techniques will be developed to achieve prints of extraordinary subtlety from the original negative scores. If I could return in twenty years or so I would hope to see astounding interpretations of my most expressive images. It is true no one could print my negatives as I did, but they might well get more out of them by electronic means. Image quality is not the product of a machine, but of the person who directs the machine, and there are no limits to imagination and expression.
However, let’s do what law professors love to do, change the facts a little. Let’s assume that I was an admirer of Ansel Adams, knew about his photograph of the Grand Canyon, and planned my own trip precisely in order to duplicate his photo as best I could. I hiked to the precise location, chose the correct lens and filters, and waited for the precisely correct weather and the precisely correct time of day to get the shadows just right to duplicate Ansel Adams’s photograph. Might I thereby infringe the copyright in Adams’s work?
cases suggest that I might. In 1982, John Duke Kisch took a photograph of a
“woman holding a concertina” under a stylized poster at the Village Vanguard
nightclub in New York. In 1985, Perry Ogden took a photograph showing John
Lurie, a famous saxophonist, at the same location in the nightclub. Kisch sued
Ammirati & Puris, the advertising agency that had hired Ogden to take the
photograph for a beverage advertisement. Ammirati moved to dismiss the case, on
the ground that the photograph was obviously different. The court refused to
dismiss the case, finding that there were sufficient similarities that a jury
might find the works “substantially similar” under the law. The court
particularly cited the fact that the photos “were taken of the same small
corner of the Village Vanguard nightclub,” that “the same striking mural
appears as the background for each photograph,” that the individuals in each
photo are seated and holding musical instruments, and that “the lighting,
camera angle, and camera position appear to be similar.”
 The Village Vanguard.
Howard Alt took a photograph showing two pens on a grid with a yellow circle. This was not an idle snapshot, but a carefully set up arrangement that was part of a series of photos taken over several days. Joe Morello, a famous photographer, witnessed the photo shoot, and saw the  final product in Alt’s portfolio. Morello then created a similar photograph. Was Morello’s photo an infringement? The court had no difficulty finding that “the composition, backgrounds, colors, lighting, objects photographed and cropping, are substantially similar,” and thus a copyright infringement. The case was made particularly appealing because Alt, a beginning photographer, had included the photograph in his portfolio, and was himself accused of copying the work from the more famous Morello, when in fact the copying was the other way around!
What these cases show is that the copyright in a photograph can be infringed not only when it is mechanically and precisely reproduced: it can also be infringed when other people reproduce substantially similar works using their own cameras.
Ronald Mack wrote the song “He’s So Fine,” which was made popular by the Chiffons in 1962. Several years later, George Harrison wrote “My Sweet Lord,” which was first recorded by Billy Preston and then became a hit for Harrison in 1970. The works are very different in their orchestration and mood, but there are some basic similarities. In 1976, a federal court in New York found that the works were substantially similar, and that the Harrison song infringed the Mack song.
The experts and the court ultimately reduced the songs to their essential notes. In each song, there were two motifs: the first consisted of three notes, “sol-mi-re” (G-E-D, or “He’s so fine,” or “My sweet lord”) repeated about four times; followed by “sol-la-do-la-do” (G-A-C-A-C, or “Don’t know how I’m gonna’ do it,” or “I really want to see you”), repeated three or four times. Although almost every repetition involved a different number of beats, the judge found that the “differences essentially stem . . . from the fact that different words and number of syllables  were involved. This necessitated modest alterations in the repetitions or the places of beginning of a phrase, which, however, has nothing to do whatsoever with the essential musical kernel that is involved.”
There was also an intervening melody in Harrison’s song, repetitions of “Hallelujah” or “Hare Krishna,” which the court found to be a mere “responsive” interjection that, like the “Dulang-dulang” repetitions in the Mack song, was “used . . . in the same places to fill in and give rhythmic impetus to what would otherwise be somewhat dead spots in the music.”
Every year my copyright students listen to the songs, and every year we disagree about whether they are or are not substantially similar. Every year, Marcia, my wife, tells me that she immediately recognized the similarities, and wondered why someone didn’t tell Harrison before the work was released. After the case, radio stations around the country played the songs back to back, and it proved to be a tremendous embarrassment for Harrison, whose creativity was bound to look pale when compared to that of Lennon and McCartney. The judge tried to save face for Harrison by concluding that Harrison did not deliberately copy, but that the copying had been “subconscious.”
 “Dardanella,” made up of eighth notes.
 “Kalua,” made up of quarter notes.
The case is reminiscent of a similar one from an earlier era. “Dardanella” was a popular song of 1910-20. It had a hypnotic bass accompaniment of eight notes, repeated over and over, “with no changes, except the variation of a musical fifth in the scale to accommodate itself harmonically to the changes in the melody.” Jerome Kern, one of the great songwriters of the day, then wrote an even more popular song, “Kalua,” which allegedly used a similar bass accompaniment. The case was decided again by Judge Learned Hand, this time as a district court judge, who seemed to get all the interesting copyright cases in New York. Hand found that Kern’s work infringed the earlier song, even though it did so only in the accompaniment and not in the melody. He accepted Kern’s assertion that “he was quite unconscious of any plagiarism,” but found that “Mr. Kern must have followed, probably unconsciously, what he had certainly often heard only a short time before.”
Hand described the bass accompaniments as “ostinatos” that were “exactly
alike,” it’s obvious that  they’re not
identical. The “Dardanella” theme is made up of eighth notes, with a return to
the same note (G, and later D) to fill out the second half of every beat. This
was said to evoke the beat of a drum or tom-tom, appropriate to the piece.
There are no such eighth-note fillers in “Kalua,” which results in a less
frequent beat that was said to “indicate the booming of the surf upon the
beach,” appropriate to the “Kalua” theme.
If you look closely, you’ll also see that in the third and fourth bars
of each theme of “Dardanella,” the notes on the beat of the ostinato jump a
full octave. In “Kalua,” in the third and fourth bars, they jump only half an
 The half-a-million-dollar difference.
There was a major difference between the Harrison and Kern cases. In the Harrison case, the recovery was ultimately $587,000. (This amount was reduced from over $1.6 million, because Allen Klein had purchased from the copyright owner the claim against Harrison. This was described as a gross fiduciary breach, in that Klein was a former manager of the Beatles!) In the Kern case, Hand called the controversy “a trivial pother,” “a mere point of honor,” and set the damages at the nominal sum of $250—a rather Pyrrhic victory for the plaintiff.The nominal recovery suggests that Hand was trying to apply the wisdom of Solomon to reach a just result—allowing the plaintiff a technical victory, but not the monetary relief that normally accompanies such a victory. As we’ll see later in this chapter, if a copyright owner proves infringement, then, among other things, the owner is entitled to recover the defendant’s profits attributable to the infringement. Hand never even seems to have considered the possibility.
 Not millionaires many times over.
According to the old Tin Pan Alley
model, still the basis of much pop and rock songcraft and of out antiquated
music copyright laws, a song has a lyric, a melody, and a sequence of chords.
In a court of law, you can sue and win if someone writes a song that quotes
substantially from the words, the tune, or the chord progression of a song you
have previously copyrighted. You cannot sue on the basis of a pirated rhythm
pattern or beat, which is one of the main reasons rhythmic innovators like Bo
Diddley and James Brown are not millionaires many times over.
I don’t agree with Palmer that copyright protects a chord progression—certainly not if the chord progression represents the only similarity between two works.
Thus, in order to conclude that the tunes are “exactly alike,” one has to first assume that certain notes simply don’t count, and that certain notes have the same tonal impact as others. These are some of the same assumptions that were necessary to conclude that “My Sweet Lord” was the same song as “He’s So Fine.” (Indeed, even the characterization of Kern’s use of the notes as an “ostinato” is a generalization, since the sequence appears in only about half of the bars in the chorus, not continuously throughout it.)
In my copyright class, I suggest that these cases are examples of how the same notes, given a very different orchestration in the Harrison case, or a different melody line in the Kern case, can actually sound quite different. I also suggest that different notes can in fact be made to sound quite similar. By way of example, I play a musical parody created by the fictional musical group The Rutles (actually a Lorne Michaels production starring the British comedian Eric Idle together with several stars from the early Saturday Night Live), in parody of the Beatles. The parodies are probably excused by the fair use doctrine.* But the clever parodies also manage to conjure up—arguably sound “substantially similar” to—the originals by the use of different notes. For example, the Beatles song “Get Back” has a repeated sequence of F#-G, F#-G. The parody of it, “Get Up And Go,” uses the sequence G-F#-E-G, G-F#-E-G, orchestrated precisely like the Beatles song, to make a tune that after a few repetitions seems like a perfect substitute for the original. The point of the  exercise is that music cannot be reduced to a simple series of notes. Just as with story lines, visual works, and photographs, musical works can be similar even when there are distinct differences. Whether or not the similarities go as far as to make them “substantially similar” is, obviously, a tough call.
Even if a work is substantially similar to a prior work, it doesn’t necessarily prove that the second author in fact copied. In order to win an infringement suit, an author must prove that the alleged infringer had access to the copyrighted work, so that copying could have taken place. This will be easy to prove if, as in the “He’s So Fine” and “Dardanella” examples, the first work was popular and would have been known to the second writer. But access may be hard to prove if the first work was obscure.
 “How Deep Is your
To illustrate the point, let’s take a look at another recent musical copyright case. Ronald Selle wrote “Let It End” in 1975. He performed the song with his group in Chicago, and sent copies to several record companies; but the song was never a success, and was never sold either in record or sheet music form. In 1978, the Bee Gees wrote “How Deep Is Your Love,” which was later featured in the movie Saturday Night Fever. Selle sued the Bee Gees, and presented an expert witness who testified that the songs were substantially similar—indeed, so similar “that they could not have been written independent of one another.”
At the trial, the jury returned a verdict that the Bee Gees had infringed Selle’s song. Nevertheless, the judge granted the Bee Gees what is known as a “judgment notwithstanding the verdict.” Basically, the judge concluded that the Bee Gees had no access to Selle’s song, and so could not have copied it, no matter how similar the songs may have sounded to the jury. Without access, there is no infringement. This obviously means that successful songwriters, whose works are being  performed (and heard, and “subconsciously” copied) will be more likely to win infringement suits than unknown songwriters.
 The complications
of copyright licenses.
Copyright is nothing more nor less than a series of “exclusive rights” that we grant to authors in order to encourage them to create their works. The authors may invoke these rights by bringing lawsuits against others who do any of the things included within the enumerated rights. But of course authors don’t generally make money only by bringing lawsuits. The primary value of the copyright is the right to make money by making and selling copies of the work, or by selling to someone else, generally a publisher, the exclusive rights to make and sell copies of the work.
Let’s take a closer look at the exclusive rights enumerated in the current copyright act. (In the enumerations below, the date represents the date on which the exclusive right was first added to the statute.)
The essence of copyright is the exclusive right to “copy.” Under the original 1790 act,* this right was subsumed under the “sole right and liberty of printing” or “reprinting” the copyrighted work; but today is described as the exclusive right “to reproduce the copyrighted work in copies.” Obviously, this right is not absolute, as isolated or personal copies will probably be allowed in many circumstances. We’ll explore some of the limitations in the next chapter.
The exclusive right to distribute a copyrighted work has been a part of the law since the 1790 act. Originally subsumed under “the sole right and liberty of . . . publishing and vending” the works, the statute now speaks in terms of the “exclusive rights . . . 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.” This exclusive right includes the exclusive right to import copies of the work into the United States. In many cases, the distribution right will overlap with the right to copy, since it will be the same person or company that makes and distributes the infringing works. But a manufacturer who doesn’t distribute will infringe the first right, and a distributor who doesn’t manufacture will infringe the second.
The distribution right is subject to a very important exception, known as the “first sale” doctrine. Under this doctrine, once someone has bought a legitimate copy of a copyrighted work, that person is free to resell that particular copy without copyright liability. Thus, if you buy a book, you may sell or lend only that copy of the book, so long as you don’t make additional copies; if you buy a videocassette of a movie, you may sell or rent or lend only that copy to others, so long as you don’t make additional copies; or if you buy a painting, you may sell or display that painting to others, so long as you don’t make additional copies.
For the most part, then, you’re allowed to further distribute individual copies of works that you have legitimately obtained. The copyright owner is supposed to charge enough when the work is first sold to compensate for any additional resales of those particular works: or, to put  it another way, the exclusive rights in particular copies are exhausted upon the “first sale” of those particular copies. As a result of this doctrine, the exclusive right to distribute is much more limited than it might at first appear. (As we saw earlier, there are exceptions to the first sale doctrine that extend control of copyright owners over the rental, as opposed to the sale, of sound recordings* and computer programs.†)
The exclusive right to make derivative works covers all ways in which a copyrighted work might be adapted or incorporated into a new work. The exclusive right of translation was added only in 1870, and expanded in 1909 to include the exclusive right “to translate the copyrighted work into other languages or dialects, or make any other version thereof, if it be a literary work; to dramatize it if it be a nondramatic work; to convert it into a novel or other nondramatic work if it be a drama; to arrange or adapt it if it be a musical work; to complete, execute, and finish it if it be a model or design for a work of art.”
The current act is even broader, granting the exclusive right to make a “translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or other form in which a work may be recast, transformed, or adapted.”
For those works that are normally performed—music, drama, choreography, and motion pictures—the copyright owner of the original work retains the exclusive right to perform the work publicly. This right was only added for dramatic works in 1856, and for musical works in 1897.
The important issue here is what constitutes a public performance. If you write a song, I’m free to sing the song in the shower (assuming that I don’t take my shower in public), but I’m not free to perform the work publicly without your permission—usually upon paying a licensing fee. There are lots of limitations on this right, particularly excusing many nonprofit performances of a work.‡
 Prior to 1995, the public performance right did not extend to sound recordings. In that year, however, Congress provided that a limited public performance right would be granted for digital audio transmissions* of sound recordings.
The display right, added only in 1976, gives the copyright owner the exclusive right to display the work in public. Just like the distribution right, the display right is subject to the first sale doctrine: owners who have purchased individual copies of works may display those individual copies “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.” Thus, the public display right is also much more limited than it at first appears.
Many foreign countries grant authors certain “moral rights” in their works, and recognition of such rights is required by the Berne Convention,† the major international treaty dealing with copyright. These rights have included, among other things, the right of attribution—that is, the right to have one’s name associated with one’s works—and the right of integrity—that is, the right to protect against the destruction or mutilation of one’s works. In the United States, a handful of states in recent years extended to certain authors such rights in their works. When the United States joined the Berne Convention in 1988, it was debated whether American law was truly in compliance with the international requirement, and whether the American law should be changed.
†Berne Convention, see p. 241.
The response, in 1990, was a very limited federal right of attribution and integrity. The right extends only to authors of “visual art,” defined to include paintings or sculptures that exist in only one copy, or in a limited edition of no more than two hundred signed and consecutively numbered copies. For such works, the statute gives the painter or sculptor the right to claim the authorship of works, or to deny the use of one’s name for works not created by the author; and the right, with limitations, to prevent intentional distortion of one’s work, or to prevent the use of one’s name in association with works that have been distorted or mutilated.
In December 1994, as part of its treaty obligations under the World Trade Organization (WTO), Congress added a new section granting performers of live musical performances the exclusive rights to record their performances, or to transmit or distribute unauthorized recordings. Prior to this time, federal copyright existed only in works that were already “fixed in a tangible medium of expression”* (although live performances might be protected under the law of some states). With the adoption of this new amendment, “live” musical performers are now granted special protection under federal law against unauthorized “bootlegging” of their performances. Some commentators have read this new section not only to prohibit future creation of bootleg recordings, but also to prohibit the continued distribution or transmission of previously made unauthorized recordings of live musical performances.
 Illegal Beatles.
 Out on the streets in eight days.
Pink Floyd, when they came back in ’87, the first show of the world tour was in Ottawa, and a friend of mine drove up there, taped it, bought a concert programme, Fed Ex’d the tape and the programme from Ottawa the next morning to me [in California]. I handed it all in. It was mastered that afternoon. I had plates by the day after on the other side of the continent! We had records, in a double gatefold, on pink vinyl, with four-colour labels, out on the streets in eight days. . . . And we sold 7,000 of those . . . One of the guys who worked for the Floyd went into It’s Only Rock and Roll in the Village [in New York] and he saw this bootleg and they hadn’t even played there yet! “Jesus Christ! I work for these guys, let me see that!” He looked at it and was absolutely stunned. He took it back to the hotel and showed it to the band. They were so freaked out they sent him back to buy three more for them. This is a week and a half after the show.
Technological Protection Measures, 1998
The Digital Millennium Copyright Act† granted a new type of protection against the unauthorized circumvention of technological protection measures. Under that act, owners of copyright in digital works may protect them by encoding the works to prevent unauthorized access or copying. If owners so encode their works, users are legally prohibited from circumventing such protection schemes. As we’ve seen, the 1998 Act, the most complicated in the history of copyright, has lots of exceptions and special limitations.
The Digital Millennium Copyright Act also added a new type of protection for “copyright management information.” Owners of copyright in digital works may put their works in electronic “envelopes,” or electronically embed in their works, information that identifies the author and certain other copyright information relating to the work. If an owner does so, then it is now illegal for a user to knowingly alter or remove such copyright management information from copies of the work. This information  will make it easier for copyright owners to notify users about their rights, and to track the posting of copies of their works on-line.
What if one of the exclusive rights of an author, as described above, is violated? Normally, an attorney for the author calls up the infringer or the attorney for the infringer, and they discuss how the infringer will stop violating such rights, or how much the infringer should pay for the rights. If they can’t come to terms, then the author’s ultimate weapon is to bring a lawsuit in federal court.
Assuming that the author is able to prove the infringement, and that there are no exceptions or limitations (as described in the next chapter), then the author is entitled to a broad range of remedies. Some of these remedies (like recovery of lost profits and the recovery of costs and attorneys’ fees in bringing a lawsuit) are designed to compensate the copyright owner for losses. Some (like fines and injunctions and criminal liability ) are designed to deter infringement in the first place. And others (like forfeiture of infringing copies and recovery of the infringer’s profits) are designed to prevent the infringer from gaining by the infringement. Let’s take a closer look at the specific remedies available to a wronged copyright owner. (Again, the dates indicate the date that the remedy was first enacted by Congress. Most of the remedies, except as noted, continue to be available today.)
The English Statute of Anne,* all the way back in 1710, provided that infringers of copyright “shall forfeit” all infringing books “to the . . . Proprietor thereof, who shall forthwith Damask and make Waste Paper of  them.” The first U.S. law in 1790 similarly provided that infringing copies of all copyrighted works would be forfeited to the owners “who shall forthwith destroy the same.” In 1802, this provision was extended to include “the plate or plates on which such print or prints are or shall be copied.”
Under the current law, a court may impound infringing works, and ultimately order the destruction of copies or “plates, molds, matrices, masters, tapes, film negatives, or other articles by means of which such copies or phonorecords may be reproduced.” This can be a formidable weapon. For example, in one commercial record piracy case twenty-five thousand illicit tape recordings were seized, in addition to the blank cartridges, labels, machinery and equipment used, or that might in the future be used, for their manufacture. Except in the most egregious cases, the infringers often agree to the payment of a licensing fee, in order to avoid forfeiture of what might involve a substantial capital investment.
Beginning in 1790, the statute provided for what was essentially a fine for copyright infringement. The amount of the fine was usually split between the owner of copyright and the United States. The 1790 act provided for payment of “fifty cents for every sheet which shall be found” in the possession of the infringer. The 1802 act provided for $1 to be paid for every infringing print; the 1856 act, for violation of the performance right, provided $100 for the first violation and $50 for each subsequent violation; the 1870 act provided for $10 to be paid for every infringement of a painting or statue. The 1895 act provided for a total penalty, in the case of a photograph, of not less than $100 nor more than $5,000; and, in the case of a painting or statue, raised the penalty to not less than $250 nor more than $10,000.
All of these fixed fees were replaced in 1909 by the provisions described below under the headings “Lost Profits” (p. 174) and “Discretionary Remedy” (p. 176).
Since 1819, the courts have had the power to enforce copyrights by way of injunction. With this power, a court can order an infringer to stop the  infringement, and (as specifically provided in 1897) enforce the order, if necessary, by holding the infringer in contempt. Injunctions are granted rather liberally in copyright cases.
Congress first made copyright infringement a crime in 1897, when it made it a misdemeanor, punishable by up to a year in prison, for an infringer willfully and for profit to present an unauthorized public performance of a dramatic or musical work. The criminal provisions were broadened in 1909 to cover any copyright infringement undertaken “willfully and for profit.”
Criminal proceedings are rarely brought, except in the case of fairly extensive record, videotape, and computer program piracy. In these contexts, however, in order to deter such activity, the penalties have been raised several times over the years. Under current law, you’re in serious trouble if you’re involved in major piracy of records or disks, videotapes, or computer programs. The really serious stuff is when you’re involved in creating or distributing, in any 180-day period, at least ten copies of works with a retail value of more than $2,500. For that you can go to jail for up to five years (up to ten years for a second offense), and pay a fine of up to $250,000 for individuals, or $500,000 for organizations. Even in lesser quantities, the penalty can still be severe.
 FBI Warning.
Criminal copyright infringement is investigated by the FBI and may constitute a felony with a maximum penalty of up to five years in prison and/or a $250,000 fine.
This warning, as applied to wholesale pirates, is a reasonable one. But as applied to home consumers, it is a bit of bravado. Unless done “for profit or private financial gain,” copyright infringement, though giving rise to civil remedies, is not a crime. I suspect the warning scares away a few home tapers, but for most consumers it probably has about the same impact as the warning of criminal penalties for removing the tags from pillows.
Under the 1909 statute, criminal infringement required that the infringement be “willfully and for profit”; but in 1976, the language was expanded to include acts done willfully and “for purposes of commercial advantage or private financial gain.” In 1997, in the No Electronic Theft (NET) Act, the definition of “financial gain” was extended to include the “receipt, or the expectation of receipt, of anything of value, including the receipt of other copyrighted works.” Under that act, the unauthorized reproduction and distribution of even a single copy of a copyrighted work with a retail value of more than $1,000 can subject a person to criminal penalties. Are you scared away yet?
 Allocation of profits.
testimony showed quite clearly that in the creation of profits from the
exhibition of a motion picture, the talent and popularity of the “motion
picture stars” [in this case, Joan Crawford and Robert Montgomery] generally
constitutes the main drawing power of the picture, and that this is especially
true where the title of the picture is not identified with any well-known play
or novel. . . . In addition to the drawing power of the “motion picture stars,”
other factors in creating the profits were found in the artistic conceptions
and in the expert supervision and direction of the various processes which made
possible the composite result with its attractiveness to the public.
 Pitfalls of Hollywood accounting.
Lost Profits, 1909
In its major recodification of the Copyright Act in 1909, Congress provided that a copyright owner could generally recover against an infringer for “such damages as the copyright proprietor may have suffered due to the infringement.” This usually meant the loss of sales by the copyright owner that were attributable to the infringement. There’s plenty of precedent for this type of recovery in other areas of law—for example, for personal injuries or breaches of contract—so the courts have developed lots of rules for figuring out exactly how much “damage” is attributable to particular wrongs. However, it is frequently difficult or impossible to prove such damages with any degree of certainty. So Congress added another remedy, the amount of profits made by the infringer.
When the copyright owner hasn’t suffered much harm, or when it’s impossible to prove the amount of the harm, the best recovery may be the infringer’s profits from the infringement. If I write a book that’s only modestly successful, but then a famous Hollywood producer makes an unauthorized but popular movie of it, which do you think I’d rather recover: the meager sales I might have lost on the book, or the massive profits that the movie producer has made from the movie? Since 1909, the Copyright Act has allowed the copyright owner to recover “profits which the infringer shall have made from such infringement.”
The problem in cases like this will be to prove how much of the infringer’s profits are attributable to the wrongdoing. The leading case on the subject is the Letty Lynton case.* The district court in that case had  awarded damages of $587,604.34, Metro-Goldwyn’s net profit from the movie. The appellate court had reduced the recovery to only 20 percent of that amount, figuring that about 80 percent of the movie’s success was due to factors other than the infringing script. The Supreme Court agreed, and let the figure stand at only 20 percent of profits (plus $33,000 for attorneys’ fees). Although that may seem like a small amount for a case that, including appeals, had stretched out over many years, it was certainly more than Sheldon had originally been bargaining for, about $30,000 for the movie rights.
Since 1831, parties to copyright lawsuits have been entitled to “costs.” This covers the relatively minor costs of filing papers or having transcripts made. The usually much larger attorneys’ fees—reimbursement for the fees paid to one’s own attorneys to prepare and present the case—have been allowed to the prevailing party, in the discretion of the judge, since 1909. This practice is presumably designed to fully compensate copyright owners who must sue in order to enforce their rights; to encourage infringers to settle, lest they end up paying the copyright owner’s attorneys’ fees (as well as their own); and to assure that meritorious copyright owners are not denied justice just because they are too poor to afford an attorney.
 “Run Through the
The provision can sometimes backfire on copyright owners. Courts increasingly make plaintiffs pay the attorneys’ fees of defendants! The recent trend was set in motion by a Supreme Court case involving the songwriter John Fogerty. Fogerty, as a member of the group Creedance Clearwater Revival, had written the song “Run Through the Jungle,” and then sold the copyright in the work. Fogerty, as a solo performer, later wrote and recorded the song “The Old Man Down the Road.” Fogerty was then put into the unenviable position of being sued for infringing his own earlier work.
 The two works were not identical, though they did have thematic similarities, particularly in the repeated chorus and the base accompaniment. The case went to a jury, which found that the works were not substantially similar. The Supreme Court upheld the award of attorneys’ fees for defendant Fogerty even though there was no allegation or proof that the suit had been brought in bad faith or that it was frivolous. Ultimately, Fogerty was awarded over $1.35 million in attorneys’ fees, apparently the largest fee ever awarded in a copyright case.
Might such an
outcome have a chilling effect upon owners of copyright thinking about bringing
infringement suits? Possibly—balanced only by the possibility of getting reimbursement of attorneys’ fees
if they win.
 Advantages of registering.Since 1988 Congress has dispensed with all “formalities,” so that notice and registration are not a prerequisite to federal copyright protection. However, there are still advantages to registering copyrighted works. One such advantage is that you cannot recover either the discretionary “statutory damages” or the potentially substantial “attorneys’ fees” if you don’t register. My advice: if you think there’s any chance you’ll need to sue to protect your copyright, then register the work with the Copyright Office, as described on p. 209.
In 1909, Congress eliminated
the “fixed fines” system described above, and replaced it with a system
allowing recovery of any amount by which the copyright owner was injured.
Recognizing, however, that there were many cases where damages would be hard to
prove, Congress gave copyright owners the option of receiving a special
recovery “in lieu” of actual damages or profits. Recovery was available in an
amount that “to the court [that is, the judge] shall appear just,” within
ranges set in the statute for different types of works. The system was
basically  retained in the 1976 Act, under
the heading “statutory damages,” with a general range for all copyright
infringements. As they currently stand, statutory damages may be set within the
discretion of the judge at any amount between $500 and $20,000, with an option
to go as high as $100,000 for “willful” infringement, or as low as $200 if the
infringer had no reason to know that the acts constituted copyright infringement.
The damages may even be reduced to zero for certain innocent educational,
library, or public broadcasting uses.
In the Betamax case,* the Supreme Court addressed the issue known as “contributory infringement”—that is, the issue of when one party is liable for the infringing activities of another. Since there were few authoritative cases in the field of copyright, the Court borrowed from patent law, where the doctrine was more developed. The Court concluded that, if the video recorder was capable of “substantial noninfringing” uses, then the manufacturer, Sony, would not be liable for the activities of its customers who might otherwise infringe. That way, the machine remains available for use by those persons who have a legitimate, noninfringing purpose in using it.
One of the major themes of late twentieth-century copyright has been the extent to which the intermediate players have managed to get themselves out of copyright liability. Sony was held not liable for potential infringements by customers using its machines; NYU essentially got itself out of liability for infringing activities of its professors; libraries got a broad statutory exemption; on-line service providers got a limitation on general liability in the Digital Millennium Copyright Act; and even companies that used to find themselves liable for copyright infringement for the activities of their employees have managed to set up systems so that they now comply with their copyright obligations.
In most of these contexts, the price for immunity has been the obligation to assist in the enforcement of rights. The Digital Millennium  Copyright Act provides that manufacturers of video recorders must include copy protection systems in their machines.* NYU,† under its settlement governing photocopying by its professors, must notify its professors of their copyright obligations, and help to enforce against abuse. (The settlement was presumably supposed to be a model for other schools to follow, but, as a settlement, it has no precedential impact, and I doubt that many other schools have as aggressive an enforcement policy as NYU) Libraries have to implement reasonable standards for preventing widespread infringement by their patrons.‡ On-line service providers,• under the Digital Millennium Copyright Act, are required to cooperate with copyright owners by removing or blocking access to on-line sites that infringe, and, under some circumstances, identifying the primary infringers.
One of the great success stories of recent years has been the extent to which businesses have gone from being the copyright infringers to being the copyright enforcers. The Copyright Clearance Center now has site licenses with many large companies so that they pay for their photocopying  activities.* And various computer software organizations, by bringing test cases and advertising their enforcement efforts, have been successful in getting most large companies to purchase site licenses to cover the multiple copies of their business software, and to police against the installation of unauthorized copies by their employees.
 Worker Bees, Unite!
Copyright owners are given a broad range of rights, and a broad range of remedies to ensure that their rights are protected. However, these rights are not absolute. In the next chapter, we’ll discuss some of the very important limitations on the rights of copyright owners.
Go to Chapter 8: Copyright Limitations, Exclusions, and Compromises
Permission, Limitations, and Format