Columbus School of Law, The Catholic University of America

COPYRIGHT 2003

Exam Memo I

April 9, 2003 – covers material up to Spring Break

This memorandum is intended to provide you with some information regarding the final examination, which will take place on May 5 2003 at 6:20 pm. The examination is open book. It is a three-hour examination. You will have an extra 30 minutes to check your work.

Most of the questions will be problem questions in format, but there may also be some essay format questions that require you to analyze policy issues.

1. General Information About Problem Questions: Problem questions require you to do the work of a practicing attorney by advising imaginary clients on legal issues that arise out of hypothetical fact patterns. While students often fear problem questions, doing such questions is generally an extremely valuable learning experience. Problem questions better simulate the actual practice of law than essay exam questions.

1. PROBLEM QUESTIONS ARE "WHAT IF" QUESTIONS: The goal of a problem question is to encourage you to apply the holdings of cases you have read in class to a new set of facts that you have not seen before. To prepare for a problem question, you should move beyond thinking about the specific facts in the cases you have read. Rather, you should focus on thinking about how you would apply the holdings of those cases (and the relevant statutory provisions) to a new set of facts. After you review a particular case and/or statutory provision, you should test your understanding by asking yourself some "what if" questions.

2. READ THE QUESTION CAREFULLY: It is very important to read a problem question carefully (ideally more than once) so that you can both spot the issues in the question and respond appropriately to the specific question(s) about those issues. Generally, the question will limit the issue(s) in some way. Consequently, it is not usually appropriate simply to write down everything you know about that issue in response to the question.

2. MAKE SURE THAT YOU CLEARLY UNDERSTAND (AND ANSWER) THE CALL OF THE QUESTION: Make sure that you understand "the call of the question", i.e. what the question is asking you to discuss. You will not get any points for answers, even brilliant ones, if they are outside the call of the question.
3. ISSUE SPOTTING: After you have read and understood the call of the question, you should carefully (ideally more than once) read the fact pattern part of the question and try to spot (or find) the issues that you have to resolve in order to answer the call of the question. Make notes of any relevant issues, such as copyright ownership, work for hire, or fair use, in the margins or on scrap paper as you read the question. Also, as you read the question, make notes of relevant facts. I recommend reading the question at least twice to ensure that you have spotted all of the relevant facts and issues.
4. MAKE SURE YOUR ANSWER IS WELL ORGANIZED: I recommend jotting down a rough outline before writing your answer. Your final written answer should be well reasoned and logically organized. The IRAC form is a good way to organize each issue required by the call of the question.
5. MAKE SURE THAT YOUR ANSWER IS SUFFICIENTLY COMPLETE: Do not assume that because I wrote the exam I must know all the relevant facts and issues so there is no point in discussing them. I cannot award you credit for what is not written in your answer, so you should discuss all relevant issues and facts.
6. MANAGE YOUR TIME CAREFULLY: Keep careful track of the time available to answer the question. To help you, each question on the exam will include the suggested time for completion of that question. The suggested time correlates to the percentage of points for that question. Make sure you bring a watch with you and that you look at it during the exam.
7. REVIEW YOUR ANSWER(S) BEFORE HANDING IN YOUR EXAM: An extra half hour will be provided to enable you to review your work on the exam. Make sure you make use of this extra time. It will help you avoid sloppy or careless mistakes. After you have completed an answer, you will often think of additional things you should have written. Do not just tack any such additional material onto the end of your answer, but indicate where in your answer this new material properly belongs. If you do not do so, I am likely to assess your answer as badly organized.
8. DO NOT PANIC ABOUT PROBLEM QUESTIONS: Problem questions are not as hard as you fear. Indeed, your fear can be your own worst enemy. Even students who receive top grades in the exam will usually fail to spot one or more relevant issue(s). Please bear in mind that since I award partial credit, you may do very well on the exam even if you fail to spot some of the issues in a particular question.

3. Topics for Problem Questions: Below (at 7), is an initial list of copyright law topics and issues that you should study in order to prepare for the exam. This list of topics covers material covered up to Spring Break. Subsequent list(s) will be posted soon. All exam memoranda, including this one, will be posted on the class website.

A question may ask about one of these issues directly: for example, it may describe or show you a picture of a greeting card and ask you whether that card is copyrightable. Or, the question may ask you about an analogous situation, such as whether a magazine cover is copyrightable. When answering a question about an analogous situation such as the copyrightability of a magazine cover, you will need to decide first what law applies, and persuasively argue why it applies. One reasonable choice might be that the law applicable to a greeting card would be applicable to a magazine cover because both are effectively compilations. After you have determined what law should apply, you should fully analyze how the applicable law should be applied to the new fact pattern in the question and provide a conclusion summarizing your advice.

4. Important Cases To Review: In the topic list at 7 below, I indicate what I think are the most important cases to review. Many are Supreme Court cases. You should refer to these cases by name on your exam where their holding or reasoning is relevant to a particular problem or policy question. You do not have to use any particular citation form for case names as long as it is clear to what case you are referring.

5. Statutory Provisions: Although the exam is open book, in order to prepare properly for it, it is very important that you carefully read and understand all of the important statutory provisions listed in the memorandum. Unlike cases, where I only require citations to the most important cases referred to in 4 above, I DO REQUIRE YOU TO CITE TO any of these important statutory provisions on which you rely in your answer. You will get/lose points for citing/failing to cite any such provisions. You do not have to use any particular citation form, as long as it is clear to what provision you refer. You should cite as precisely as possible, i.e. to subsections, if relevant.

6. Constitutional Provisions: To the extent that your exam answer relies on the U.S. Constitution, you must also cite to the relevant provision. You do not have to use any particular citation form, as long as it is clear to what provision you refer.

7. List of Topics/Issues to Review: Below is an initial list of important topics and issues to review for the problem questions. This memo covers topics up to Spring Break. Additional topics will be provided later.

I. COPYRIGHTABILITY

BIG PICTURE ISSUE: Is a particular work protectable under U.S. Copyright Law?

1. Copyrightability

A question may ask you to determine whether a work is copyrightable under the 1976 Copyright Act. To answer the question, you will have to decide whether the work is:

1. Original (i.e. independently created and having a minimal degree of creativity - see Feist case)

2. Fixed (know definition of fixation under §101 - see below at Fixation)

3. Copyrightable subject matter (see §102)

In particular, you should know the law on the following issues:

-whether facts are copyrightable

-whether expression is copyrightable

-whether a greeting card is copyrightable

-whether a work of history is copyrightable

-whether a news article is copyrightable

-whether a product label, including words and short phrases, is copyrightable

- whether a photograph is copyrightable

- whether a directory is copyrightable

Important cases to review: Feist, Bleistein, Burrow-Giles, Bell v. Catalda

Important statutory provision: 17 U.S.C. §102

2. Fixation

You may be asked whether a particular work is fixed. You should be familiar with the definition of fixation in § 101. In particular, you should be prepared to deal with the following issues:

-whether a work stored in computer memory is fixed

-whether a live broadcast is fixed

-whether a video game is fixed

-whether an oral conversation is fixed

-whether a live performance is fixed

You should also be familiar with the rights granted to performers under the antibootlegging provisions adjacent to the Copyright Act at 17 U.S.C. §1101. In particular, you should know what rights the antibootlegging provisions grant, to whom these rights are granted, and the scope of these rights (i.e. do they apply to performances fixed prior to enactment of the antibootlegging

provisions?)

Important cases to review: MAI v. Peak, Williams

Important statutory provisions: 17 U.S.C. § 101, 102, 1101

U.S.

3. Idea/Expression Dichotomy

You should be familiar with the fundamental copyright principle known as the idea/expression dichotomy codified in §102(b). You may be asked to apply this principle and determine whether it bars a work from copyright protection. You should also be familiar with the merger doctrine.

Important cases to review: Baker v. Selden, Feist

Important statutory provision: 17 U.S.C. § 102(b)

4. Facts and Compilations

You may be asked whether a compilation of facts is copyrightable. You should be familiar with the definition of a compilation at § 101 as well as the scope of copyright protection for compilations described in § 103. In particular you should be prepared to

deal with the following issues:

-whether a white pages telephone directory is copyrightable

-whether a yellow pages telephone directory is copyrightable

-whether a historical narrative is copyrightable

-whether a news story is copyrightable

-whether a greeting card is copyrightable

-whether a compilation of reported judicial opinions is copyrightable

-whether a compilation of valuations is copyrightable

-whether a map is copyrightable

-whether a database is copyrightable

Important cases to review: Feist, Hoehling v. Universal Studios, American Dental Association, Mason

Important statutory provisions: 17 U.S.C. §§ 101 ("compilation"), 103

5. Derivative Works

You may be asked whether a derivative work is copyrightable. To deal with this issue, you must be familiar with the definition of a derivative work in § 101 and the scope of protection for derivative works as set out in § 103. In particular, you should focus on what level of originality is required for a derivative work to be protectable. You should be prepared to deal with the

following issues:

-whether a 3D reproduction of a photograph, drawing, or print is copyrightable

-whether a translation is copyrightable

-whether a work based on a public domain work is copyrightable

-whether a work based on a copyrighted work is copyrightable

-whether a photocopy is copyrightable

-whether a work based on a prior work but in a different media is copyrightable

Important cases to review: Bell v. Catalda, Batlin v. Snyder, ERG, Pickett v. Prince

Important statutory provisions: 17 U.S.C. §§ 101 ("derivative work"), 103

6. Pictorial, Graphic and Sculptural Works

You may be asked to determine whether a work of applied art is copyrightable. You should be familiar with the definition of "pictorial, graphic and sculptural works" and with the definition for a "useful article" in § 101. In particular, you should be familiar with the concept of "conceptual separability" and with the different tests courts have used to determine "conceptual

separability". You should also be familiar with the scope of protection for pictorial, graphic and sculptural works in 17 U.S.C. § 113. You should be prepared to deal with the following issues:

-whether a costume is copyrightable

-whether a mask is copyrightable

-whether a human mannequin is copyrightable

-whether an ornamental belt buckle is copyrightable

-whether a lamp with a decorative base is copyrightable

-whether a bike rack based on a sculpture is copyrightable

Important cases to review: Mazer v. Stein, Kieselstein-Cord, Carol Barnhart, Brandir

Important statutory provisions: 17 U.S.C. §§ 101 ("pictorial, graphic, and sculptural works", "useful article"), 102(5), 113

7. Architectural Works

You may be asked to determine whether a particular building or architectural work is copyrightable. You should be familiar with the Architectural Works Copyright Protection Act of 1990 and with the new provisions it incorporated into the 1976 Copyright Act: the definition of "architectural work" in § 101 and the limitations of protection in § 120. In particular you should

be prepared to deal with the following issues:

-whether a particular building is protected by the amendments to the Copyright Act effected by the Architectural Works Copyright Protection Act

-to what extent were buildings and plans covered before the amendments to the Copyright Act in 1990

-whether a frieze, gargoyle or other decorative feature is copyrightable (or was prior to 1990)

-whether an architectural plan or drawing is copyrightable (or was prior to 1990)

-whether a building is copyrightable (or was prior to 1990)

-whether a highway bridge, cloverleaf, dam or pedestrian walkway is copyrightable (or was prior to 1990)

-whether a shopping mall is copyrightable (or was prior to 1990); whether a shop inside a shopping mall is copyrightable

Important case to review: Yankee Candle, Nelson-Salebas

Important statutory provisions: 17 U.S.C. §§ 101 ("architectural work"), 102(8), 120

8. Characters

You may be asked to determine whether a particular character is copyrightable independent of the literary, pictorial or audiovisual work in which that character appears. You should be familiar with the two different tests for copyrightability of literary characters in the Warner Brothers v. CBS case and the Nichols case. In particular, you may be asked to determine the following issues

-whether a stock character is copyrightable

-whether a literary character is copyrightable

-whether a cartoon character is copyrightable

-whether a character in a movie is copyrightable

Important Cases to Review: MGM v. Honda

9. Government Works

You may be asked to determine whether a government work is copyrightable. You should be familiar with § 105. In particular, you may be asked to determine the following issues:

-whether a work created by a U.S. government employee is copyrightable

-whether an independent contractor who creates a work under U.S. government contract or grant can copyright the work

-whether the U.S. government owns copyright in a work when copyright is obtained by transfer?

-whether a state or local government work is copyrightable

-whether a regulatory code drafted by a private organization is copyrightable

Important statutory provision: 17 U.S.C. § 105

10. Computer Software

You may be asked whether computer software is copyrightable. In particular you should be prepared to deal with the following issues:

-how can idea be separated from expression for software?

-whether literal code is copyrightable?

-whether operating system software is copyrightable?

-whether applications are copyrightable?

-whether program interfaces are copyrightable?

-whether structural aspects of a program is copyrightable?

-whether a computer menu command hierarchy is copyrightable?

Important Cases to Review: Computer Associates (know Whelan test as well), Lotus v. Borland

II. COPYRIGHT OWNERSHIP

BIG PICTURE ISSUE: Who owns copyright in a particular work?

1. Work Made for Hire

You may be asked to determine whether a particular work is a "work made for hire". You should be familiar with the definition of "work made for hire" in § 101 and also the provision for copyright ownership of works made for hire in § 201. You should also be familiar with the difference between works made for hire that are works prepared by an employee within the scope or his or her employment within § 101(1), and works made for hire that are specially ordered or commissioned works within § 101(2). In particular you should be prepared to deal with the following issues:

-whether the creator of the work is an "employee" within § 101(1)? (See CCNV v. Reid)

-where the employee creates the work at home, or outside of normal business hours, whether the work is a work for hire in that it is created within the "scope of employment" within § 101(1)

-whether the "teacher exception" applies

-whether a work is a specially ordered or commissioned work within § 101(2)

-whether a work for hire agreement is sufficient under the requirements of § 101?

Important Cases to Review: CCNV v. Reid (especially important here!), Aymes v. Bonelli, Carter v. Helmsley-Spear, Avtec

Important Statutory Provisions: 17 U.S.C. '' 101 ("work made for hire"), 201(b)

2. Joint Works

You may be asked to determine whether a particular work is a "joint work" and if so, what are the rights of the joint authors. You should be familiar with the definition of "joint work" in § 101. In particular, you may be asked to deal with the following issues:

-whether the intent requirement for a joint work are met?

-what are the rights and obligations of a joint author? (See § 201(a))

Important Case to Review: Aalmuhammed, Thomson v. Larson.

Important Statutory Provisions: 17 U.S.C. §§ 101 ("joint work"), 201(a)

3. Transfer of Ownership

You may be asked whether a copyright has been validly transferred. You should be familiar with the divisibility principle set out in § 201(d), requirements for transfer of copyright ownership in

§ 204, the recordation provisions in § 205, and the definition of "transfer of copyright ownership" in § 101. In particular, you may be asked to deal with the following issues:

-whether a transfer is an assignment, an exclusive license, or a nonexclusive license

-whether the writing requirements in § 204 apply to a particular transfer, and whether these requirements are met (See Effects v. Cohen)

-what is the scope of the license or assignment? (See Cohen v. Paramount Pictures, Boosey & Hawkes v. Disney)

-whether the transfer been validly recorded under § 205?

-if a transfer has been validly recorded, what is the effect of recordation? (See § 205(c))

- where there are conflicting transfers, which one gets priority? (See §§ 205(d) and (e))

- ownership of contributions to collective works (see § 201(c))

Important Cases to Review: Effects v. Cohen, Cohen v. Paramount Pictures, Boosey & Hawkes v. Disney, Tasini

Important Statutory Provisions: 17 U.S.C. §§ 101 ("transfer of copyright ownership"), 201(c)-(e), 204, 205

III. TERM OF COPYRIGHT

BIG PICTURE ISSUE: How long does copyright protection last for a particular work?

1. Duration and Renewal

You may be asked what the term of copyright protection is for a particular work. You should be familiar with the statutory provisions on duration in 17 U.S.C. §§ 302-305. You should also be familiar with the two 28 year term duration structure under the 1909 Act. In particular you may have to deal with the following issues:

-what is the copyright term for a work published with copyright notice prior to Jan. 1, 1978

-what is the copyright term for a work created but not published prior to Jan. 1, 1978

-what is the copyright term for a work created on or after Jan. 1, 1978

-what is the copyright term for a work in its first term of copyright as of Jan. 1, 1978

-what is the copyright term for a work in its second term of copyright as of Jan. 1, 1978

-what is the copyright term for a joint work created on or after Jan. 1, 1978

-what is the copyright term for a work made for hire created on or after Jan. 1, 1978

-what is the effect, if any, of the Sonny Bono Copyright Term Extension Act of 1998? Is it constitutional?

-does automatic renewal apply?

-what is necessary for automatic renewal of a copyright?

-what is necessary to renew a copyright if the automatic renewal provisions do not apply?

-who can claim the renewal term?

-under the 1909 Act, did assignment of the first term carry with it the renewal copyright?

-under the 1909 Act, could the author make a valid assignment of his potential renewal copyright before he secured it; how long would the author have to survive to make such a valid assignment of a renewal copyright?

-under the 1976 Act, how long does the author of a work first published between 1964 and 1977 have to survive to make a valid assignment of a renewal copyright?

-if the assignment of the renewal term is not valid, who gets copyright in the renewal term?

-if there has been no assignment of the renewal term, who owns copyright in the renewal term?

-who owns copyright in the renewal term for works for hire?

Important Cases: Eldred v. Ashcroft (formerly known as Eldred v. Reno)

Important Statutory Provisions: 17 U.S.C. §§ 302-305

2. Renewals and Derivative Works

You may be asked whether, where the copyright owner conveys during the initial term of copyright the exclusive right to prepare a derivative work, the owner of the derivative work can continue to distribute or publish the derivative work during the renewal term of copyright for the underlying work without the consent of the copyright owner of the underlying work. You

should be familiar with the holding of the Supreme Court in Stewart v. Abend and with limitations to its effect under § 304(a)(4)(A). You may also have to deal with the following issues (all assuming that the copyright owner has conveyed the exclusive right to prepare a derivative work during the initial copyright term):

-whether the copyright owner of the original work can exercise any of the exclusive rights of a copyright owner in § 106 for the derivative work during the renewal term of copyright in the underlying work

-whether the copyright owner can grant to a third party the right to prepare, during the renewal term of copyright, an altogether new derivative work based on the copyrighted underlying work

-whether the owner of the derivative work can prepare, during the renewal term, an entirely new derivative work based on the underlying work

Important Case: Stewart v. Abend

Important Statutory Provision: 17 U.S.C. § 304(a)(4)(A)

3. Termination of Transfers

You may be asked whether a copyright transfer may be terminated. You should be familiar with the two situations where copyright transfers may be terminated: grants made after Jan. 1, 1978 (17 U.S.C. § 203) and transfers of renewal interests made before Jan. 1, 1978 (17 U.S.C. §304(c)). For each situation, you may have to deal with the following issues:

-who can terminate the grant

-who must consent to terminate the grant

-how can a grant be terminated

-when must notice of termination be served

-what other requirements are there for a notice of termination

-what is the effective date of termination

-what is the effect of termination (in particular, what is the effect of termination on derivative works prepared earlier under the terminated grant)

-will the grant be terminated automatically if the right of termination is not exercised

IV. FORMALITIES

Big Picture Issue: What formalities must be complied with before a work can obtain copyright protection?

1. Publication

You should be familiar with the concept of publication both before and after the 1976 Act. You should also be familiar with the concept of "limited publication". You may have to deal with the following issues:

-the effect of publishing a work without copyright notice under the 1909 Act

-the effect of publishing a work with copyright notice under the 1909 Act

-whether publishing a work under the 1976 Act creates copyright in the work

-whether a work has been published under the 1976 Act

-whether a public performance is a publication under the 1909 Act

-whether, under the 1909 Act, a limited publication or general publication has taken place

-whether, under the 1909 Act, publication of a derivative work without notice publishes the underlying work so that the underlying work falls into the public domain

- the importance of publication in relation to the duration of works for hire under the 1976 Act (See § 302)

Important Case to Review: Estate of Martin Luther King v. CBS

Important Statutory Provisions: 17 U.S.C §§101 ("publication"), 302, 303(b)

2. Notice

You should be familiar with the concept and effect of copyright notice both before and after the 1976 Act and before and after the Berne Convention Implementation amendments for works first published on or after 3/1/89. In particular, you may have to deal with the following issues:

- the effect of publishing a work without copyright notice under the 1909 Act

-the effect of publishing a work with a defective copyright notice under the 1909 Act [please note that you are not required to know the exact form of notice required under the 1909 Act, just its general parameters (i.e. the word copyright (or abbreviation or the familiar copyright symbol), the name of the copyright proprietor, and the year of publication). Nor do you have to know the specific effect of particular defects in a 1909 Act Copyright notice, just that inaccuracies in the notice could be fatal \to the copyright and that some courts were very strict about these requirements]

-[only very generally] what notice requirements existed for copies/phonorecords published between Jan. 1, 1978 and the last day of February, 1989 and what was the effect of omitting the requisite copyright notice?

--what notice requirements now exist for copies/phonorecords published on or after March 1, 1989

--what is the effect of omitting copyright notice from copies or phonorecords publicly distributed on or after March 1, 1989

Important Statutory Provisions: 17 U.S.C. §§ 401, 402 and 405

3. Deposit and Registration

You should be familiar with the general outlines of the mandatory deposit requirement for the Library of Congress under § 407 and the registration procedure/effect under § 408 and 409. You should also be familiar with § 411 providing that registration is a prerequisite to infringement and § 412 providing that registration is a prerequisite to certain remedies for infringement. In

particular you may have to deal with the following issues

-what, generally, does the copyright owner have to do to comply with § 407. [You only have to know the general deposit requirement and do not have to know the regulations in the CFR that, e.g., exempt certain categories of works or reduce the required number of copies from 2 to 1]?

-what happens if the copyright owner fails to comply with the deposit requirements in § 407 [see § 407(d)] or under the 1909 Act?

-who may register copyright in a work?

-whether the registration requirement applies to unpublished works as well as published ones?

-when can you register copyright in a work?

-how do you register copyright in a work?

- whether, the 1909 Act required the registration of copyright in a work to be able to validly sue for infringement or for any other reason?

-whether, under the 1976 Act you have to register copyright in a work to be able to validly sue for infringement?

-what benefits attach to early copyright registration under the 1976 Act?

-whether a copyright owner or owner of any of the exclusive rights in a copyright may obtain statutory damages or attorneys fees for infringements of copyright prior to registration of copyright in the work?

-whether registration is required to sue for an infringement of the moral rights provisions in §106A of the 1976 Act?

Important Statutory Provisions: 17 U.S.C. §§ 407, 408, 409, 411, 412