Intellectual Property and the National Information Infrastructure

September 1995

[I. Law - A. Copyright]


30. See U.S. Const., art. I, § 8, cl. 8.

31. On August 18, 1787, James Madison submitted to the delegates to the Constitutional Convention a list of powers to be granted Congress, which included the power "To secure to literary authors their copyrights for a limited time" and "To encourage, by premiums and provisions, the advancement of useful knowledge and discoveries." At the same time, Charles Pinckney submitted a list which included the power "To grant patents for useful inventions" and "To secure to authors exclusive rights for a certain time." On September 5, the clause "To promote the progress of science and the useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries" was agreed to unanimously. On September 17, 1787, the draft was signed by the delegates to the convention with no substantive changes. See Debates on the Adoption of the Federal Constitution as reported by James Madison. The clause was finally ratified in its present form in 1788. George Washington signed the first copyright law on May 31, 1790.

32. The Federalist No. 43 (James Madison).

33. Goldstein v. California, 412 U.S. 546, 555 (1973).

34. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 558 (1985) (hereinafter Harper & Row). See also id. at 546 ("'monopoly created by copyright thus rewards the individual author in order to benefit the public'").

35. Fogerty v. Fantasy, Inc., 114 S. Ct. 1023, 1029 (1994) (quoting Sony, supra note 22, at 429).

36. Feist Publication, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 349-50 (1991) (citations omitted) (hereinafter Feist).

37. Mazer v. Stein, 347 U.S. 201, 219 (1954).

38. Sony, supra note 22, at 429.

39. Harper & Row, supra note 34, at 545-46 (citing Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975)).

40. United States v. Paramount Pictures, Inc., 334 U.S. 131, 158 (1948).

41. Washingtonian Publishing Co. v. Pearson, 306 U.S. 30, 36 (1939).

42. Id.

43. Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).

44. H.R. Rep. No. 2222, 60th Cong., 2d Sess., 7 (1909) (report accompanying the Copyright Act of 1909, the first comprehensive revision of the copyright laws).

45. See discussion of term of protection infra pp. 59-60 and fair use and other limitations on an author's exclusive rights infra pp. 73-100.

46. See discussion of unprotected subject matter infra pp. 32-35.

47. House Report at 56, reprinted in 1976 U.S.C.C.A.N. 5669.

48. Fogerty, supra note 35, at 1030.

49. 17 U.S.C. § 102(a) (1988 & Supp. V 1993). The Copyright Act specifically excludes from protectible subject matter any "idea, procedure, process, system, method of operation, concept, principle or discovery" even if it meets the criteria for protection. See 17 U.S.C. § 102(b) (1988). The Copyright Act also preempts any grant of equivalent rights for works of authorship within the specified subject matter. Section 301 provides:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

17 U.S.C. § 301(a) (1988).

50. Many courts consider creativity to be an element of originality. For purposes of discussion, we examine originality and creativity as separate requirements.

51. See 17 U.S.C. § 102(a) (1988 & Supp. V 1993). The statutory qualification is derived from Congress' limited Constitutional authority to grant copyright protection to "authors" for their "writings." See U.S. Const., art. I, § 8, cl. 8.

52. Feist, supra note 36, at 345 ("vast majority of works make the grade quite easily, as they possess some creative spark").

53. Copyright protection literally begins when, for instance, the ink dries on the paper. There are no prerequisites, such as registration or affixation of a copyright notice, for obtaining or enjoying copyright protection.

54. 17 U.S.C. § 101 (1988) (definition of "fixed").

55. See 17 U.S.C. § 102(a) (1988 & Supp. V 1993).

56. 17 U.S.C. § 101 (1988) (definition of "copies").

57. 17 U.S.C. § 101 (1988) (definition of "phonorecords").

58. House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67. This Report generally uses the term "copy" or "copies" to refer to copies and phonorecords except in those instances where the distinction is relevant.

59. House Report at 52, reprinted in 1976 U.S.C.C.A.N. 5665-66.

60. See id.

61. See, e.g., Stern Electronics, Inc. v. Kaufman, 669 F.2d 852, 855 (2d Cir. 1982) (putting work in "memory devices" of a computer "satisf[ies] the statutory requirement of a 'copy' in which the work is 'fixed'").

62. See, e.g., Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989).

63. Unfixed broadcasts are not within the subject matter of Federal copyright law. Therefore, protection of such works is not preempted and may be provided by state statutory or common law. See 17 U.S.C. § 301 (1988 & Supp. V 1993).

64. See 17 U.S.C. § 101 (1988) (definition of "fixed"); see also Baltimore Orioles, Inc. v. Major League Baseball Players Assoc., 805 F.2d 663, 668 (7th Cir. 1986) (telecasts that are videotaped at the same time that they are broadcast are fixed in tangible form), cert. denied, 480 U.S. 941 (1987); National Football League v. McBee & Bruno's, Inc., 792 F.2d 726, 731-32 (8th Cir. 1986) ("the legislative history [of the Copyright Act] demonstrates a clear intent on the part of Congress to resolve, through the definition of 'fixation' . . ., the status of live broadcasts, using -- coincidentally but not insignificantly -- the example of a live football game"). It is understood that the "fixation" must be made or authorized by the author.

65. 17 U.S.C. § 101 (1988) (definition of "fixed").

66. House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

67. See Advanced Computer Services of Michigan Inc. v. MAI Systems Corp., 845 F. Supp. 356, 363 (E.D. Va. 1994) (conclusion that program stored only in RAM is sufficiently fixed is confirmed, not refuted, by argument that it "disappears from RAM the instant the computer is turned off"; if power remains on (and the work remains in RAM) for only seconds or fractions of a second, "the resulting RAM representation of the program arguably would be too ephemeral to be considered 'fixed'"); Triad Systems Corp. v. Southeastern Express Co., 1994 U.S. Dist. LEXIS 5390, at *15-19 (N.D. Cal. March 18, 1994) ("[C]opyright law is not so much concerned with the temporal 'duration' of a copy as it is with what that copy does, and what it is capable of doing, while it exists. 'Transitory duration' is a relative term that must be interpreted and applied in context.").

68. See Wheaton v. Peters, 33 U.S. (1 Peters) 591, 662-63 (1834).

69. See 17 U.S.C. § 104 (1988 & Supp. V 1993). Prior to 1978, certain unpublished works, particularly dramatic works and musical compositions, could obtain Federal copyright protection through registration with the Copyright Office. Since 1978, all otherwise eligible unpublished works are protected under Federal law. See 17 U.S.C. § 104(a) (1988 & Supp. V 1993).

70. House Report at 129, reprinted in 1976 U.S.C.C.A.N. 5745.

71. 17 U.S.C. § 407 (1988). "[T]he owner of copyright or of the exclusive right of publication in a work published in the United States shall deposit, within three months after the date of publication -- (1) two complete copies of the best edition; or (2) if the work is a sound recording, two complete phonorecords of the best edition, together with any printed or other visually perceptible material published with such phonorecords." 17 U.S.C. § 407(a) (1988). The deposit requirements are not conditions of copyright protection, but failure to deposit copies of a published work may subject the copyright owner to significant fines. See 17 U.S.C. § 407(a), (d) (1988).

72. See 17 U.S.C. § 408(b) (1988) ("the material deposited for registration shall include -- (1) in the case of an unpublished work, one complete copy or phonorecord; (2) in the case of a published work, two complete copies or phonorecords of the best edition; (3) in the case of a work first published outside the United States, one complete copy or phonorecord as so published; (4) in the case of a contribution to a collective work, one complete copy or phonorecord of the best edition of the collective work").

73. The first factor of the fair use analysis -- the nature of the copyrighted work -- generally weighs against a finding of fair use if the work is unpublished. See Harper & Row, supra note 34. In 1992, Congress was prompted to amend Section 107 by the near determinative weight courts were giving to the unpublished nature of a work. See Act of October 24, 1992, Pub. L. 102-492, 1992 U.S.C.C.A.N. (106 Stat.) 3145 (adding to the fair use provisions, "The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.").

74. 17 U.S.C. § 104(a) (1988 & Supp. V 1993); House Report at 58, reprinted in 1976 U.S.C.C.A.N. 5671 (Section 104(a) "imposes no qualification of nationality and domicile with respect to unpublished works"); see also 17 U.S.C. § 104(b) (1988 & Supp. V 1993) (national origin requirements for published works).

75. 17 U.S.C. § 405 (1988 & Supp. V 1993). For such works, failure to include a copyright notice risks total loss of copyright protection. See id. Works published after March 1, 1989 (the effective date of the Berne Implementation Act) may (but are not required to) bear a copyright notice identifying the year of publication and the name of the copyright owner. See 17 U.S.C. § 401 (1988 & Supp. V 1993).

76. See generally 17 U.S.C. §§ 107 - 120 (1988 & Supp. V 1993). See, e.g., 17 U.S.C. § 118 (1988 & Supp. V 1993) (compulsory license is available for the use of certain published works in connection with noncommercial broadcasting).

77. 17 U.S.C. § 101 (1988) (definition of "publication").

78. See House Report at 138, reprinted in 1976 U.S.C.C.A.N. 5754. See also discussion of transmissions and the "distribution" of copies infra pp. 67-69, 217-20.

79. See, e.g., Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir.), supplemented, reh'g denied, 818 F.2d 252, cert. denied, 484 U.S. 890 (1987) (copyrighted letters did not lose unpublished status by placement in library); WPOW, Inc. v. MRLJ Enterprises, 584 F. Supp. 132 (D.D.C. 1984) (filing of work with federal agency did not constitute publication).

80. See 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 4.04 (1994) (hereinafter Nimmer on Copyright). In a couple of aspects, the concept of publication was broadened to include the authorization of offers to distribute copies in a commercial setting and the distribution to certain middlemen, such as retailers, motion picture exhibitors and television stations. See Paramount Pictures Corp. v. Rubinowitz, 217 U.S.P.Q. 48, 50 (E.D.N.Y. 1981) (discussing evolution of definition of publication); National Broadcasting Co., Inc. v. Sonneborn, 630 F. Supp. 524, 532-33 (D. Conn. 1985).

81. See 1 Nimmer on Copyright § 4.13[B]; Kunycia v. Melville Realty Co. Inc., 755 F. Supp. 566, 574 (S.D.N.Y. 1990).

82. See White v. Kimmell, 193 F.2d 744, 746-47 (9th Cir. 1952). Before the notice requirement was eliminated, the Copyright Act generally provided for the invalidation of the copyright in a work if copies of the work were distributed to the public, under the authority of the copyright owner, without a copyright notice. In virtually all instances where limited publication was applied, the distribution was noncommercial in nature.

83. See Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1451-54 (9th Cir. 1991) (distribution of personalized Oscar statuettes to select group of distinguished artists constituted limited publication); Lish v. Harper's Magazine Found., 807 F. Supp. 1090, 1102 (S.D.N.Y. 1992) (letter distributed to members of class remained unpublished).

84. See 37 C.F.R. § 202.1(a) (1994); see also, e.g., Takeall v. PepsiCo Inc., 29 U.S.P.Q.2d 1913, 1918 (4th Cir. 1993) (unpublished) (holding phrase "You Got the Right One, Uh-Huh" is not copyrightable and, thus, was not infringed by commercial using phrase "You Got the Right One Baby, Uh-Huh"). While short phrases may not be copyrightable standing alone, they may be protected as part of a larger, copyrighted work. See, e.g., Dawn Assocs. v. Links, 203 U.S.P.Q. 831, 835 (N.D. Ill. 1978) (holding phrase "When there is no room in hell . . . the dead will walk the earth" to be an integral part of a copyrighted advertisement, and defendant's unauthorized use of it demonstrated likelihood of success on the merits of infringement suit); Grand Upright Music Ltd. v. Warner Bros. Records, Inc., 780 F. Supp. 182, 183-85 (S.D.N.Y. 1991) (finding lyric "alone again" to be protected as part of a copyrighted work and infringed by defendant rap artist's "sampling"). Short phrases may also be eligible for trademark protection if used to identify goods or services.

85. In Mazer v. Stein, the Supreme Court held that works of art which are incorporated into the design of useful articles, but which can stand by themselves as art works separate from the useful articles, are copyrightable. See 347 U.S. 201, 214-17 (1954). See also 17 U.S.C. § 101 (defining "useful article" as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information); 17 U.S.C. § 101 (in the definition of "pictorial, graphic, and sculptural works" noting that "the design of a useful article . . . shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article"). The House Report indicates that the required separability may be physical or conceptual. See House Report at 55, reprinted in 1976 U.S.C.C.A.N. 5668; see also Kieselstein-Cord v. Accessories By Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980).

86. 17 U.S.C. § 102(b) (1988); see Feist, supra note 36, at 359 ("facts contained in existing works may be freely copied"); Harper & Row, supra note 34, at 547 ("no author may copyright facts or ideas").

87. The ideas are not protected; the expression is. Baker v. Seldon, 101 U.S. 99, 103 (1879); Beal v. Paramount Pictures Corp., 20 F.3d 454, 458-59 (11th Cir.), cert. denied, 115 S. Ct. 675 (1994); see also Harper & Row, supra note 34, at 547-48 ("copyright is limited to those aspects of the work -- termed 'expression' -- that display the stamp of the author's originality"). The line between idea and expression is not easy to draw. The distinction is not that one is fixed and the other is not -- they are both fixed in the copyrighted work of authorship. At some point, the idea becomes detailed enough to constitute expression. Judge Learned Hand explained:

Upon any work . . . a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the [work] is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his "ideas," to which, apart from their expression, his property is never extended.

Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930).

88. Harper & Row, supra note 34, at 548.

89. Feist, supra note 36, at 349-50 (citing Harper & Row, supra note 34, at 556-57).

90. Feist, supra note 36, at 349-50.

91. 17 U.S.C. § 105 (1988). There are limited exceptions to this noncopyrightability provision. For instance, the Secretary of Commerce is authorized to secure copyright on behalf of the United States "in all or any part of any standard reference data which he prepares or makes available" under the Standard Reference Data Program. See 15 U.S.C. § 290(e) (1988). Works of the U.S. Postal Service, such as designs on postage stamps, are also copyrightable by the Postal Service. See House Report at 60, reprinted in 1976 U.S.C.C.A.N. 5674 ("the Postal Service could . . . use the copyright law to prevent the reproduction of postage stamp designs for private or commercial non-postal services"). Copyright interests transferred to the U.S. Government by assignment, bequest or otherwise may be held and enforced by it. See 17 U.S.C. § 105 (1988).

92. A work of the U.S. Government is a work "prepared by an officer or employee of the United States Government as part of that person's official duties." 17 U.S.C. § 101 (definition of "work of the United States Government"). Although the wording of this definition is not identical to that of a "work made for hire," the concepts "are intended to be construed in the same way." House Report at 58, reprinted in 1976 U.S.C.C.A.N. 5672. See discussion of works made for hire infra notes 134-36 and accompanying text.

93. See House Report at 59, reprinted in 1976 U.S.C.C.A.N. 5672.

94. 17 U.S.C. § 102(a) (1988 & Supp. V 1993).

95. 17 U.S.C. § 101 (1988) (definition of "literary works").

96. Following the recommendation of CONTU, Congress amended the Copyright Act in 1980 to recognize that computer programs are protected works. See Act of December 12, 1980, Pub. L. 96-517, 1980 U.S.C.C.A.N. (94 Stat.) 3015, 3028. "Computer programs" are defined as a "set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result." See 17 U.S.C. § 101 (1988 & Supp. V 1993).

97. See House Report at 54, reprinted in 1976 U.S.C.C.A.N. 5667.

98. Congress did not define the term "musical work" in the statute based on the assumption that the term had a "fairly settled" meaning. See House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

99. A phonorecord generally embodies two works -- a musical work (or, in the case of spoken word recordings, a literary work) and a sound recording. Musical works available through services on the NII may also be the subject of Musical Instrument Digital Interface ("MIDI") recordings. A MIDI is a data stream between a musical unit in a computer and a music-producing instrument. The data stream instructs the instrument, such as a synthesizer, on what notes to play.

100. See H. Abrams, The Law of Copyright § 204[C][3][b][iv] (1993). The term "dramatic works" is not defined in the Act. See House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

101. Congress also declined to define the terms "pantomimes" and "choreographic works," again relying on "fairly settled meanings." See House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666-67.

102. 17 U.S.C. § 101 (1988) (definition of "pictorial, graphic, and sculptural works").

103. Mazer v. Stein, 347 U.S. 201, 214-17 (1954); see supra note 85.

104. 17 U.S.C. § 101 (1988) (definition of "audiovisual works").

105. 17 U.S.C. § 101 (1988) (definition of "motion pictures").

106. See House Report at 56, reprinted in 1976 U.S.C.C.A.N. 5669.

107. See 17 U.S.C. § 101 (1988) (definition of "sound recordings").

108. The sounds accompanying an audiovisual work are specifically excluded from the definition of sound recordings. See id.

109. 17 U.S.C. § 101 (Supp. V 1993) (definition of "architectural work"). The category of architectural works was added in 1990 by the Architectural Works Copyright Protection Act, Public Law 101-650, 1990 U.S.C.C.A.N. (104 Stat.) 5089, 5133.

110. Id.

111. 17 U.S.C. § 101 (1988) (definition of "compilation"). A "collective work," which is one kind of "compilation," is "a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole." 17 U.S.C. § 101 (1988) (definition of "collective work").

112. 17 U.S.C. § 101 (1988) (definition of "derivative work").

113. See id.

114. See 17 U.S.C. § 103(a) (1988).

115. 17 U.S.C. § 103(b) (1988).

116. Id.

117. See Feist, supra note 36, at 350-51 (alphabetical "arrangement" of comprehensive list of telephone subscribers not sufficiently "original" and therefore noncopyrightable); see also supra pp. 32-34 (discussion of the noncopyrightability of facts).

118. See Feist, supra note 36, at 354 ("to accord copyright protection on this basis alone distorts basic copyright principles in that it creates a monopoly in public domain materials without the necessary justification of protecting and encouraging the creation of 'writings' by 'authors'").

119. The embodiment of two or more different types of works in one medium is not a new concept. For instance, a book may contain both a literary work and pictorial works. A compact disc may contain a musical work and a sound recording.

120. A true "multimedia" work would be one in which several material objects, such as a book, a videocassette and an audiocassette, are bundled into one product.

121. See discussion of compilations supra pp. 40-41.

122. While expressly protected under the Copyright Act, the category of "compilations" is not a particularly useful subject matter category. Works in any of the eight enumerated categories of protectible subject matter outlined above may take the form of a compilation, and a protectible compilation must fit into one or more of the subject matter categories. "A compilation or derivative work is copyrightable if it represents an 'original work of authorship' and falls within one or more of the categories listed in section 102." House Report at 57, reprinted in 1976 U.S.C.C.A.N. 5670 (emphasis added).

123. The list "sets out the general area of copyrightable subject matter, but with sufficient flexibility to free the courts from rigid or outmoded concepts of the scope of particular categories." House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666.

124. House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666. Indeed, Congress amended the Copyright Act in 1990 to add "architectural works" as a category of protectible works. See supra note 109.

125. It should be noted that the Copyright Office classifies works into four broad categories for purposes of registration: nondramatic literary works, works of performing arts, works of visual arts, and sound recordings. See 37 C.F.R. § 202.3(b)(i)-(iv) (1994). The Copyright Office notes that in cases "where a work contains elements of authorship in which copyright is claimed which fall into two or more classes, the application should be submitted in the class most appropriate to the type of authorship that predominates in the work as a whole." See 37 C.F.R. § 202.3(b)(2) (1994). However, the Copyright Act makes clear that the Copyright Office classification of works for purposes of registration "has no significance with respect to the subject matter of copyright or the exclusive rights provided." See 17 U.S.C. § 408(c)(1) (1988); see also House Report at 153, reprinted in 1976 U.S.C.C.A.N. 5769 ("[i]t is important that the statutory provisions setting forth the subject matter of copyright be kept entirely separate from any classification of copyrightable works for practical administrative purposes").

126. See 17 U.S.C. § 106(4), (5) (1988 & Supp. V 1993). The public performance right is limited to literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works. The public display right is limited to literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work. Id.

127. See, e.g., 17 U.S.C. § 108(h) (1988) (limitation not applicable to musical works, pictorial, graphic or sculptural works, or motion pictures or other audiovisual works other than audiovisual works dealing with news); 17 U.S.C. § 109(b) (Supp. V 1993) (certain limitations not applicable to sound recordings and musical works embodied in sound recordings or to computer programs); 17 U.S.C. § 110(4) (1988) (limitation applicable only to nondramatic literary or musical works); 17 U.S.C § 110(8) (1988) (limitation applicable only to nondramatic literary works); 17 U.S.C. § 110(9) (1988) (limitation applicable only to dramatic literary works); 17 U.S.C. § 112(a) (1988) (limitation not applicable to motion pictures or other audiovisual works); 17 U.S.C. § 113 (1988 & Supp. V 1993) (limitation applicable only to pictorial, graphic, or sculptural works); 17 U.S.C. § 114 (1988) (limitation applicable only to sound recordings); 17 U.S.C. § 115 (1988) (limitation applicable only to nondramatic musical works); and 17 U.S.C. § 120 (Supp. V 1993) (limitation applicable only to architectural works).

128. See 17 U.S.C. § 101 (1988) (definition of "literary works") (emphasis added).

129. The definition of "sound recordings" explicitly excludes from the category of sound recordings musical, spoken or other sounds "accompanying a motion picture or other audiovisual work . . . ." See 17 U.S.C. § 101 (1988) (definition of "sound recordings"). The definition of "audiovisual works" also expressly includes any "accompanying sounds." See 17 U.S.C. § 101 (1988) (definition of "audiovisual works").

130. Audiovisual works are "works that consist of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers, or electronic equipment . . . ." 17 U.S.C. § 101 (1988) (definition of "audiovisual works").

131. Categories are "overlapping in the sense that a work falling within one class may encompass works coming within some or all of the other categories." House Report at 53, reprinted in 1976 U.S.C.C.A.N. 5666.

132. 17 U.S.C. § 201(a) (1988).

133. Id. A "joint work" is "a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." 17 U.S.C. § 101 (1988) (definition of "joint work").

134. See 17 U.S.C. § 201(b) (1988). This legal conclusion may only be altered by the parties in a written instrument signed by them expressly agreeing otherwise. Id.

135. The Copyright Act does not define "employee." In 1989, the Supreme Court held that an employment relationship determination for copyright purposes should be made by reference to the "general common law of agency." See Community for Creative Non-Violence v. Reid, 490 U.S. 730, 740-41 (1989). The central question in an agency law inquiry is whether the hiring party has the "right to control the manner and means by which the product is accomplished." Id. at 751. The factors to be considered include the skill required, the source of the instrumentalities and tools used in creating the work, where the work was created, the duration of the relationship between the parties, whether the hiring party has the right to assign additional projects to the hired party, the method of payment, the extent of the hired party's discretion over when and how long to work, the hired party's role in hiring and paying assistants, whether the hiring party is in business and whether the work is part of the regular business of the hiring party, the provision of employee benefits, and the tax treatment of the hired party. Id. at 751-52. The Court did not specify any factors that should be weighed more heavily than others, but made clear that an "employee" under the Copyright Act is not limited to a formal, salaried employee.

136. To qualify as a work made for hire under the second prong, the work must be specially ordered or commissioned for use as (1) a contribution to a collective work, (2) part of an audiovisual work, (3) a translation, (4) a supplementary work, (5) a compilation, (6) an instructional text, (7) a test, (8) answer material for a test or (9) an atlas. 17 U.S.C. § 101 (1988) (definition of "work made for hire").

137. See 17 U.S.C. § 202 (1988).

138. Id.

139. See 17 U.S.C. § 201(d)(1) (1988) ("ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession").

140. 17 U.S.C. § 204(a) (1988). An exclusive license is considered a transfer of copyright and, therefore, must be in writing. Although an exclusive license may be limited in time, place or scope, it nevertheless extends the benefits of copyright ownership with respect to the rights granted to the licensee for the duration of the license. The rights of a copyright owner may also be licensed on a nonexclusive basis to one or more licensees. The Copyright Act does not require nonexclusive licenses to be in writing.

141. 17 U.S.C. § 101 (1988) (definition of "transfer of copyright ownership"). With the exception of transfers by operation of law, all transfers of copyright ownership must be in writing. 17 U.S.C. § 204(a) (1988) ("transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent").

142. See 17 U.S.C. § 204(a) (1988).

143. See discussion of the exclusive rights of a copyright owner infra pp. 63-72.

144. See 17 U.S.C. § 201(d)(2) (1988); 17 U.S.C. § 101 (1988) (definition of "copyright owner").

145. See 17 U.S.C. § 203(a) (1988); see also 17 U.S.C. § 304(c) (1988 & Supp. V 1993).

146. 17 U.S.C. § 203(a)(5) (1988) ("[t]ermination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make any future grant").

147. See 17 U.S.C. § 203(a) (1988).

148. See 17 U.S.C. § 501(b) (1988) ("legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it"). In certain circumstances, television broadcast stations and others are treated as legal or beneficial owners and may bring actions for infringement by cable systems and satellite carriers. See 17 U.S.C. § 501(c), (d), (e) (1988).

149. However, like exclusive licenses, nonexclusive licenses may be terminated 35 years after the effective date of the license. See 17 U.S.C. §§ 203(a) (1988), 304(c) (1988 & Supp. V 1993).

150. For example, a user could decide to participate in a licensing program covering all copies made, for a nominal fee per copy, rather than to indulge in the record-keeping necessary to determine which copies are subject to a licensing fee and which are fair use. Copyright owners may not be allowed, however, to seek to increase the term of protection without implicating the doctrine of copyright misuse. Cf. Saturday Evening Post Co. v. Rumbleseat Press, Inc., 816 F.2d 1191, 1200 (7th Cir. 1987) (claims of misuse must be judged by antitrust standards); Lasercomb America, Inc. v. Reynolds, 911 F.2d 970, 979 (4th Cir. 1990) (contract purporting to license copyright for 99 years rendered copyright owner guilty of copyright misuse). The doctrine of copyright misuse might be implicated in other situations where the scope of protection is significantly expanded.

151. House Report at 79, reprinted in 1976 U.S.C.C.A.N. 5693.

152. See, e.g., Harper Bros. v. Klaw, 232 F. 609 (S.D.N.Y. 1916) (license to dramatize "Ben Hur" in a play did not include right to produce a movie, but licensor enjoined from producing movie because licensee's right to produce a play would be harmed by licensor's production of a movie); L.C. Page & Co. v. Fox Film Corp., 83 F.2d 196 (2d Cir. 1936) (grant of exclusive "moving picture" rights embraced technical improvements in movies that might be developed during the term of the license; thus, license held to cover "talkies"); Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150 (2d Cir.), cert. denied, 393 U.S. 826 (1968) (1930 license of film rights in a play, when television was a known technology but its full impact not yet realized, included television rights; as experienced businessman, licensor had reason to know of new technology's potential and had burden of negotiating exception).

153. See, e.g., 17 U.S.C. § 111 (1988 & Supp. V 1993). The cable compulsory license was enacted to reduce the need for negotiations among thousands of program copyright owners and hundreds of cable systems for the right to retransmit the copyrighted programs that are included in the broadcast signals retransmitted by cable systems.

154. See discussion of on-line transactions infra pp. 53-59.

155. See discussion infra pp. 191-92, 235-36.

156. Library subscription costs for print journals have for many years been two or more times those for individual subscriptions. This additional cost has been assumed by some to permit use of the material by the library's patrons. Licenses would serve to convert this assumption to explicit terms that could be negotiated, avoiding misunderstandings and litigation.

157. See generally Information Infrastructure Task Force, Committee on Applications and Technology, Putting the Information Infrastructure to Work, 25-40 (May 1994).

158. See discussion infra pp. 192-94; see generally Uniform Commercial Code, Art. 4A (1990); K. Epper, Money Creators: Point of Sale Pioneer Setting Sail on the Internet, The American Banker 14 (Feb. 10, 1995).

159. B. Wright, The Law of Electronic Commerce 235 (1991 & Supp. 1994) (hereinafter Wright).

160. See J. Calamari & J. Perillo, The Law of Contracts 25 (3d ed. 1987) (hereinafter Calamari & Perillo).

161. In Corinthian Pharmaceutical v. Lederle Laboratories, the court found that the "automated, ministerial act" of a seller issuing an electronic order tracking number to a purchaser's on-line purchase order did not constitute assent or acceptance by the seller. See 724 F. Supp. 605, 610 (S.D. Ind. 1989); see also Wright, supra note 159, at 236 (1991); Electronic Messaging Task Force, The Commercial Use of Electronic Data Interchange -- A Report and Model Trading Partner Agreement, A.B.A. Sec. Bus. Law, reprinted from 45 Bus. Law 1647 (1990) (hereinafter A.B.A. Report or A.B.A. Model Agreement).

162. See Step-Saver Data Systems, Inc. v. Wyse Technology, 939 F.2d 91 (3d Cir. 1991).

163. See id. at 96 n.7.

164. See Standard Oil Co. v. Perkins, 347 F.2d 379, 385 n.5 (9th Cir. 1965).

165. Compare D. Johnson & K. Marks, Mapping Electronic Data Communications onto Existing Legal Metaphors: Should We Let Our Conscience (and Our Contracts) be Our Guide?, 38 Vill. L. Rev. 487, 488-89 (1993) with Note, Offers Users Can't Refuse: Shrink-Wrap License Agreements as Enforceable Adhesion Contracts, 10 Cardozo L. Rev. 2105, 2120 (1989).

166. See Restatement (Second) of Contracts § 211 (1981).

167. Compare Step-Saver, supra note 162, at 99 with Arizona Retail Systems v. Software Link, 831 F. Supp. 759 (D. Ariz. 1993).

168. See Step-Saver, supra note 162, at 99; see also J. Peys, Comment, Commercial Law -- The Enforceability of Computer "Box-Top" License Agreements Under the U.C.C., 7 Whittier L. Rev. 881, 885-92 (1985).

169. See Ill. Rev. Stat. ch. 29, para. 801-08 (1986); La. Rev. Stat. §§ 51:1961-66 (1987). The Louisiana statute was declared partially invalid in a controversial decision in Vault Corp. v. Quaid Software, Ltd. because the court found that it impinged on "rights" under the U.S. copyright laws, and was therefore preempted. See 847 F.2d 255, 270 (5th Cir. 1988).

170. See Restatement (Second) of Contracts § 131 (1981). Signed writings are also required for exclusive licenses and assignments under the Copyright Act. See 17 U.S.C. § 204 (1988).

171. See Wright, supra note 159, at 274 (1991).

172. See U.C.C. § 1-102(2)(b) (1990).

173. U.C.C. § 2-204 (1990).

174. Id. at § 2-206 (1990).

175. See U.C.C. § 2-207 (1990).

176. The U.C.C. contains a Statute of Frauds which raises the same questions as common law concerning whether a purely electronic contract can meet the writing and signature requirements. However, the U.C.C. Statute of Frauds includes exceptions to the requirements -- for specially manufactured goods not suitable for sale to others which the seller has begun to manufacture, and for goods that have been received and accepted. See U.C.C. § 2-201(2), (3) (1990).

177. See U.C.C. § 1-205(1), (2) (1990).

178. See U.C.C. §§ 2-105(2), 716(3) (1990). See D. Frisch, Symposium: The Revision of the Uniform Commercial Code, 35 Wm. & Mary L. Rev. 1691, 1729 (1994).

179. See U.C.C. § 1-102 (1990). But see Calamari & Perillo, supra note 160, at 16; Step Saver, supra note 162, at 94; Advent Systems Ltd. v. Unisys Corp., 925 F.2d 670 (3d Cir. 1991).

180. See supra notes 160-71 and accompanying text.

181. See R. Nimmer, Symposium: The Revision of Article 2 of the Uniform Commercial Code, 35 Wm. & Mary L. Rev. 1337, 1341-50 (1994).

182. See 17 U.S.C. § 301 (1988).

183. See 17 U.S.C. § 302(a) (1988). The terms of protection for works created before January 1, 1978 (the effective date of the 1976 revisions to the Copyright Act) are set forth in Sections 303 and 304 of the Act. See 17 U.S.C. §§ 303, 304 (1988 & Supp. V 1993). Bills introduced in the 104th Congress would extend by 20 years the term of protection for all works. See S. 483, 104th Cong., 1st Sess. (1995); H.R. 989, 104th Cong., 1st Sess. (1995). A directive adopted by the Council of Ministers of the European Union requires all EU member states to provide a term of protection for copyrighted works of life of the author plus 70 years. Although a number of member states have yet to enact legislation extending terms, the obligations of the directive were to go into effect on July 1, 1995. See Council Directive 7831/93 of 13 July 1993 on Harmonizing the Term of Protection of Copyright and Certain Related Rights.

184. 17 U.S.C. § 302(b) (1988).

185. 17 U.S.C. § 302(c) (1988). The term for anonymous or pseudonymous works differs if the identity of one or more of the authors is revealed before the end of the term of protection. See id.

186. The public domain is the legal status of works whose term of copyright protection has ended or which are not protected for other reasons, such as the noncopyrightability of the subject matter.

187. See Act of October 31, 1988, Pub. L. 100-568, 1988 U.S.C.C.A.N. (102 Stat.) 2853, 2857. Copyright notice is still required on copies and phonorecords of works publicly distributed prior to March 1, 1989, the effective date of the Act.

188. 17 U.S.C. § 401(a) (1988) (emphasis added). The copyright owner of a sound recording may also place a notice of copyright on publicly distributed phonorecords of the sound recording. 17 U.S.C. § 402(b) (1988).

189. See 17 U.S.C. §§ 401(b), 402(b) (1988).

190. See 17 U.S.C. § 407 (1988).

191. See 17 U.S.C. § 407(c) (1988); see also 37 C.F.R. § 202.19(e) (1994).

192. See 17 U.S.C. § 407(d) (1988).

193. 17 U.S.C. § 408(a) (Supp. V 1993).

194. 17 U.S.C. § 411(a) (Supp. V 1993). Registration is required before a suit for infringement may be brought for works of U.S. origin and for foreign works from countries which are not members of the Berne Convention.

195. See 17 U.S.C. § 408 (a), (b) (1988 & Supp. V 1993). Only one copy of the work is required for certain types of works, including unpublished works.

196. 17 U.S.C. § 408(b) (1988).

197. 17 U.S.C. § 410(c) (1988); Bibbero Systems, Inc. v. Colwell Systems, Inc., 893 F.2d 1104, 1106 (9th Cir. 1990). The weight to be accorded a certificate when registration has been made more than five years from the date of first publication is within the discretion of the court. 17 U.S.C. § 410(c) (1988).

198. See 17 U.S.C. § 412 (1988 & Supp. V 1993).

199. The Berne Convention prohibits member states from conditioning copyright protection for works of Berne nationals on the compliance with formalities. See Article 5 of the Berne Convention infra note 439.

200. 17 U.S.C. § 106 (1988 & Supp. V 1993). Section 106(A) grants additional rights for certain works of visual art in single copies or limited editions. The development of the NII does not raise unique issues with respect to those rights. See 17 U.S.C. § 106(A) (Supp. V 1993).

201. See 17 U.S.C. § 101 (1988) (definitions of "copies" and "phonorecords").

202. In 1978, the CONTU Final Report noted, "[T]he application of principles already embodied in the language of the [current] copyright law achieves the desired substantive legal protection for copyrighted works which exist in machine-readable form. The introduction of a work into a computer memory would, consistent with the [current] law, be a reproduction of the work, one of the exclusive rights of the copyright proprietor." CONTU Final Report at 40. See also MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511, 519 (9th Cir. 1993), cert. denied, 114 S. Ct. 671 (1994); Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 260 (5th Cir. 1988); Advanced Computer Services v. MAI Systems Corp., 845 F. Supp. 356 (E.D. Va. 1994); Triad Systems Corp. v. Southeastern Express Co., 1994 U.S. Dist. LEXIS 5390 (N.D. Cal. March 18, 1994); 2 Nimmer on Copyright § 8.08[A] (1994).

203. That copying has occurred does not necessarily mean that infringement has occurred. When copying is (1) authorized by the copyright owner, (2) exempt from liability as a fair use, (3) otherwise exempt under the provisions of Sections 108-119 or Chapter 10 of the Copyright Act, or (4) of such a small amount as to be de minimis, then there is no infringement liability.

204. See, e.g., MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511, 519 (9th Cir. 1993). (While this court's determination with respect to fair use may be open to question, its holding that booting a PC involves copying the operating system seems quite unexceptional.)

205. For example, if an author transfers a file (such as a manuscript) to a publisher with an Internet account, copies will typically, at a minimum, be made (a) in the author's Internet server, (b) in the publisher's Internet server, (c) in the publisher's local area network server, and (d) in the editor's microcomputer. It has been suggested that such "copying" of files in intermediate servers is only of transitory duration and consequently not covered by the reproduction right. However, it is clear that if the "copy" exists for more than a period of transitory duration, the reproduction right is implicated. Whether such reproduction is an infringement would be a separate determination.

206. See 17 U.S.C. § 106(2) (1988). "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.'" 17 U.S.C. § 101 (1988) (definition of "derivative work").

207. 17 U.S.C. § 109(a) (1988). See discussion infra pp. 90-95.

208. See discussion of rental rights for computer programs and sound recordings infra p. 91.

209. Furthermore, with respect to international distributions, Section 602 of the Copyright Act makes unauthorized importations a violation of the distribution right. See discussion infra pp. 107-09.

210. The court elsewhere in its opinion, in a small but perhaps significant deviation from conventional usage, appears to use "implicate" to mean "infringe" rather than "involve."

211. 839 F. Supp. 1552 (M.D. Fla. 1993).

212. Id. at 1556.

213. Whether such reproduction was legally performed by the subscriber, the BBS operator, or both is not clear.

214. Owners of copyrights in computer programs and sound recordings have the right to control post-first-sale rentals of copies of their works; owners of copyrights in other works do not. See 17 U.S.C. § 109 (1988 & Supp. V 1993). This inconsistency may be important in the NII context, particularly with respect to "multimedia works" that are neither expressly nor self-evidently in any particular category of copyrighted work (and whose treatment under various exemptions and special provisions may thus be unclear). See discussion of multimedia works supra pp. 41-45.

215. See discussion of contributory infringement and vicarious liability infra pp. 109-14.

216. 857 F. Supp. 679 (N.D. Cal. 1994).

217. See 17 U.S.C. § 106(4) (1988).

218. "To 'perform' a work means to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible." 17 U.S.C. § 101 (1988) (definition of "perform").

219. To perform or display a work "publicly" means --

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or
(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

17 U.S.C. § 101 (1988) (definition of "publicly").

220. See 17 U.S.C. § 110 (1988).

221. The current law addresses only transmissions of "performances" and "displays."

222. See, e.g., Columbia Pictures Indus. v. Redd Horne, Inc., 749 F.2d 154 (3d Cir. 1984) (video store operator liable for public performance violation where he rented tapes of motion pictures to customers and provided semi-private screening rooms where the tapes could be viewed); Columbia Pictures Indus. v. Aveco, Inc., 800 F.2d 59 (3d Cir. 1986) (same result where customers also rented rooms for viewing); On Command Video Corp. v. Columbia Pictures Indus., 777 F. Supp. 787 (N.D. Cal. 1991) (infringement found where hotel guests in rooms selected tapes to be played on remotely controlled console in hotel basement with signal then sent to rooms).

223. 17 U.S.C. § 101 (1988 & Supp. V 1993) (definition of "display").

224. See discussion of Playboy case supra pp. 68-69 and infra pp. 81, 120-21.

225. Of course, to the extent that such lists or menus are protectible under the Copyright Act, the authors of such lists would have the exclusive right to publicly display them.

226. The copyright law's legislative history, describing the introduction of the display right, distinguishes displays "on a screen or tube" from reproductions. This language, written before the advent of the personal computer, applies easily to displays with which Congress was familiar in 1976 (those rendered by broadcast television receivers), but is inapplicable to digital "browsing" where the law itself clearly -- without resort to explanatory Congressional language -- defines such acts as implicating the display and reproduction rights.

227. Although sometimes referred to as "rights" of the users of copyrighted works, "fair use" and other exemptions from infringement liability are actually limitations on the rights of the copyright owners. Thus, as a technical matter, users are not granted affirmative "rights" under the Copyright Act; rather, copyright owners' rights are limited by exempting certain uses from liability. It has been argued, however, that the Copyright Act would be unconstitutional if such limitations did not exist, as they reduce First Amendment and other concerns. Others have argued that fair use is an anachronism with no role to play in the context of the NII.

228. See 17 U.S.C. § 107 (1988 & Supp. V 1993). The judicially created doctrine, although now codified in the Copyright Act, has been described as "so flexible as virtually to defy definition." See Time Inc. v. Bernard Geis Assoc., 293 F. Supp. 130, 144 (S.D.N.Y. 1968).

229. Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164, 1177 (1994). As an affirmative defense, the burdens of persuasion and coming forward with evidence both must be carried by defendants to avoid liability (i.e., a copyright owner need not prove an accused use not fair, but, rather, the defendant must prove its fairness).

230. Id.

231. See id.

232. 17 U.S.C. § 107 (1988 & Supp. V 1993).

233. Harper & Row, supra note 34, at 561.

234. Justice Story stated that courts should "look to the nature and the objects of the selections made, the quantity and value of the material used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work." Folsom v. Marsh, 9 F. Cas. 342, 348 (C.C.D. Mass. 1841) (No. 4,901).

235. See Sony, supra note 22, at 456 (videotaping by individuals at home of off-the-air television broadcast programming for purpose of "time-shifting" -- as distinguished from "librarying" -- held fair use).

236. See Stewart v. Abend, 495 U.S. 207, 216 (1990) (theatrical and television distribution of motion picture over objection of owner of renewal copyright in underlying short story held infringing); Harper & Row, supra note 34, at 569 ("Nation" magazine's scoop of "Time" magazine's first serial rights in President Ford's memoirs held infringing, notwithstanding newsworthiness of the account of the Nixon pardon set out therein).

237. See Campbell, supra note 229, at 1177-79 (parodic lyrics of popular song not per se unfair by virtue of commercial purpose of parody; case remanded for further factual determination).

238. See 464 U.S. at 451. The subsequent Campbell decision indicates that the presumption is strongest in cases of "mere duplication" and weakest when a second commercial comer makes a transformative use and creates a derivative work. See Campbell, supra note 229, at 1177.

239. Congress has expressly declined to enact a specific exemption from copyright liability for educational uses. See House Report at 66-67, reprinted in 1976 U.S.C.C.A.N. 5680. Cases holding reproduction of an entire work as a fair use are few. In Haberman v. Hustler Magazine, Inc., 626 F. Supp. 201, 212 (D. Mass. 1986) a magazine's reproduction of an artist's post cards was found to be fair use because there was no market harm.

240. The consequences of denying a fair use defense in certain legitimate educational contexts are far smaller than in the commercial context. Under the provisions of Section 504(c)(2), statutory damages (damages that may be imposed without proof of the quantum of actual harm to the copyright owner) may not be imposed against a nonprofit educational institution, its employees or agents -- when acting within the scope of their employment -- in respect of copying that they performed with reasonably based grounds for believing the copying was fair use. 17 U.S.C. § 504(c)(2) (1988).

241. Marcus v. Rowley, 695 F.2d 1171 (9th Cir. 1983).

242. Encyclopaedia Britannica Educ. Corp. v. Crooks, 558 F. Supp. 1247 (W.D.N.Y. 1983).

243. Basic Books, Inc. v. Kinko's Graphics Corp., 758 F. Supp. 1522 (S.D.N.Y. 1991).

244. See Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1376 (2d Cir. 1993).

245. See New Era Publications Int'l, ApS v. Henry Holt & Co., 873 F.2d 576 (2d Cir. 1989), cert. denied, 493 U.S. 1094 (1990).

246. See National Rifle Ass'n v. Handgun Control Fed'n, 15 F.3d 559, 562 (6th Cir. 1994).

247. See New Era Publications Int'l, ApS v. Carol Publishing Group, 904 F.2d 152, 157 (2d Cir. 1990).

248. See Harper & Row, supra note 34, at 569 (taking of some 300 words held infringing).

249. 3 Nimmer on Copyright § 13.05[A] (1993) (footnotes omitted).

250. See Stewart v. Abend, supra note 236, at 238.

251. Cf. American Geophysical Union v. Texaco, Inc., 37 F.3d 881, 895 (2d Cir. 1994) ("analysis under the fourth factor must focus on the effect of [defendant's] photocopying upon the potential market for or value of these individual articles"); Salinger v. Random House, Inc., 811 F.2d 90, 99 (2d Cir.), cert. denied, 484 U.S. 890 (1987) (protecting potential market for author's letters notwithstanding author's profound disinclination ever to publish them).

252. See Sony, supra note 22, at 443-47 (plaintiffs "failed to carry their burden with regard to [the harm of] time-shifting . . . . Harm from time-shifting is speculative and, at best, minimal").

253. See Harper & Row, supra note 34, at 562.

254. See Stewart v. Abend, supra note 236, at 238.

255. See Campbell, supra note 229, at 1173.

256. The inability of our common law system to provide guidance covering every possible permutation of behavior is not necessarily a weakness. By permitting courts to reach decisions on a case-by-case basis, our system permits both necessary gap-filling and jurisprudential evolution without requiring repeated pleas to Congress for additional elaboration.

257. See supra notes 210-16 and accompanying text (discussing Playboy and MAPHIA decisions).

258. Playboy, supra note 211, at 1558.

259. MAPHIA, supra note 216.

260. MAPHIA, supra note 216, at 688.

261. See infra pp. 83-84.

262. 802 F. Supp. 1 (S.D.N.Y. 1992), aff'd, 37 F.3d 881, 892 (2d Cir. 1994). The Court of Appeals noted, with respect to Texaco's argument that such photocopying was "reasonable and customary," that "whatever validity this argument might have had before the advent of . . . photocopying licensing . . . the argument today is insubstantial." This suggests that, together with Section 108's proscription on most "systematic" photocopying (discussed below), the precedential value of Williams & Wilkins Co. v. United States, 487 F.2d 1345 (Ct. Cl. 1973) (Federal libraries not liable for infringement where no licensing option existed as between full price subscription to scientific journals and holding of fair use) may be reduced.

263. Existing guidelines cover certain copying by and for teachers in the classroom context, the copying of music for educational purposes, the copying of relatively recent journal articles by one library for another, and the off-air videotaping of educational broadcast materials.

264. See House Report at 68-74, reprinted in 1976 U.S.C.C.A.N. 5681-88.

265. See discussion of the Working Group's proposed amendments to Section 108 infra pp. 225-27.

266. The laws of economics and physics protect producers of equipment and tangible supplies to a greater extent than copyright owners. A university, for example, has little choice but to pay to acquire photocopy equipment, computers, paper and diskettes. It may, however, seek subsidization from copyright owners by arguing that its copying and distribution of their works should, as a fair use, not be compensated.

267. Hereinafter, the term "library" will be used to refer to a library or archives, or any of its employees acting within the scope of their employment.

268. See 17 U.S.C. § 108(a) (1988). Section 108 limitations are additional exemptions provided specifically for certain libraries. Libraries, of course, may also take advantage of fair use privileges or any other exemptions to the Copyright Act (see 17 U.S.C. § 108(f)(4) (1988)), but the exemptions in Section 108 generally exceed fair use. See generally Report of the Register of Copyrights on Library Reproduction of Copyrighted Works (1983).

269. See 17 U.S.C. § 108(a) (1988).

270. See 17 U.S.C. § 108(g) (1988).

271. 17 U.S.C. § 108(h) (1988).

272. See 17 U.S.C. § 108(b) (1988).

273. House Report at 75, reprinted in 1976 U.S.C.C.A.N. 5689.

274. 17 U.S.C. § 108(c) (1988); see House Report at 75, reprinted in 1976 U.S.C.C.A.N. 5689.

275. 17 U.S.C. § 108(d) (1988).

276. Id.

277. 17 U.S.C. § 108(e) (1988).

278. Id.

279. See 17 U.S.C. § 108(f)(3) (1988).

280. 17 U.S.C. § 108(g)(2) (1988).

281. See H.R. Rep. No. 1733, 94th Cong., 2d Sess. 72-73 (1976), reprinted in 1976 U.S.C.C.A.N. 5810, 5813-14 (hereinafter Conference Report).

282. Id. at 72, reprinted in 1976 U.S.C.C.A.N. 5813.

283. See discussion supra pp. 87-88.

284. See discussion supra pp. 87-88.

285. See T.B. Harms Co. v. Jem Records, Inc., 655 F. Supp. 1575, 1582 (D.N.J. 1987); Columbia Pictures Indus., Inc. v. Aveco, Inc., 612 F. Supp. 315, 319-20 (M.D. Pa. 1985), aff'd, 800 F.2d 59 (3d Cir. 1986).

286. 17 U.S.C. § 109(a) (1988).

287. See 17 U.S.C. § 109(b)(1)(A) (Supp. V 1993). The prohibition with respect to record rental does not apply to nonprofit libraries or nonprofit educational institutions for nonprofit purposes. Id. In addition, a nonprofit educational institution may transfer possession of a lawfully made copy of a computer program to another nonprofit educational institution or to faculty, staff and students. Id. Nonprofit libraries may also lend a computer program for nonprofit purposes if each copy has a copyright warning affixed to the package. 17 U.S.C. § 109(b)(2)(A) (Supp. V 1993). The prohibition with respect to computer program rental does not apply to a computer program "which is embodied in a machine or product and which cannot be copied during the ordinary operation or use of the machine or product" or "a computer program embodied in or used in conjunction with a limited purpose computer that is designed for playing video games and may be designed for other purposes." 17 U.S.C. § 109(b)(1)(B) (Supp. V 1993).

288. K. Corsello, The Computer Software Rental Amendments Act of 1990: Another Bend in the First Sale Doctrine, 41 Cath. U. L. Rev. 177, 192 (1991).

289. See H.R. Rep. No. 98-987, 98th Cong., 2d Sess. 2 (1984), reprinted in 1984 U.S.C.C.A.N. 2898, 2899 (justifying the Record Rental Amendment of 1984).

290. See 17 U.S.C. § 109(a) (1988) ("the owner of a particular copy or phonorecord . . . is entitled . . . to sell or otherwise dispose of the possession of that copy or phonorecord"); House Report at 79, reprinted in 1976 U.S.C.C.A.N. 5693 (under the first sale doctrine in Section 109 "the copyright owner's exclusive right of public distribution would have no effect upon anyone who owns 'a particular copy or phonorecord lawfully made under this title' and who wishes to transfer it to someone else . . .") See also, e.g., Columbia Pictures Indus. v. Redd Horne, Inc., 749 F.2d 154, 159 (3d Cir. 1984) ("first sale doctrine prevents the copyright owner from controlling the future transfer of a particular copy once its material ownership has been transferred").

291. House Report at 79, reprinted in 1976 U.S.C.C.A.N. 5693 (under the first sale doctrine, "the owner of the physical copy or phonorecord cannot reproduce or perform the copyrighted work publicly without the copyright owner's consent").

292. If the reproduction is lawful under another provision of the Copyright Act, the transmission would likely not be an infringement. See infra p. 95.

293. See House Report at 79, reprinted in 1976 U.S.C.C.A.N. 5693.

294. 17 U.S.C. § 109(c) (1988).

295. Section 109(e) reversed the decision in Red Baron-Franklin Park, Inc. v. Taito Corp., 883 F.2d 275 (4th Cir. 1989), cert. denied, 493 U.S. 1058 (1990), which held that video games could not be operated in an arcade without the permission of the copyright owner because such operation entailed violation of the copyright owner's exclusive rights to perform and display the work publicly. Section 109(e), however, does not allow the public display or performance of any other work of authorship embodied in the audiovisual game if the copyright owner of the game is not also the copyright owner of the other work. See 17 U.S.C. § 109(e) (Supp. V 1993).

296. See discussion of rental rights with regard to phonorecords and copies of computer programs supra notes 287-89 and accompanying text.

297. See 17 U.S.C. § 110(1) (1988).

298. See 17 U.S.C. § 110(2) (1988).

299. Section 117 of the Copyright Act provides:

Notwithstanding the provisions of section 106, it is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program provided:
(1) that such a new copy or adaptation is created as an essential step in the utilization of the computer program in conjunction with a machine and that it is used in no other manner, or
(2) that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event that continued possession of the computer program should cease to be rightful.

17 U.S.C. § 117 (1988 & Supp. V 1993). Any identical copies made in accordance with Section 117 "may be leased, sold, or otherwise transferred, along with the copy from which such copies were prepared, only as part of the lease, sale, or other transfer of all rights in the program." Adaptations made may be transferred only with the authorization of the owner of the copyright in the original program. Id.

300. See 17 U.S.C. § 110(3) (1988).

301. See 17 U.S.C. § 110(6) (1988).

302. See 17 U.S.C. § 110(7) (1988).

303. See17 U.S.C. § 110(8), (9) (1988).

304. See 17 U.S.C. § 110(10) (1988).

305. See 17 U.S.C. § 110(5) (1988).

306. See, e.g., the decision in Twentieth Century Music Corp. v. Aiken, 422 U.S. 151 (1975), which was essentially codified in Section 110(5) (owner of a small food establishment exempt from infringement liability for the performance of copyrighted works via a radio and four small ceiling speakers). See also Sailor Music v. The Gap Stores, Inc., 516 F. Supp. 923 (S.D.N.Y.), aff'd, 668 F.2d 84 (2d Cir. 1981), cert. denied, 456 U.S. 945 (1982); Rodgers v. Eighty Four Lumber Co., 617 F. Supp. 1021 (W.D. Pa. 1985); Springsteen v. Plaza Roller Dome, Inc., 602 F. Supp. 1113 (M.D.N.C. 1985).

307. See 17 U.S.C. § 112(a) (1988). This limitation of the copyright owner's reproduction right is applicable only if:

(1) the copy or phonorecord is retained and used solely by the transmitting organization that made it, and no further copies or phonorecords are reproduced from it; and
(2) the copy or phonorecord is used solely for the transmitting organization's own transmissions within its local service area, or for purposes of archival preservation or security; and
(3) unless preserved exclusively for archival purposes, the copy or phonorecord is destroyed within six months from the date the transmission program was first transmitted to the public.

308. See 17 U.S.C. §§ 111, 119 (1988 & Supp. V 1993). These provisions are referred to as "compulsory licenses" because under such provisions, copyright owners are compelled to grant the licenses. No license agreements are signed and the terms of such licenses are set forth in the statute; the copyright owner cannot object to the use of the work and must be satisfied with the license fees collected under the statute, which are distributed among all of the affected copyright owners by arbitrators impaneled by the Librarian of Congress.

309. The Copyright Office issued a regulation in 1992 stating that a cable system is a facility that both receives and transmits signals from within the same state. See 37 C.F.R. § 201.17(k) (1994). This ruling makes clear that Section 111 should not be applicable to any entities other than community-based cable systems. Moreover, in Satellite Broadcast Networks, Inc. v. Oman, 17 F.3d 344 (11th Cir.), cert. denied, 115 S. Ct. 88 (1994), the 11th Circuit upheld the regulation, finding it valid, enforceable and to be used by courts when determining whether a facility qualifies as a cable system. Since facilities used to transmit works through the NII will generally be inherently capable of receiving and transmitting outside any particular state, these facilities will not qualify for the cable compulsory license.

310. A "satellite carrier" is defined as "an entity that uses facilities of a satellite service licensed by the Federal Communications Commission to establish and operate a channel of communications for point-to-multipoint distribution of television station signals . . . ." See 17 U.S.C. § 119(d)(6). Unless the NII transmission occurs through a satellite service licensed by the FCC for the statutorily prescribed purposes, the compulsory license provisions would not be applicable.

311. See 17 U.S.C. § 116 (Supp. V 1993). This compulsory license may only be invoked if private negotiations fail to produce a consensual license.

312. See 17 U.S.C. § 118 (1988 & Supp. V 1993).

313. See 17 U.S.C. § 115 (1988).

314. See 17 U.S.C. § 501(a) (Supp. V 1993). Anyone who "trespasses into [the copyright owner's] exclusive domain by using or authorizing the use of the copyrighted work in one of the five ways set forth in the statute" is an infringer of the copyright. Sony, supra note 22, at 433.

315. See discussion of the scope of the exclusive rights supra at pp. 63-72. For instance, activities such as loading a work into a computer, scanning a printed work into a digital file, uploading or downloading a work between a user's computer and a BBS or other server, and transmitting a work from one computer to another may be infringements (in those cases, of the reproduction right). See, e.g., MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993) (the turning on of the computer, thereby causing the operating system to be copied into RAM, constituted an infringing reproduction of the copyrighted software); Advanced Computer Services v. MAI Systems Corp., 845 F. Supp. 356 (E.D. Va. 1994) (loading software into computer's random access memory constituted infringing reproduction); see also 2 Nimmer on Copyright § 8.08 at 8-103 (1993) ("input of a work into a computer results in the making of a copy, and hence . . . such unauthorized input infringes the copyright owner's reproduction right").

316. The innocence or willfulness of the infringing activity may be relevant with regard to the award of statutory damages. See 17 U.S.C. § 504(c) (1988); see also discussion of remedies infra pp. 130-33.

317. See 17 U.S.C. § 106 (1988 & Supp. V 1993).

318. See House Report at 61, reprinted in 1976 U.S.C.C.A.N. 5674 ("references to 'copies or phonorecords' are intended [in Section 106(1)-(3)] and throughout the bill to include the singular"; "the right 'to reproduce the copyright work in copies or phonorecords' means the right to produce a material object in which the work is duplicated, transcribed, imitated, or simulated . . . "). Further evidence of the intent of Congress to make even a single act of unauthorized reproduction an infringement is found in specific exemptions created for certain single-copy uses. See, e.g., 17 U.S.C. §§ 108(a), 108(f)(2), 112(a) (1988); see also Texaco, supra note 251, at 17.

319. See, e.g., Rockford Map Publishers, Inc. v. Directory Serv. Co., 224 U.S.P.Q. 851 (C.D. Ill. 1984), aff'd, 768 F.2d 145 (7th Cir. 1985), cert. denied, 474 U.S. 1061 (1986); Sub-Contractors Register, Inc. v. McGovern's Contractors & Builders Manual, Inc., 69 F. Supp. 507, 509 (S.D.N.Y. 1946). It is common for publishers of directories and other compilations to deliberately insert mistakes into the work (such as periodically adding a fictitious name, address and phone number in a telephone directory) to detect and help establish copying. See 2 H. Abrams, The Law of Copyright § 14.02[B][3][c], at 14-19 to 20 (1993).

320. This should be implied in the requirement that there be copying of the copyrighted work. Ideas and facts, of course, are not copyrightable. In the case of compilations, such as databases, if enough facts are copied, the copyrighted expression (the selection, arrangement or coordination of the facts) may be copied and infringement may be found. See CONTU Final Report at 42 ("The use of one item retrieved from such a work -- be it an address, a chemical formula, or a citation to an article -- would not . . . conceivably constitute infringement of copyright. The retrieval and reduplication of any substantial portion of a data base, whether or not the individual data are in the public domain, would likely constitute a duplication of the copyrighted element of a data base and would be an infringement.").

321. See Donald v. Zack Meyer's T.V. Sales & Service, 426 F.2d 1027, 1030 (5th Cir. 1970) ("paraphrasing is equivalent to outright copying"), cert. denied, 400 U.S. 992 (1971); Davis v. E.I. DuPont de Nemours & Co., 240 F. Supp. 612, 621 (S.D.N.Y. 1965) ("paraphrasing is tantamount to copying in copyright law"); see generally 3 Nimmer on Copyright § 13.03[A] at 13-28 to 13-58 (1993). Nimmer identifies two bases upon which courts impose liability for less than 100 percent verbatim copying: (1) "fragmented literal similarity" (where words, lines or paragraphs are copied virtually word-for-word, although not necessarily verbatim) and (2) "comprehensive nonliteral similarity" (where the "fundamental essence or structure" of a work is copied); see also P. Goldstein, Copyright § 7.2.1 at 13-17 (1989). Goldstein identifies three types of similarity: (1) where the infringing work "tracks" the original work "in every detail," (2) "striking similarity" (where a brief portion of both works is "so idiosyncratic in its treatment as to preclude coincidence") and (3) similarities that "lie beneath the surface" of the works ("[i]ncident and characterization in literature, composition and form in art, and rhythm, harmony and musical phrases in musical composition"). Id. at 13 (citations omitted).

322. For analyses of the various tests that have been used, see 3 Nimmer on Copyright § 13.03[A] at 13-28 to -58 (1993); M. Leaffer, Understanding Copyright Law §§ 9.5 - 9.7 at 268-76 (1989).

323. See Nichols v. Universal Pictures, Corp., 45 F.2d 119, 121 (2d Cir. 1930).

324. See Peter Pan Fabrics Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960).

325. See Z. Chaffee, Reflections on the Law of Copyright: I, 45 Columbia L. Rev. 503, 513 (1945).

326. See Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 908-09 (3d Cir.), cert. denied, 423 U.S. 863 (1975) (subtracting all but the "stick figures" from chart as non-protectible subject matter); Alexander v. Haley, 460 F. Supp 40, 46 (S.D.N.Y. 1978) (finding "alleged infringements display no similarity at all in terms of expression or language, but show at most some similarity of theme or setting. These items, the skeleton of creative work rather than the flesh, are not protected by the copyright laws.").

327. See 429 F.2d 1106 (9th Cir. 1970).

328. See, e.g., Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977); McCulloch v. Albert E. Price, Inc., 823 F.2d 316 (9th Cir. 1987).

329. See, e.g., Reyher v. Children's Television Workshop, 533 F.2d 87 (2d Cir. 1976); Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607 (7th Cir.), cert. denied, 459 U.S. 880 (1982); Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989); Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 877 (1987).

330. 562 F.2d 1157 (9th Cir. 1977).

331. See Pasillas v. McDonald's Corp., 927 F.2d 440, 442 (9th Cir. 1991).

332. See Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475 (9th Cir. 1992).

333. Krofft, supra note 330, at 1164.

334. 862 F.2d 204 (9th Cir. 1988).

335. See also Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1445 (9th Cir. 1994) (approving of district court's use of analytical dissection and agreeing with other courts' use of the "same analysis although articulated differently").

336. 982 F.2d 693 (2d Cir. 1992). See Autoskill Inc. v. National Educational Support Systems, Inc., 994 F.2d 1476, 1490-91 (10th Cir. 1993).

337. Other circuits have applied this test. See Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1343 (5th Cir. 1994); Gates Rubber Co. v. Bando Chemical Indus., Ltd., 9 F.3d 823, 834 (10th Cir. 1993).

338. 154 F.2d 464 (2d Cir. 1946).

339. See, e.g., Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960); Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021 (2d Cir. 1966); Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498 (2d Cir. 1982).

340. Ideal Toy Corp. at 1023 n.2.

341. 905 F.2d 731 (4th Cir. 1990).

342. See Aliotti v. R. Dakin & Co., 831 F.2d 898, 902 (9th Cir. 1987) (holding that perceptions of children must be considered in substantial similarity analysis because they are intended market for product); Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 619 (7th Cir.), cert. denied, 459 U.S. 880 (1982) (holding that "[v]ideo games, unlike an artist's painting, . . . appeal to an audience that is fairly undiscriminating insofar as their concern about more subtle differences in artistic expression").

343. Dawson, supra note 341, at 736.

344. An infringer is anyone who violates "any of the exclusive rights" of the copyright owner. 17 U.S.C. § 501(a) (Supp. V 1993). One of the exclusive rights is "to prepare derivative works based upon the copyrighted work." 17 U.S.C. § 106(2) (1988). A "derivative work" is a work "based upon one or more preexisting works, such as a . . . condensation, or any other form in which a work may be recast, transformed, or adapted." 17 U.S.C. § 101 (1988) (definition of "derivative work"). The Ninth Circuit has suggested that "a work is not derivative unless it has been substantially copied from the prior work." See Litchfield v. Spielberg, 736 F.2d 1352, 1357 (9th Cir. 1984) (emphasis added). It is unclear, however, whether the court is suggesting that a derivative work must be substantially similar to the prior work or that it simply must incorporate in some form a portion of the prior work, as noted in the legislative history. See House Report at 62, reprinted in 1976 U.S.C.C.A.N. 5675. The court noted that there is "little available authority" on infringement of the derivative works right. See Litchfield at 1357.

345. 17 U.S.C. § 602(a) (1988).

346. House Report at 169-70, reprinted in 1976 U.S.C.C.A.N. 5785.

347. Id. (Section 602 covers "unauthorized importation of copies or phonorecords that were lawfully made").

348. See T.B. Harms Co. v. Jem Records, Inc., 655 F. Supp. 1575 (D.N.J. 1987); Parfums Givenchy, Inc. v. C&C Beauty Sales, Inc., 832 F. Supp. 1378 (C.D. Cal. 1993). Courts are divided as to whether the first sale doctrine limits the ability of copyright owners to enforce the importation rights (as it does with respect to the domestic distribution right). Compare BMG Music v. Perez, 952 F.2d 318, 319 (9th Cir. 1991) (first sale doctrine does not circumscribe importation rights under Section 602) with Sebastian Int'l, Inc. v. Consumer Contacts (PTY) Ltd., 847 F.2d 1093, 1097 (3d Cir. 1988) (contra).

349. See 17 U.S.C. § 602(a) (1988) (subsection does not apply to "(1) importation of copies or phonorecords under the authority or for the use of the Government of the United States or of any State or political subdivision of a State, but not including copies or phonorecords for use in schools, or copies of any audiovisual work imported for purposes other than archival use; (2) importation, for the private use of the importer and not for distribution, by any person with respect to no more than one copy or phonorecord of any one work at any one time, or by any person arriving from outside the United States with respect to copies or phonorecords forming part of such person's personal baggage; or (3) importation by or for an organization operated for scholarly, educational, or religious purposes and not for private gain, with respect to no more than one copy of an audiovisual work solely for its archival purposes, and no more than five copies or phonorecords of any other work for its library lending or archival purposes, unless the importation of such copies or phonorecords is part of an activity consisting of systematic reproduction or distribution, engaged in by such organization in violation of the provisions of section 108(g)(2)"); House Report at 170, reprinted in 1976 U.S.C.C.A.N. 5786.

350. See discussion of transmissions and the distribution right supra pp. 67-69.

351. See discussion infra pp. 213-21.

352. See House Report at 61, reprinted in 1976 U.S.C.C.A.N. 5674. There must be a direct infringement upon which contributory infringement or vicarious liability is based.

353. The concepts of contributory and vicarious liability are well-established in tort law. Contributory infringement of intellectual property rights was first codified in patent law. See 35 U.S.C. § 271(c) (1988).

354. Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963) (holding that company that leased floor space to phonograph record department was liable for record department's sales of "bootleg" records despite absence of actual knowledge of infringement, because of company's beneficial relationship to the sales).

355. See, e.g., Dreamland Ball Room, Inc. v. Shapiro, Bernstein & Co., 36 F.2d 354 (7th Cir. 1929); Famous Music Corp. v. Bay State Harness Horse Racing & Breeding Ass'n, Inc., 554 F.2d 1213 (1st Cir. 1977); KECA Music, Inc. v. Dingus McGee's Co., 432 F. Supp. 72 (W.D. Mo. 1977). Indeed, the "cases are legion which hold the dance hall proprietor liable for the infringement of copyright resulting from the performance of a musical composition by a band or orchestra whose activities provide the proprietor with a source of customers and enhanced income. He is liable whether the bandleader is considered, as a technical matter, an employee or an independent contractor, and whether or not the proprietor has knowledge of the compositions to be played or any control over their selection." Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963) (citing some 10 cases).

356. Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir. 1971) (holding management firm's authorization of clients' performances of copyrighted compositions to be contributory infringement).

357. A library is exempted from liability for the unsupervised use of reproducing equipment located on its premises provided that the equipment displays a copyright law notice. 17 U.S.C. § 108(f)(1) (1988). This exemption does not apply to the user of such equipment, and no other provider of equipment enjoys any statutory immunity. See 17 U.S.C. § 108(f)(2) (1988).

358. See Universal Pictures Co. v. Harold Lloyd Corp., 162 F.2d 354, 366 (9th Cir. 1947) (rejecting defendant's argument that as an employee, he was not responsible for his employer's decision to use infringing material, in light of defendant's personal selection and appropriation of the protected material).

359. See Boz Scaggs Music v. KND Corp., 491 F. Supp. 908, 913 (D. Conn. 1980) (finding defendant liable based on own admission of responsibility and control over radio performances of protected works).

360. See, e.g., Cable/Home Communication Corp. v. Network Prods., Inc., 902 F.2d 829, 845-47 (11th Cir. 1990).

361. 464 U.S. 417 (1984).

362. Id. at 440.

363. Id. at 442. The Court cited two principles of patent law, but used only one as the appropriate analogy for copyright law:

The Copyright Act does not expressly render anyone liable for infringement committed by another. In contrast, the Patent Act expressly brands anyone who "actively induces infringement of a patent" as an infringer, 35 U.S.C. § 271(b), and further imposes liability on certain individuals labeled "contributory" infringers, § 271(c).

Id. at 434-35. Section 271(b) of the Patent Act provides, "Whoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. § 271(b) (1988). Section 271(c) provides, "Whoever sells a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer." 35 U.S.C. § 271(c) (1988).

364. Sony, supra note 361, at 442. "In order to resolve that question, we need not explore all the different potential uses of the machine and determine whether or not they would constitute infringement. Rather, we need only consider whether on the basis of the facts as found by the District Court a significant number of them would be noninfringing." Id. The Court declined to "give precise content" to the issue of how much use is needed to rise to the level of "commercially significant." See id.

The four dissenting Justices did not agree that the patent "staple article of commerce" doctrine of contributory infringement was applicable to copyright law. See Sony, supra note 361, at 490-91 n.41 (Blackmun, J., dissenting) ("[t]he doctrine of contributory patent infringement has been the subject of attention by the courts and by Congress . . . and has been codified since 1952, . . . but was never mentioned during the copyright law revision process as having any relevance to contributory copyright infringement"); see also id. at 491 (disagreeing that "this technical judge-made doctrine of patent law, based in part on considerations irrelevant to the field of copyright . . . should be imported wholesale into copyright law. Despite their common constitutional source, . . . patent and copyright protections have not developed in a parallel fashion, and this Court in copyright cases in the past has borrowed patent concepts only sparingly.") Recognizing the "concerns underlying the 'staple article of commerce' doctrine," the dissent concluded that "if a significant portion of the product's use is noninfringing, the manufacturers and sellers cannot be held contributorily liable for the product's infringing uses." See id. at 491 (Blackmun, J., dissenting).

365. Id. at 446.

366. See, e.g., Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1988) (seller of computer programs that defeat anti-copying protection is not liable as contributory infringer because programs can be used to enable user to make legal archival copies of copyrighted computer programs under Section 117, which the court found to be a substantial noninfringing use). But see RCA Records v. All-Fast Systems, Inc., 594 F. Supp. 335 (S.D.N.Y. 1984) (operator is liable for contributory infringement based on its provision of sound recording facilities where public could make unauthorized phonorecords).

367. Sega Enterprises Ltd. v. MAPHIA, 857 F. Supp. 679 (N.D. Cal. 1994).

368. See id. at 685.

369. See id. at 687. The court found that there was "no need to make archival copies of [Sega's] ROM game cartridges" because the "ROM cartridge format is not susceptible to breakdown" and Sega would replace defective cartridges. See id. at 685. The court also found that it was unlikely that customers would buy the copiers, at a cost of $350, for the purpose of backing up Sega's video game programs, which sold for $30 to $70 each. Id. at 685.

370. For detailed analyses of arguments on both sides of this liability issue, see I. Trotter Hardy, The Proper Legal Regime for “Cyberspace,” 55 U. Pitt. L. Rev. 993 (1994).

371. This differs from other bodies of law with which service providers, as well as broadcasters, newspaper publishers and others, come in contact. Defamation, for example, has a knowledge requirement for liability. This standard is the same whether in a conventional or NII environment. In Auvil v. CBS "60 Minutes," 800 F. Supp. 928 (E.D. Wash. 1992), the court held that a network affiliate which exercised no editorial control over the network broadcast (although it had the power to do so) served only as a conduit and was not liable for republishing defamatory statements. The court borrowed reasoning from book seller cases -- "one who only delivers or transmits defamatory material published by a third person is subject to liability if, but only if, he knows or had reason to know of its defamatory character" -- finding "no logical basis for imposing a duty of censorship on the visual media which does not likewise attach to the print chain of distribution." The court also found that the injured parties were not impaired by limiting conduit liability to those situations where culpability is established; "[t]he generating source, which in a national broadcast will generally be the deepest of the deep pockets, may still be called upon to defend." A similar result was reached in Cubby, Inc. v. CompuServe Inc., 776 F. Supp. 135 (S.D.N.Y. 1991), where the court held that libelous material uploaded to a bulletin board system by a subscriber did not subject the BBS operator to damages for libel. The court determined that a BBS was a "distributor" (akin to a public library or bookstore) rather than a "republisher," and thus the operator was liable only if it "knew or had reason to know of the allegedly defamatory . . . statements" that had been uploaded.

372. See discussion of innocent infringement infra p. 125.

373. See discussion of contributory infringement and vicarious liability supra pp. 109-14.

374. See Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345 (8th Cir. 1994).

375. See P. Goldstein, Copyright, § 1.15, at 45 (1989) ("The exercise of due diligence . . . can reduce, but never entirely exclude, the risk of a copyright infringement claim. Copyright law's rule of strict liability poses particularly hard problems for an intermediary, . . . which must accept on faith its author's representation that he originated the work.").

376. The same can be said of other information providers and facilitators, such as book stores, photocopying services, photo finishers, broadcasters, etc.

377. The subscriber may be unknown -- particularly in the case of anonymous messages -- to everyone but the service provider.

378. Some estimates of the number of BBS operators are as high as 100,000.

379. See Buck v. Jewell-LaSalle Realty Co., 283 U.S. 191, 198-99 (1931) (citations omitted) (at the time, infringement of the public performance right required that the performance was "for profit"); see also ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 999 (2d Cir. 1983) ("the problems of proof inherent in a rule that would permit innocent intent as a defense to copyright infringement could substantially undermine the protections Congress intended to afford copyright holders").

380. See, e.g., House Report at 159-60, reprinted in 1976 U.S.C.C.A.N. 5775-76. Within the cable compulsory licensing provisions, one narrow exemption from liability was granted with respect to secondary transmissions by independent carriers that provided transmission capacity for the distribution of superstation signals to local cable operators. See 17 U.S.C. § 111(a)(3) (1988). This exemption is only available if the primary transmission is made for reception by the public at large. If the primary transmission is limited to a particular segment of the public, such as subscribers to a service, the exemption does not apply and the standards for copyright liability are fully applicable.

381. See cases cited supra note 355.

382. House Report at 159-60, reprinted in 1976 U.S.C.C.A.N. 5775-76.

383. House Report at 163, reprinted in 1976 U.S.C.C.A.N. 5779.

384. Id.

385. 3 Nimmer on Copyright § 13.08 at 13-291 (1994). See P. Goldstein, Copyright § 9.4 at 162 (1989) ("the standard rationale for excluding innocence as a defense to copyright infringement is that, as between the copyright owner and the infringer, the infringer is better placed to guard against mistake"; "the strict liability rule should discipline an infringer, who might otherwise mistakenly conclude that his copying will not infringe the copyrighted work, to evaluate the legal consequences of his conduct more carefully").

386. Playboy Enterprises Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993).

387. Id. at 1559.

388. Sega Enterprises Ltd. v. MAPHIA, 857 F. Supp. 679 (N.D. Cal. 1994).

389. Id. at 686-87. With regard to the contributory liability issues, the court found that the BBS operator had knowledge of the uploading and downloading of unauthorized copies of Sega's copyrighted video games and that it solicited the copying of the games. Id. at 683.

390. See Frank Music Corp. v. CompuServe Inc., Civil Action No. 93 Civ. 8153 (JFK) (S.D.N.Y.) (complaint filed Nov. 29, 1993). The Complaint alleges that defendant, by providing access to its BBS by subscribers, engaged in: (1) "permitting, facilitating and participating in the recording of performances of the [Plaintiffs' works] into, and storing such recordings in, CompuServe's computer database by permitting and enabling its paying subscribers to upload such performances thereto"; (2) "maintaining a storage of unauthorized recordings of [the Plaintiffs' works] (uploaded by its subscribers) in and as part of CompuServe's computer database"; and (3) "permitting, facilitating and participating in the recording (i.e., re-recording) of the performances of [the Plaintiffs' works] (theretofore stored in its computer database) by permitting and enabling its paying subscribers to download such recorded performances therefrom." Complaint at 6-7. In addition, the Plaintiffs allege that CompuServe had "control over the nature and content of materials stored in its Bulletin Board and downloaded therefrom"; that CompuServe "had actual knowledge of, or in the exercise of reasonable diligence could have determined, the nature and content of materials stored in its Bulletin Board and downloaded therefrom"; and that CompuServe "had actual notice, or in the exercise of reasonable diligence could have determined, that recordings of [the Plaintiffs' works] were uploaded (recorded) to, stored in, and downloaded (re-recorded) from its computer database." See Complaint at 7.

391. See Religious Technology Center v. NETCOM, No. C95-20091 (N.D. Cal.) (verified first amended complaint filed March 3, 1995).

392. Under the Communications Act of 1934, a common carrier is required to furnish service to the public upon reasonable request. See 47 U.S.C. § 201. A common carrier is defined as "any person engaged as a common carrier for hire, in interstate or foreign communication by wire or radio . . . ." See 47 U.S.C. § 153(h). The Supreme Court examined this somewhat circular definition and found that a common carrier in the communications context is one that "makes a public offering to provide [communications facilities] whereby all members of the public who choose to employ such facilities may communicate or transmit intelligence of their own design and choosing . . . ." See Federal Communications Commission v. Midwest Video Corp., 440 U.S. 689, 701 (1979) (citing Report and Order, Industrial Radiolocation Service, Docket No. 16106, 5 F.C.C.2d 197, 202 (1966)).

393. See P. Goldstein, Copyright § 1.15 at 45 (1989) ("[a]n intermediary can to some extent protect itself by shifting or sharing the risk of infringement through a warranty from the author that he originated the work in question or through an errors and omissions insurance policy").

394. See 17 U.S.C. § 502 (1988).

395. Superhype Publishing, Inc. v. Vasiliou, 838 F. Supp. 1220, 1226 (S.D. Ohio 1993).

396. See 17 U.S.C. § 503(a) (1988).

397. See 17 U.S.C. § 503(b) (1988).

398. 17 U.S.C. § 504 (1988). Statutory damages generally are not available if the infringement occurred before the effective date of registration of the work, unless the infringement occurred after first publication and registration was made within three months of first publication. See 17 U.S.C. § 412 (1988 & Supp. V 1993).

399. See 17 U.S.C. § 504(b) (1988).

400. See 17 U.S.C. § 504(c)(1) (1988).

401. 17 U.S.C. § 504(c)(2) (1988).

402. D.C. Comics Inc. v. Mini Gift Shop, 912 F.2d 29, 35 (2d Cir. 1990); Innovative Networks, Inc. v. Satellite Airlines Ticketing, Inc., 871 F. Supp. 709, 721 (S.D.N.Y. 1995). However, the court must remit statutory damages if (1) the infringer "believed and had reasonable grounds for believing" that the use was a fair use, and (2) the infringer was a nonprofit educational institution, library or archives (or its employee or agent) and infringed the reproduction right or a public broadcasting entity (or a person who "as a regular part of the nonprofit activities" of a public broadcasting entity) that infringed by performing a published nondramatic literary work or reproducing a transmission program embodying a performance of such work. See 17 U.S.C. § 504(c)(2) (1988).

403. See17 U.S.C. § 504(c)(2) (1988) ("where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court . . . may reduce the award of statutory damages to a sum of not less than $200"); D.C. Comics Inc., supra note 402, at 35 (defendant's lack of business sophistication and absence of copyright notice on copies were basis for a finding of innocent infringement and statutory damages of only $200). A person who is misled and innocently infringes by relying on the lack of a copyright notice on a copy of a work that was lawfully publicly distributed before March 1, 1989, is not liable for any damages (actual or statutory) for infringements committed before actual notice of registration of the work is received. 17 U.S.C. § 405(b) (1988). The court may allow, however, the recovery of any of the infringer's profits attributable to the infringement. Id.

404. See 17 U.S.C. § 504(c)(2) (1988).

405. Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1382 (2d Cir. 1993); Video Views, Inc. v. Studio 21, Ltd., 925 F.2d 1010, 1020 (7th Cir.), cert. denied, 502 U.S. 861 (1991).

406. 17 U.S.C. § 505 (1988).

407. Id.; see also Roth v. Pritikin, 787 F.2d 54, 57 (2d Cir. 1986) (attorney's fees generally awarded to prevailing plaintiffs because Copyright Act is intended to encourage suits to redress infringement); Chi-boy Music v. Charlie Club, Inc., 930 F.2d 1224, 1230 (7th Cir. 1991) (attorney's fees and costs serve to deter infringement, dissuade defendant's disdain for copyright law, and encourage plaintiffs to bring colorable claims against infringers). No attorney's fees may be awarded for an infringement of copyright before its registration unless, in the case of published works, the infringement occurred after first publication and registration was made within three months of first publication. 17 U.S.C. § 412 (1988 & Supp. V 1993).

408. See 17 U.S.C. § 506(a) (1988).

409. 17 U.S.C. § 506(b) (1988).

410. 871 F. Supp. 535 (D. Mass. 1994).

411. The indictment alleged that the resultant loss of revenue to the copyright owners was in excess of $1,000,000 over a period of approximately six weeks.

412. 17 U.S.C. § 506(c) (1988). The penalties in Section 506(c) apply with regard to copyright notices or "words of the same purport." Id.

413. Id.

414. 17 U.S.C. § 506(d) (1988).

415. 17 U.S.C. § 506(e) (1988).

416. See Fogerty v. Fantasy, supra note 35, at 1029.

417. See discussion of the fair use defense supra pp. 73-82.

418. See F.E.L. Publications, Ltd. v. Catholic Bishop of Chicago, 754 F.2d 216, 220-22 (7th Cir. 1985); but see Columbia Pictures Indus. v. Redd Horne, Inc., 749 F.2d 154, 161-62 (3d Cir. 1984).

419. See Pacific & Southern Co., Inc. v. Duncan, 572 F. Supp. 1186 (N.D. Ga. 1983), aff'd, 744 F.2d 1490 (11th Cir. 1984).

420. See 17 U.S.C. § 504(c)(2) (1988); see also supra pp. 125-26. If a proper copyright notice was affixed to the published copy to which the infringer had access, the court may not give any weight to a claim of innocent infringement in mitigation of damages, except in limited circumstances involving certain infringers (including nonprofit educational institutions and libraries) who violated certain exclusive rights and who believed, and had reasonable grounds for believing that the use was a fair use. See §§ 401(d), 504(c)(2) (1988); see also 17 U.S.C. § 405(b) (1988) (effect on innocent infringers of omission of copyright notice on copies publicly distributed before March 1, 1989).

421. See 17 U.S.C. § 302(e) (1988) (after a period of 75 years from first publication of a work, or 100 years from its creation, whichever is shorter, a person who obtains from the Copyright Office a certified report that the records relating to the deaths of authors disclose nothing to indicate that the author is living, or died less than 50 years before, may presume that the author has been dead for at least 50 years, and good faith reliance on that presumption is a complete defense).

422. See generally discussion of infringement supra pp. 100-07.

423. Further, no action will lie if the statute of limitations has run. See 17 U.S.C. § 507 (1988).

424. A nonexclusive license may be implied from conduct. See Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990), cert. denied, 498 U.S. 1103 (1991); MacLean Assocs., Inc. v. Wm. M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769, 779 (3d Cir. 1991); see also 3 Nimmer on Copyright § 10.03[A] at 10-38 (1994). Implied licenses, like oral licenses, are always nonexclusive in nature and may be limited in scope. See Oddo v. Ries, 743 F.2d 630, 634 (9th Cir. 1984); Gilliam v. American Broadcasting Cos., 538 F.2d 14, 19-21 (2d Cir. 1976). Delivery of a copy of a work by the copyright owner to the moderator of a newsgroup may imply a license to reproduce and distribute copies of the work to the subscribers of that newsgroup, but may not be evidence of an implied license to reproduce and distribute copies to other newsgroups.

425. "Neighboring rights" are discussed infra p. 134.

426. See S. Siwek & H. Furchtgott-Roth, International Intellectual Property Alliance, Copyright Industries in the U.S. Economy (1995).

427. See generally S. Stewart, International Copyright and Neighbouring Rights (2d ed. 1989) (hereinafter Stewart). Stewart presents a summary of international copyright principles and synopses of the copyright laws of a number of countries. Stewart also identifies socialist copyright laws as a category. However, since the demise of the USSR, many of the former socialist countries have moved to enact modern copyright legislation. The copyright laws of the People's Republic of China and Russia follow the civil law model.

428. Stewart at 6. In some common law countries, moral rights are protected by a combination of statutory provisions and common law. In the United States, for instance, this protection is found in Federal legislation, such as the Lanham Act and the Copyright Act, various state legislative provisions and the common law of privacy, defamation and the like. See Final Report of the Ad Hoc Working Group on U.S. Adherence to the Berne Convention, 10 Colum. VLA J.L. & Arts 513, 548-57 (1986); 2 Nimmer on Copyright § 8D.02[A] at 8D-10 to -11 (1994).

429. There are 155 members of the Convention Establishing the World Intellectual Property Organization (WIPO) as of July 1, 1995. Done at Stockholm on July 14, 1967; entered into force for the United States on August 25, 1970. 21 UST 1749; TIAS 6932; 828 UNTS 3. WIPO also administers the Paris Convention for the Protection of Industrial Property (Stockholm 1967), which is not discussed in this Report.

430. Berne Convention (with Appendix) for the Protection of Literary and Artistic Works of September 9, 1886, completed at Paris on May 4, 1896, revised at Berlin on November 13, 1908, completed at Berne on March 20, 1914, revised at Rome on June 2, 1928, at Brussels on June 26, 1948, at Stockholm on July 14, 1967, and at Paris on July 24, 1971, amended at Paris on July 24, 1979. Done at Paris on July 24, 1971; entered into force for the United States on March 1, 1989.

431. There were 48 members of the convention as of July 1, 1995, but the United States is not a member. The Rome Convention is jointly administered by WIPO, the International Labor Organization (ILO) and the United Nations Educational, Scientific and Cultural Organization (UNESCO).

432. Done at Geneva on October 29, 1971; entered into force on April 18, 1973; for the United States on March 10, 1974. 25 UST 309; TIAS 7808; 888 UNTS 67. There were 53 members of the Convention as of July 1, 1995.

433. UNESCO is the United Nations Educational, Scientific and Cultural Organization.

434. Universal Copyright Convention, as revised, with two protocols annexed thereto. Done at Paris on July 24, 1971, entered into force on July 10, 1974. 25 UST 1341; TIAS 7868. As of May 31, 1995, there were 96 members of the Convention.

435. As of July 1, 1995, there were 114 signatories to the Berne Convention.

436 . This fundamental principle is set forth in Section 102(b) of the U.S. Copyright Act. See discussion supra pp. 32-35.

437 . This approach is consistent with Section 107 of the U.S. Copyright Act (relating to fair use of copyrighted works).

438 . Only Japan and Switzerland qualify under this exception.

439. Article 5 provides:

(1) Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the Union other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.
(2) The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.
(3) Protection in the country of origin is governed by domestic law. However, when the author is not a national of the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country the same rights as national authors.
(4) The country of origin shall be considered to be:
(a) in the case of works first published in a country of the Union, that country; in the case of works published simultaneously in several countries of the Union which grant different terms of protection, the country whose legislation grants the shortest term of protection;
(b) in the case of works published simultaneously in a country outside the Union and in a country of the Union, the latter country;
(c) in the case of unpublished works or of works first published in a country outside the Union, without simultaneous publication in a country of the Union, the country of the Union of which the author is a national, provided that:
(i) when these are cinematographic works the maker of which has his headquarters or his habitual residence in a country of the Union, the country of origin shall be that country, and
(ii) when these are works of architecture erected in a country of the Union or other artistic works incorporated in a building or other structure located in a country of the Union, the country of origin shall be that country.

440. See World Intellectual Property Organization, BCP/CE/III/3, Report of the Committee of Experts on a Possible Protocol to the Berne Convention, Third Session, June 21 to 25, 1993, 20-21 (June 25, 1993).

441. Id. at 21.

442. See Trade-Related Aspects of Intellectual Property, Final Act Embodying the Results of the Uruguay Round of the Multilateral Trade Negotiations, Office of the U.S. Trade Representative (Dec. 15, 1993).

443. Id.

444. Article 3 (National Treatment) provides:

1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of performers, producers of phonograms and broadcasting organizations, this obligation only applies in respect of the rights provided under this Agreement. Any Member availing itself of the possibilities provided in Article 6 of the Berne Convention and paragraph 1(b) of Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for Trade-Related Aspects of Intellectual Property Rights.
2. Members may avail themselves of the exceptions permitted under paragraph 1 above in relation to judicial and administrative procedures, including the designation of an address for service or the appointment of an agent within the jurisdiction of a Member, only where such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions of this Agreement and where such practices are not applied in a manner which would constitute a disguised restriction on trade.

445. Article 4 of TRIPs (Most-Favoured-Nation Treatment) provides:

With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members. Exempted from this obligation are any advantage, favour, privilege or immunity accorded by a Member:
(a) deriving from international agreements on judicial assistance and law enforcement of a general nature and not particularly confined to the protection of intellectual property;
(b) granted in accordance with the provisions of the Berne Convention (1971) or the Rome Convention authorizing that the treatment accorded be a function not of national treatment but of the treatment accorded in another country;
(c) in respect of the rights of performers, producers of phonograms and broadcasting organizations not provided under this Agreement;
(d) deriving from international agreements related to the protection of intellectual property which entered into force prior to the entry into force of the WTO Agreement, provided that such agreements are notified to the Council for TRIPs and do not constitute an arbitrary or unjustifiable discrimination against nationals of other Members.
446. See NAFTA, H.R. Doc. No. 159, 103d Cong., 1st Sess. (1993); 32 I.L.M. 289-456, 605-799 (1993). The NAFTA is binding among the United States, Mexico and Canada.

447. Article 6bis provides:

(1) Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.
(2) The rights granted to the author in accordance with the preceding paragraph shall, after his death, be maintained, at least until the expiry of the economic rights, and shall be exercisable by the persons or institutions authorized by the legislation of the country where protection is claimed. However, those countries whose legislation, at the moment of their ratification of or accession to this Act, does not provide for the protection after the death of the author of all the rights set out in the preceding paragraph may provide that some of these rights may, after his death, cease to be maintained.
(3) The means of redress for safeguarding the rights granted by this Article shall be governed by the legislation of the country where protection is claimed.

448. See Act of October 31, 1988, Pub. L. 100-568, 1988 U.S.C.C.A.N. (102 Stat.) 2853.

449. See Visual Artists Rights Act of 1990, Pub. L. 101-650, 1990 U.S.C.C.A.N. (104 Stat.) 5128.

450. See Exposure '94: A Proposal for the New Rule of Intellectual Property for Multimedia, Institute of Intellectual Property 18 (Feb. 1994).

451. See discussion infra pp. 189-90, 230-36.

452. See discussion infra pp. 191-94, 236-38.

453. Article 20 states:

The Governments of the countries of the Union reserve the right to enter into special agreements among themselves, in so far as such agreements grant to authors more extensive rights than those granted by the Convention, or contain other provisions not contrary to this Convention. The provisions of existing agreements which satisfy these conditions shall remain applicable.

454. This reference to fixations includes the subject matter of neighboring rights related to works and their performance.

455. Feist, supra note 36, at 345.

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