In the previous two classes (Infringement Part I and II), we’ve been looking at the heart of the typical infringement analysis. Today, we’ll be looking at one special limitation to infringement of the reproduction right and at infringement of the other rights besides the exclusive right of reproduction.
Infringement of the reproduction right of copyright in sound recordings
In order to fully understand, the limitation of the reproduction right in the copyright of sound recordings, we need to understand how copyright applies to music. It’s easiest just to think of music as having two separate copyrights. There is one copyright in the musical composition, typically subsisting in the writer of the work, and another copyright in each particular sound recording, typically subsisting in the producer. The musical composition is what we think of as the musical work, the song itself. The sound recording is a particular recording.
So any particular song you hear on the radio is subject to two copyrights.
Copyrights in sound recordings are very limited. They are only infringed by ‘mechanical’ reproduction. Basically, you have to use a machine to copy it. Put another way, if you hired a group of musicians to imitate, exactly, a sound recording, it would not be an infringement of the copyright in the sound recording (although it would obviously infringe the copyright in the musical composition).
The most interesting recent issue relating to sound recordings is whether digital sampling infringes the original work. See Bridgeport Music v. Dimension Films.
Other rights provided by copyright
Thus far in our examination of infringement, we’ve been talking about the exclusive right to reproduce the copyrighted work, in other words, the right to prevent others from copying the work. That is the most commonly asserted right, and the right most people associate with copyright. Hey, it’s right in the name.
But it is not the only right an owner of copyright gets – Section 106 of the Copyright Act provides six different rights:
Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of 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, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
Let’s look at each briefly.
Exclusive right to prepare derivative works
Section 101 defines “derivative work.”
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”.
The most important examples for fiction writers would be the conversion of a book into a movie, the translation of a book, the preparation of an audiobook version of the book, and in some cases the writing of a sequel (…and the preparation of an abridgment if we harken back to the golden days of Reader’s Digest).
Where you are most likely to see something that looks like this right is in the grant of rights clause in a book contract. However, that grant of rights actually includes both this right to prepare derivative works and the broader right to make reproductions of the work. Those provisions in the granting clause transfer the exclusive right, for example, to make a movie version of the book. In order to do so, that clause has to mean both the reproduction right and the derivative right.
The reason for this is the same reason why you rarely see the derivative right asserted by itself. The derivative right is most often asserted as an additional claim added on to a claim of infringement of the reproduction right. Thinking about the scope of the reproduction right is the key to understanding why. If you think back to our examination of the infringement analysis, it becomes immediately obvious that one can infringe the reproduction right without making an exact verbatim copy. A non-literal copy is still a violation of the reproduction right. One extension of that is that changing the medium of the work can still be a copy. Thus a photograph can be a copy of a sculpture and a movie can be a copy of a book. That means that most derivative works are also copies.
Factual circumstances that create potential infringements of the derivative right without infringing the reproduction rights are rare. One example is when an individual alters an authorized copy enough to create a derivative work. So if you bought a coffee table book, cut out the images, and then mounted them on tiles – you might have altered them enough to meet the statutory definition of a derivative work. See Mirage Editions v. Albuquerque A.R.T. Co. and Lee v. A.R.T. Co. A second example is when hardware or software is used to alter an existing program as it runs. See Lewis Galoob Toys v. Nintendo of America (anybody remember the Game Genie?) and Micro Star v. Formgen (involving Duke Nukem 3D levels)
Exclusive right to distribute the work
This right exists to close a “loophole” in the reproduction right. If one individual makes thousands of copies of DVD and then sells them to a second individual who then offers them for sale to the public, the second individual technically has not made any copies. The distribution right allows the copyright holder to go after the second individual directly. That individual may be the only one the owner can easily find.
The real story of this right is really its most important limitation.
Think about the scope of this right – distribution “by sale or other transfer of ownership, or by rental, lease, or lending”.
Have you ever given a book to someone as a gift?Have you ever leant someone a book? The first is a transfer of ownership and the second is a lending – in other words if we look no further than section 106, each of those activities appears to be an infringement of copyright!
But of course, it’s not. This is where the First Sale Doctrine, codified in Section 109, does its work:
Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.
This exhaustion of the distribution right only occurs once the copyright holder has first parted with ownership of that particular copy. If ownership is not transferred by the owner, if instead the particular copy is only licensed to the recipient, the First Sale doctrine does not kick in. In the literary world, most publishers and retailers purport to license eBooks to readers rather than sell them. If that is the case, then the purchaser (?) cannot resale or even gift it. We’ve looked at this issue a few other places.
Exclusive right to display the work publicly
Section 101 provides:
To “display” a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.
Further:
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.
Like the distribution right, the public display right has a broad limitation. Section 109(c) provides that the owner of a particular copy can display that copy without infringing this right. So a museum that owns the a painting (the physical object) can display it without violating the display right. Where you sometimes see this right litigated is in works that are shown in the background of movies and TV shows.
Exclusive right to perform the work publicly
Section 101 defines “perform”:
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.
Like the display right, this right is limited to certain types of works.
Exclusive right to perform the copyrighted work publicly by means of a digital audio transmission
This right is specifically limited copyright in sound recordings. Section 101 provides a robust definition: “A “digital transmission” is a transmission in whole or in part in a digital or other non-analog format.” This was initially enacted because of a fear of a ‘celestial jukebox’ streaming music to devices, but it also applies to many internet music streaming services.
Writer-in-Law 