Mbu 2520 spring 2018 chapter 11

MBU 2520 Spring 2018 - Eric M. Griffin
DEFENSES to INFRINGEMENT
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Defense: Legal reason why Plaintiff’s claim is NOT valid.
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Statute of Limitations - SOL
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17 USC § 507. Limitations on actions
COPYRIGHT Infringement
(a) Criminal Proceedings. — Except as expressly provided otherwise in this
title, no criminal proceeding shall be maintained under the provisions of this title
unless it is commenced within 5 years after the cause of action arose.
(b) Civil Actions. — No civil action shall be maintained under the provisions of
this title unless it is commenced within three years after the claim accrued.

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A cause of action ACCRUES when a plaintiff knows or has reason to know of
the injury upon which the claim is premised. 970 F.2d 1043, 1048 (2d Cir.1992)
The statute of limitations for copyright infringement is 3 years for civil lawsuits
and 5 years for criminal. This means that if somebody infringes your copyright,
you must bring a civil lawsuit within three years of the infringing act or a
criminal lawsuit within five years of the infringing act.
If your bring a suit more than this number of years after the infringement
began, you may only be permitted to recover three or five years’ worth of
damages.

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Measuring SOL:
• The “clock” begins to run the moment the infringement begins or
is accrued
• If the infringement is ongoing = measure from date of last act of
infringement.
• If you bring a Civil lawsuit for infringement and you get a judgment
against the infringer (i.e.-you win), you can GENERALLY only get
damages based upon illegal usage during the three year period
prior to the commencement of the lawsuit.

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Tolling the SOL:
• Tolling = delay the application of the statute of limitations.
• Usually only for equitable reasons (e.g. – concealment of
infringement).
• Courts BALANCE the copyright owner’s lack of knowledge of
infringement (was it justifiable?) against the infringer’s reliance
upon the copyright owner’s failure to sue w/in the SOL period.

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CASE: MERCHANT V LYMON - “Why Do Fools Fall in
Love?”
When the 1950s singing group,TheTeenagers, well known for their cuddly little singer
Frankie Lymon, recorded their song "Why Do Fools Fall in Love," for Defendants
Morris Levy and George Goldner and their record companies, they didn't realize
they'd been duped out of copyright ownership. Levy and Goldner registered the song
in their own names, including Lymon as well.The song was a huge success. By 1969,
however, Plaintiffs became aware they'd been cheated, though Defendants
allegedly intimidated them, preventing them from filing suit of any sort. But by
the early 1980’s they began speaking out publicly. They filed suit in 1987.

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CASE: MERCHANT V LYMON - “Why Do Fools Fall in Love?”
When the band members finally brought suit in 1987, a federal District Court found the two former-
Teenagers (not Lymon, Levy, or Goldner) were the writers of the song.They were initially awarded
royalties back to 1969, but follow-up cases limited this holding and whittled the reward to nothing.
First, the court found the statute of liminations blocked all royalties other than those earned in
the three years prior to filing suit.
On appeal, the Second Circuit found found that, when causes of action accrued so long ago,
damages are available for recent time periods only when some uncertainty surrounded Plaintiffs'
rights (e.g. uncertain parentage), which could explain the lag in legal action. Where, as here,
Plaintiffs were aware of their rights, their causes of action accrued well outside the statute of
limitations, which constituted an absolute bar to all recompense. If Plaintiffs had been unsure of their
co-ownership rights, some damages may have been available. But Plaintiffs knew at the time of the
song's authorship that they were co-owners, and thus no requisite uncertainty was present. Even
assuming their actions were prevented by Defendants' actions, the statute of limitations kicked in at
the very latest by the eary 1980s, when the band acknowledged to the media they'd been "bilked" out
of ownership.Thus their lawsuit, filed in 1987, was too late.

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CASE: MERCHANT V LYMON - “Why Do Fools Fall in
Love?”
ON TOLLING SOL: The [lower] Court held that in order to toll a
statute of limitations, “the duress experienced by the injured party
must have been operating at the time the original cause of action
arose and must be continuous.” The Court then found that from
1961, the time the cause of action arose (after Plaintiffs [reach age
of] majority), until at least 1969, the time of the alleged threat to
Santiago, there was no evidence of duress [from 1961 until
1969], and therefore Plaintiffs were not entitled to a toll of the
statute of limitations.
PAGE 204 / EX. 11.1

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1. ABANDONMENT as a Defense
Abandonment of Copyright occurs when a copyright owner takes an
action that CLEARLY indicates an INTENT to surrender rights in the
work and allow others to use it without license or permission,
essentially donating the work to the Public Domain.
ABANDONMENT RARELY HAPPENS—But... see: www.creativecommons.org

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ABANDONMENT as a Defense
TEST: (1) Copyright owner must INTEND to abandon the work and (2) must
manifest this intent through some overt act.
BEST WAY: (1) state in writing on work and (2) recordation in Copyright Office
of intent to donate to PD (not required, but suggested)
NOTE: Should include a date stating WHEN the work is abandoned.
NO IMPLIED ACTION: If copyright owner fails to sue for infringement or other
similar action, abandonment will NOT be implied. This differs
Trademarks, which must be protected from getting watered down.

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2. INDEPENDENT CREATION as a Defense
Where a defendant can prove that the
alleged infringing work was in fact created
INDEPENDENTLY by the alleged infringer,
rather than copied from the plaintiff’s work.
HOW PROVED: The Defendant would have to prove any similarities in the
work was simply coincidental (i.e. – prove that alleged infringing work was
created BEFORE the plaintiff’s work, OR provide testimony from a witness
present at the time the alleged infringing work was created, OR provide dated
notes, files, etc. that show when the alleged infringing work was created).

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3. FAIR USE as an AFFIRMATIVE DEFENSE
WHAT IS FAIR USE? - Allows someone to use a
copyrighted work in a reasonable manner without
the copyright owner’s consent.
Intended to allow certain uses of copyrighted
works that encourage the advancement of
learning and knowledge.
EX: (11.5 / pg 207): A music reviewer’s quotation
of lyrics in a review of the song or album would be
fair use

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FAIR USE as an AFFIRMATIVE DEFENSE
IMPORTANT: Fair use is an AFFIRMATIVE DEFENSE …
NOT A RIGHT. In other words, you will not know for sure
whether a use is a fair use until you are hauled in to court
for infringement by the copyright owner and a court rules
that it is a fair use.
 There is an infringement, BUT, there is a public
benefit that leads the court to determine that the use
should be allowed.

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LANDMARK FAIR USE CASE:
FOLSOM V MARSH (1841)
FACTS: Marsh made an “edited” version Folsom’s work on George
Washington by copying a large portion of the original work.
ANALYSIS: The court looked at (1) the nature and objects of selections, (2)
the quantity and value of the material used, (3) degree to which it prejudiced
the sale of the original
HOLDING: Defendant’s use was not fair because it “unduly reduced the
economic incentive of the authors to produce.”
IMPORTANCE: Gave us the basis of the four-factor balancing test used to determine
whether a use is a fair use under the law. (First case to apply Fair Use doctrine)

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17 USC 107: FAIR USE
Notwithstanding the provisions of sections 106 and 106A,
the fair use of a copyrighted work, including such use by
reproduction in copies or phonorecords or by any other
means specified by that section, for purposes such as
criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or
research, is not an infringement of copyright.

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17 USC 107: (PC NASE)
In determining whether the use made of a work in any particular case is a
fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the
copyrighted work.

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FACTOR #1: PURPOSE AND CHARACTER OF THE USE
Is the use a COMMERCIAL or NON-COMMERCIAL purpose?
• Will weigh AGAINST fair use if commercial, but NOT all commercial purposes will
be deemed unfair uses.
Is the use for an EDUCATIONAL or some other SOCIALLY VALUABLE purpose?
• Does the PUBLIC BENEFIT from the use (i.e. - does the use provide information
, such as criticism or commentary – like a news report; or does it relate to
education, such as teaching and research) Will weigh FOR fair use if so, but is not
absolute
Is the use PRODUCTIVE or TRANSFORMATIVE?
• Does it change the original work to create something new and doesn’t merely
replace it; however a transformation may be outweighed by
commercialization
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FACTOR #2: NATURE OF THE COPYRIGHTED WORK
”Nature” means to look at the copyrighted work itself and what
kind of work it is rather than the type of use, etc. Is it
published? Is it a creative work or a factual work? Etc..
• Use of an UNPUBLISHED work is less likely to be found a fair use
than a published work – b/c the copyright owner of the work may
have wanted to keep the work private
• If the original work is made up of facts, the use is likely a fair use
b/c facts should be free for everyone to use
• The least important of the four factors 19

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FACTOR #3: AMOUNT AND SUBSTANTIALITY OF THE PORTION
USED
In GENERAL, the greater the portion used, the less likely it will be found a fair
use
• NO ABSOLUTE RULE (No “Bright line”)
• Must consider not only the amount but also the substantiality of the portion of the
work used - If very small portion of the work is used, if it is crucial to the work as a
whole, probably not a fair use
EX: 11.10—If Beethoven’s 5th Symphony was not in public domain, it is likely that the
first four notes of that piece would be deemed “crucial” and therefore a use would not
be a fair use
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FACTOR #4: EFFECT OF USE ON THE POTENTIAL MARKET
OR VALUE
An analysis of how the defendant’s use will affect the value of the
copyrighted work – both ACTUAL markets and POTENTIAL markets
• A commercial use will often be presumed to have an adverse
impact on the market for the copyrighted work (BUT can be
overcome by evidence and/or facts to the contrary)
• THE MOST IMPORTANT FACTOR. WHY? (Us © is an economic
based theory and this factor reflects on monetary effect)

PARODY
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PARODY = A TYPE OF FAIR USE
A literary or artistic work that imitates the characteristic style of the
author of the copyrighted work or the work itself for comic effect or
ridicule. THE WORK COPIED MUST, AT LEAST IN PART, BE THE
OBJECT OF THE PARODY. It must COMMENT UPON or
CRITICIZE the original.
SATIRE = Involves the use of a copyrighted work in order to
comment on or make fun of SOMETHING OTHER THAN the
copyrighted work. Satire is NOT as likely to be deemed a fair
use b/c it is not necessary to use a copyrighted work to comment
on or criticize something other than the work

PARODY
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PARODY vs SATIRE:
VIDEO: https://youtu.be/M5tKV3m5ec4

PARODY
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PARODY vs SATIRE:
The difference is INTENT.
Parody is meant to mock the original and may or may not
seek a reaction from society. It may be pure entertainment
or humor.
Satire is almost always a commentary or reflection on
society and seeks a reaction or tries to inspire thought or
change. (A Satire can contain elements of parody, but
does not have to.)

PARODY
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PARODY vs SATIRE:
Why protect a Parody but NOT a Satire?
Parody MUST use the copyrighted work in order to
comment on it or make fun of it.
Satire does not need the copyrighted work in order to make
its commentary. It could use another means.

Campbell v. Acuff-Rose
2 LIVE CREW: http://www.youtube.com/watch?v=65GQ70Rf_8Y ROY ORBISON: https://youtu.be/_PLq0_7k1jk
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BACKGROUND: 2 Live Crew composed a song called "Pretty Woman," a parody based
on Roy Orbison's ballad, "Oh, Pretty Woman." The group's manager asked Acuff-Rose Music if
they could get a license to use Orbison's song as a parody. Acuff-Rose refused to grant the
band a license but 2 Live Crew nonetheless recorded and released the parody. Acuff-Rose
sued for copyright infringement.
WHAT THE LOWER COURTS SAID: The District Court granted summary
judgment for 2 Live Crew, holding that their song was a parody that made fair
use of the original song under 17 U.S.C. § 107. The Fed Court of Appeals
reversed and remanded, holding that the commercial nature of the parody
rendered it presumptively unfair under the first of four factors; that, by taking the
"heart" of the original and making it the "heart" of a new work, 2 Live Crew had
taken too much under the third factor; and that market harm for purposes
of the fourth factor had been established by a presumption attaching to
commercial uses.

Campbell v. Acuff Rose
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WHAT THE SUPREME COURT SAID:
Factor 3: Court reasoned that the "amount and substantiality" of the portion
used by 2 Live Crew was reasonable in relation to the band's purpose in
creating a parody of "Oh, Pretty Woman". The majority reasoned "even if 2 Live
Crew's copying of the original's first line of lyrics and characteristic opening
bass riff may be said to go to the original's 'heart,' that heart is what most
readily conjures up the song for parody, and it is the heart at which parody
takes aim."
Factor 4: Court found that the Court of Appeals erred in finding a presumption
or inference of market harm (such as there had been in Sony). Parodies in
general, the Court said, will rarely substitute for the original work, since
the two works serve different market functions. However, the court
should consider the effect of licensing, and did mention it. 27

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HELD: The Supreme Court held that 2 Live Crew's commercial
parody may be a fair use within the meaning of § 107. Reversed the
Court of Appeals and remanded the case. On remand, the parties
settled the case out of court. According to press reports, under
terms of the settlement, Acuff-Rose dismissed its lawsuit, and 2 Live
Crew agreed to license the sale of its parody of the song. Although
Acuff-Rose stated that it was paid under the settlement, the terms
were not otherwise disclosed.
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While some may claim that the Supreme Court declared ALL
PARODY to be Fair Use in Campbell v. Acuff Rose. This is not true.
The main effect was to say:
“ The most important of the 4 factors were: 1) Was it
Transformative? 2) The effect on the market for the original.
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Despite there being a substantial amount of the song being used,
the court found didn’t find that determinative. WHY?
Musical works, by their nature are very difficult to parody
without using a substantial amount or part of the song.
Therefore, this factor is less important with musical works.
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So… How can you tell if something is fair use if you can’t
know for sure until a court decides on it??? You can’t! But
you can ask:
1. Is it just copying or is it somehow transformative?
2. Will the use compete with the original or harm it in
any way? (Licensing as well as Sales)
3. How much of the work is being used, both
quantitatively and qualitatively?
4. How important is the copied part to the original?

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Because Fair Use is never guaranteed, it may be best to get a
license anyhow.
For example: Weird Al Yankovic makes humorous versions of
popular songs. He makes sure to get a license for his
derivative works. WHY?
https://youtu.be/FklUAoZ6KxY
https://youtu.be/BwqFgnl4rMs
Best Practices? When in doubt, Get a license.

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De Minimus Copying:
MEANING: Inconsequential or insubstantial. If a copying
of a copyrighted work is determined to be de minimums, it
will NOT be an infringement.
• NO CLEAR LEGAL RULES (i.e. – No Bright Line)

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LANDMARK CASE: Bridgeport v Dimension Films (6th
Circuit Case)
BACKGROUND: NWA sampled a two-second portion of guitar riff from
Funkadelic’s song Get Off Your Ass and Jam in their song 100 Miles and Runnin’
without Funkadelic's permission and with no compensation paid to Bridgeport
Music.
LOWER COURT: Ruled that the incident was not in violation of copyright law.

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LANDMARK CASE: Bridgeport v Dimension Films (6th
Circuit Case)
APPELLATE COURT: Reversed the decision and ruled that the sampling was in
violation of copyright law. Under this interpretation, usage of any section of a
work, regardless of length, would be in violation of copyright unless the
copyright owner gave permission. In its decision, the court wrote: "Get a license
or do not sample. We do not see this as stifling creativity in any significant way."
This decision effectively eliminates the de minimis doctrine for digitally
sampling recorded music in the Sixth Circuit, and has affected industry
practice. However, the court expressly noted that the decision did not preclude the
availability of other defenses, such as fair use, even in the context of "sampling."

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INNOCENT INFRINGER Defense = Does not apply
THE FACT THAT A PERSON DOES NOT REALIZE THAT THEIR ACTIONS
ARE INFRINGING UPON WORKS OWNED BY ANOTHER IS NOT A
DEFENSE. (But a court may go easier on them.)
• One who infringes unintentionally is still liable for infringement.
• Under 17 USC 504 (c)(2) of the Copyright Act , if an infringer proves he
“was not aware and had no reason to believe that his actions constituted
an infringement” the court MAY reduce the statutory damages award.
• EX: 11.15—George Harrison “My Sweet Lord”– Court found that Harrison
“subconsciously infringed” the song and therefore the award of damages
was lower than it may have been otherwise.

Mbu 2520 spring 2018 chapter 11

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Mbu 2520 spring 2018 chapter 11