Non – profit organization Sports Fans Coaliti on NY, Inc. (“SFCNY”) operated the Locast service, which captures over-the-air (“OTA”) broadcast signals and retransmits them over the internet, enabling viewers to stream live television on their preferred internet-connected viewing device. The signals include copyrighted transmissions from plaintiffs’ broadcast stations. Locast has not paid for a license or obtained plaintiff’s consent to retransmit those programs.

Locast’ s retransmissions are available online to any registered user in the designated geographic area, even those who can access the original OTA signal using OTA television antennas. Locast recipients have free access to the full repertory of news and entertainment channels; but non-paying users’ programming is interrupted after every fifteen minutes of watching a single channel with a fifteen-second video requesting donations, and viewers then lose time re-acquiring the program.

To avoid that interruption in service, users can pay $5 a month for “preferred” (i.e. uninterrupted) access to the service, or can request that the service stop displaying the donation requests based on their financial circumstances.

Users who choose to pay receive the uninterrupted service for time correlating to the amount of the payment. For example, if the user pays the minimum $5 amount, she receives uninterrupted service for the entire month.

If the user pays less, the time period during which she receives uninterrupted service within the month is decreased on a pro-rata basis (e. g., $1 paid provides uninterrupted service for 20 % of the month). The obvious economic fact is that these “donations” are really a scale of fees for uninterrupted service, and it works. At the court proceedings moment, Locast was almost fully funded by payments from users.

Discussion

Section III(a)(5) of the Copyright Act sets forth certain limitations on a copyright holder’s exclusive rights.

Subsection (a) (5) states:

(a) Certain Secondary Transmissions Exempted. -The secondary transmission of a performance or display of a work embodied in a primary transmission is not an infringement of copyright if-

(5) the secondary transmission is not made by a cable system but is made by a governmental body, or other nonprofit organization, without any purpose of direct or indirect commercial advantage, and without charge to the recipients of the secondary transmission other than assessments necessary to defray the actual and reasonable costs of maintaining and operating the secondary transmission service.

Based on the undisputed facts, it is clear that the Locast service is not offered without charges other than those “necessary to defray the actual and reasonable costs of maintaining and operating” its service.

The payments defendants elicit from users are charges assessed on users to avoid constant service interruptions, regardless of whether defendants euphemistically call them publicly “recommended donations”. Locast users pay the minimum $5 monthly fee in exchange for month-long, uninterrupted service. It is not merely a recurring gift to a charitable cause. It is of no consequence that a number of users employ the service without paying.

In 2020 Locast made far more money from user charges than was necessary to defray its costs of maintaining and operating its service.

Defendants argued that Locast’s funding qualifies for the statutory exemption because payments from users are reinvested in the organization to cover costs of “maintaining an operating an expanding system”, and the costs of expansion are part of the operation.

But under the statute, income made from charges to recipients can only be used to defray the actual and reasonable costs of maintaining and operating the service, not of expanding it into new markets. The argument that Section III(a)(5) should not “prevent” a natural process of expansion misconceives the statutory structure.

Since portions of its user payments fund Locast’s expansion, its charges exceed those “necessary to defray the actual and reasonable costs of maintaining and operating the secondary transmission service”, which is the only exemption granted in Section 111 (a) (5).

The poster was used to promote the film at the Cannes Film Festival in 1994, as well as for the film’s theatrical release later that year. At the time of the photo shoot, Miramax paid Zahedi $10,000, although exactly what Miramax Film was paying for is the subject of these motions.

Neither party has produced a signed agreement identifying what rights either party retained in the photograph. Miramax obtained a copyright registration for the poster as a “key art transparency” from the Register of Copyrights in 2003. On Miramax’s copyright registration, Miramax checked the box to register a “2 Dimensional artwork,” not a photograph, and does not identify Zahedi as a contributor at all.

Zahedi obtained a copyright registration for his photograph in 2019. Zahedi’s copyright registration states the title of the work is “Poster for Pulp Fiction” and identifies the work as a photograph.

The Creation of the Photograph

Miramax’s Story

In Miramax’s version, Miramax developed the concept for the image and hired Zahedi to execute its vision, buying out all the rights. Tod Tarhan, a former Miramax art director who worked on the campaign for Pulp Fiction in 1994, described the process by which he and the rest of the Miramax team developed the concept for the Zahedi shoot.

He and colleagues developed the idea of depicting Uma Thurman as a “femme fatale,” including deciding on Ms. Thurman’s pose. Tarhan says he developed sketches for the poster in late 1993 or early 1994. The sketches are very similar to the image used in the Pulp Fiction poster: they depict Ms. Thurman lying on a bed in the pose used in the photograph, holding a book, with a gun lying on the bed in front of her.

Miramax paid the expenses for the photoshoot. Several Miramax witnesses testified that Miramax would not have hired Zahedi without a work-for-hire agreement. A very large number of Miramax files, however, are difficult to search. The documents have been in boxes since 2001, and were shipped across the country after Miramax’s New York offices closed in 2010 without a detailed inventory being performed. The files’ organization has been further disrupted by subsequent sales of the company. Miramax has not found a work for hire agreement.

Zahedi’s Story

In Zahedi’s version of what transpired, Zahedi took a low fee to work on an interesting shoot for a hotly-anticipated indie film project, and created an iconic and beloved image. In Zahedi’s version, his agent, Janet Botaish, was approached by Miramax for a photo shoot relating to Pulp Fiction in 1994. Miramax had a limited budget and offered Zahedi $10,000, below Zahedi’s standard fee, but Zahedi accepted because he was interested in the project.

The parties did not execute a work-for-hire agreement or other “buyout” agreement because Miramax “didn’t do contracts.” Zahedi orally licensed to Miramax the right to use the photograph on a physical poster to promote the movie, but did not otherwise grant Miramax a license to use the photograph. When the poster won a “Key Art” award from the Hollywood Reporter in 1994, Zahedi was credited as the photographer.

Uses Since 1994

Miramax has used the poster widely since Pulp Fiction’s release in 1994. Beginning in 1995, the poster appeared on the sleeve of VHS tapes that were available at Blockbuster and other stores. Beginning in 1996, the poster was used on the sleeve of LaserDiscs. Miramax says it always attached a copyright notice identifying Miramax as the copyright holder.

A 1994 script for the film published by Miramax Books, however, identifies the cover photograph (Zahedi’s photograph) as copyright Firooz Zahedi. The image has also appeared on T-shirts, socks, and other merchandise. In 2015, Zahedi received a Mia Wallace action figure as a gift. The packaging for the action figure prominently featured the poster. The action figure also had a Miramax copyright mark.

In 2019, Zahedi received another gift featuring his photograph, this time a pair of socks. It was this gift that caused Zahedi to file his registration of copyright, to contact Miramax, and eventually to file this lawsuit. Zahedi filed his complaint on May 19, 2020 and asserted claims for copyright infringement and vicarious or contributory copyright infringement against Miramax and 26 other defendants.

Miramax moved for summary judgment as to Zahedi’s entire complaint. Miramax argued that Zahedi’s claims are barred by the statute of limitations or, in the alternative, by the equitable doctrines of estoppel and laches, and that in any event Miramax, not Zahedi, owns the photograph as a work for hire. Zahedi moved for summary judgment as to the issues of his ownership of the photograph and on Miramax’s statute of limitations defense.

Statute of Limitations

A civil action for copyright infringement must be brought “within three years after the claim accrued.” In the Ninth Circuit, this means that in general, a plaintiff cannot recover for damages that occurred more than three years before suit was filed. There is an exception if a plaintiff lacked knowledge of the infringement prior to the three-year period preceding filing suit, and if that lack of knowledge was reasonable.

Ninth Circuit case law distinguishes, however, between “infringement” claims and “ownership” claims. Unlike infringement claims, “ownership claims accrue only once, at the time ‘when plain and express repudiation of co-ownership is communicated to the claimant, and are barred three years from the time of repudiation,’ because ‘an infringement occurs every time the copyrighted work is published, but creation does not.’”

The gravamen of this case is ownership. Where the gravamen of a claim is ownership, the statute of limitations will bar a claim if (1) the parties are in a close relationship and (2) there has been an “express repudiation” of the plaintiff’s ownership claim. Zahedi argues first that he is not in a “close relationship” with Miramax, and second that Miramax did not clearly and expressly repudiate his ownership.

Close Relationship

Zahedi argues he does not have a “close relationship” with Miramax, LLC. He notes that in other cases in which courts have found a “close relationship,” the parties had entered into contracts or express agreements regarding the work in question. There is no dispute that even if Zahedi owns the copyright in his photograph, he took the photograph at Miramax Film Corp.’s request and granted Miramax Film Corp. at least a limited license to use it for certain purposes.

Zahedi had a prior business relationship and at least a verbal agreement with Miramax regarding his photograph. Zahedi also argues that he was not in contractual privity with Miramax, LLC; rather, his agreement was with Miramax, LLC’s predecessor, Miramax Film Corp. This distinction is not determinative, however, with regard to whether Zahedi and Miramax had a close relationship.

Zahedi contracted with Miramax’s predecessor-in-interest. Zahedi knew Miramax, LLC was exploiting the photograph. Based on the definition established by binding Ninth Circuit authority, Zahedi and Miramax were in a close relationship.

Repudiation

Zahedi raises three arguments. First, Zahedi argues that Miramax’s copyright registration for the poster does not constitute an express repudiation of Zahedi’s ownership because it does not assert ownership of a photograph, but rather of a “2 Dimensional artwork.”

Second, Zahedi asserts that Miramax did not expressly repudiate Zahedi’s ownership by using its own copyright mark on items featuring the poster because Miramax credited Zahedi as the copyright holder of the photograph on the cover of the 1994 publication of the script.

Third, Zahedi contends that Miramax’s failure to pay him royalties for its use of the photograph does not constitute an express repudiation of his ownership.

Zahedi argues that Miramax’s copyright registration did not cover his photograph, and that the registration therefore did not serve as an express repudiation of his ownership of the photograph. His photograph and the poster are different: the photograph used on the poster is slightly altered from the original, and the poster also includes lettering and an “aging” effect to make it look like the tattered cover of a paperback.

Miramax did not check the “photograph” box on the copyright registration. Zahedi is correct that Miramax’s copyright registration does not provide constructive notice of Miramax’s claim of exclusive copyright ownership, because Miramax’s copyright registration could plausibly be understood to cover only the poster, and not the underlying photograph.

The Court need not decide whether Zahedi had constructive notice of Miramax’s repudiation, because he had actual notice. Where, as here, Zahedi actually knew that Miramax was exploiting a photograph of which he claimed ownership without giving him credit or royalties, his failure to bring suit to assert his ownership rights is fatal to his case.

Zahedi’s receipt in 2015 of an action figure prominently featuring the iconic photo, bearing Miramax’s copyright notice, and failing to credit Zahedi is uncontroverted evidence of his actual knowledge of Miramax’s plain and express repudiation of his ownership. It is clear that Zahedi understood in 2015 that Miramax claimed more rights in the photograph than Zahedi believed it had. Zahedi’s claim is therefore barred by the statute of limitations.

The question is whether Four Seasons front man Frankie Valli and other defendants associated with Jersey Boys infringed Woodard’s copyright in the autobiography, now owned by Donna Corbello, Woodard’s surviving wife. After many years of litigation the district court granted judgment as a matter of law (“JMOL”) on the basis that much of the alleged infringement concerned unprotected elements of the Work, and that any infringement of protected elements was fair use.

The U.S. Copyright Office’s records, it turned out, indicated that shortly before Woodard’s death in 1991, DeVito had registered the Work solely under his own name. The copy deposited with DeVito’s copyright application was identical to the Work written by Woodard with two exceptions: the title page now excluded Woodard and changed the title, and a single page in Chapter 41 was missing. Corbello was eventually able, without DeVito’s cooperation, to secure recognition of Woodard as a coauthor and co-claimant of the copyrighted Work; Corbello’s copyright of the work was registered in 2007.

Around the same time, Corbello learned through news accounts that writers of the Play had had access to the Work while creating the production and that DeVito was profiting from the Play’s success. DeVito confirmed that he had provided a copy of the Work to individuals who were involved with developing the Play to use in their research.

In 2007, Corbello sued DeVito for breach of contract and an equitable accounting, among other claims. The operative third amended complaint listed fourteen defendants – band members DeVito, Frankie Valli, and Bob Gaudio, as well as writers, directors, and producers of the Play – and twenty causes of action, including various forms of copyright infringement. DeVito subsequently settled with Corbello and was not a party to appeal.

The district court issued summary judgment orders that, taken together, adjudicated most of the claims. The court first declared that the Work was a joint work, that Woodard was a co-owner, and that Corbello, as successor-in-interest to her husband, had a 50 percent interest in the Work. But the court then entered summary judgment in favor of all defendants other than DeVito and one producer of the Play based on its interpretation of a contract between DeVito, Valli, and Gaudio.

A panel of appeal court reversed in part. On remand, the district court granted summary judgment in part, holding that, while there was substantial similarity sufficient to avoid summary judgment at least with respect to “thin” copyright protection, most of the similarities were based on historical fact or ordinary phrases, and the similarities based on protectable material were insufficient to entitle the work to regular “thick” protection as a matter of law.

The case proceeded to trial. The jury found for Corbello on the contract issue, and, on the infringement claim, found that the Play infringed the Work, use of the Work was not fair use, and 10% of the success of the Play was attributable to infringement of the Work. The jury was not asked to calculate or award damages.

After the verdict, the district court granted the Defendant’s motion for JMOL as to fair use, denied Defendant’s motion for JMOL on other grounds, and granted a motion for a new trial on apportionment. The appeal followed. The appeal court reviewed the grant of judgment as matter of law de novo. The parties’ central disagreements in this case are whether the Play is substantially similar to the Work and whether the defendants copied any protectable portions of the Work.

The substantial-similarity test

“The substantial-similarity test contains an extrinsic and intrinsic component.” The extrinsic test requires a three-step analysis: (1) the plaintiff identifies similarities between the copyrighted work and the accused work; (2) of those similarities, the court disregards any that are based on unprotectable material or authorized use; and (3) the court must determine the scope of protection (“thick” or “thin”) to which the remainder is entitled “as a whole.”

Only if the extrinsic analysis succeeds does the so-called “intrinsic” analysis takes place. The intrinsic test “examines an ordinary person’s subjective impressions of the similarities between two works,” and involves questions of fact determined by the jury under instructions as to the level of protection applicable.

Applying this framework, the district court, before trial, conducted the extrinsic analysis and granted partial summary judgment for the defendants, concluding that much of the alleged infringement in this case involved either elements original to the Play or similarities between the Play and unprotected elements of the Work, such as “historical facts or ordinary phrases.” Twelve alleged similarities between the Work and the Play survived this initial review and went to the jury.

In its post-trial order granting JMOL for Defendants, the district court concluded that most of the twelve remaining similarities were aspects of the Work not protectable by copyright. The court undertook this analysis as part of its conclusion that any infringement was fair use and did not explicitly frame its conclusions as rulings on infringement.

The appeal concluded that all twelve similarities the jury considered were not infringing, some under an analysis similar to that used in the district court’s order and others under what some courts have referred to as the doctrine of copyright estoppel. The appeal discussed each category in turn.

Application of the Extrinsic Test to Elements of the Work that Are Undisputedly Factual

The appeal first carefully examined whether the alleged copying or similarities are based on protectable elements of the copyrighted work. As the district court summarized, the Work is a work of historical fact, as recounted by DeVito with the assistance of Woodard’s writing skills.

The creative aspects of the Work do not generally concern things like character, plot, and setting, but rather writing style and presentation. Neither DeVito nor Woodard created or even claimed to have created any characters, plot lines, settings, etc.

Though the creative expression that is in the Work – the “writing style and presentation” – is protected by copyright, the assertedly historical elements are not. Each of the six similarities between the Play and the Work discussed below fails the extrinsic test for substantial similarity because each involves only non-protectable elements of the Work.

Tommy DeVito’s Introduction

Corbello alleged that description of DeVito is substantially similar to the one in the Play and so infringing. But DeVito is not a fictional character whose personality was created in the Work. This depiction of DeVito – as Corbello’s expert put it, his “voice, cool demeanor, and braggadocio” – is not original to the Work, and so not a protectable element. A character based on a historical figure is not protected for copyright purposes.

Introduction of the Song “Sherry”

Both the Play and the Work depict Bob Gaudio arriving late to a rehearsal excited about a new song he just wrote, “Sherry,” which – no surprise – became a major hit. As the district court concluded, the dialogues are completely different, as is DeVito’s initial reaction to the song. The only similarities are unprotectable historical facts: Gaudio wrote the song at the last minute, he was late to rehearsal, and the song was ultimately successful.

Introduction of the Song “Big Girls Don’t Cry”

Both the Play and the Work report that Crewe and Gaudio co-wrote the song. As the district court correctly concluded, the “only similarity is the unprotectable historical fact that the song was inspired by the Rhonda Fleming line.” That similarity does not include any protectable element of the Work.

Comparisons between the Four Seasons and the Beatles

The similarities between the Work’s allusions to the Beatles and the longer, more detailed and more evocative comparison in the Play are the words “social movement” and the unprotectable historical fact that the two music groups competed for record sales and chart placements. Even if the Work was the first to describe the Beatles as representing a “social movement” – which is neither proven nor disproven in the record – this concept is an idea unprotectable by copyright.

The expression of that idea could be protected if it was original to the Work, but use of the phrase “social movement” is all but inevitable in the presentation of that idea. The words “social movement” thus form an unprotectable common phrase describing an idea.

Introduction of the Song “Dawn”

It is an unprotectable historical fact that the Beatles and the Four Seasons generally competed for chart placement. That “Dawn” charted against songs by the Beatles is similarly an unprotectable historical fact. No protectable elements of the Work share any similarity with the “American Revolution” scene in the Play.

Description of the Rock and Roll Hall of Fame Induction Ceremony

Both the Play and the Work depict the Four Season’s induction into the Rock and Roll Hall of Fame in 1990. The Band’s members reunited at the induction ceremony and performed for the first time in many years. These historical events are not protectable by copyright.

The idea that band members performing together after many years apart would evoke the feeling of a time machine flows naturally from the plot premise of a band reuniting and is classic scenes-a-faire. And as the district court correctly ruled, the words “time machine” constitute an ordinary phrase and so is not protectable.

Application of the Extrinsic Test to Claimed Fictions Represented to be Facts—So-Called “Copyright Estoppel”

Under the doctrine, called the “copyright estoppel”, elements of a work presented as fact are treated as fact, even if the party claiming infringement contends that the elements are actually fictional. An author who holds their work out as nonfiction thus cannot later claim, in litigation, that aspects of the work were actually made up and so are entitled to full copyright protection.

“Given an express representation that the work is factual, the case law indicates that the author will be estopped from claiming fictionalization, even if most readers would not believe the representation.”

Detrimental reliance is not an element of this doctrine, as “the so-called estoppel is created solely by plaintiff’s affirmative action and representation that the work was factual.” Application of estoppel concepts often suggests that the party against whom estoppel is applied is in some way culpable.

It would hinder, not “promote the progress of science and useful arts” to allow a copyright owner to spring an infringement suit on subsequent authors who “built freely” on a work held out as factual, contending after the completion of the copyrighted work, and against the work’s own averments, that the purported truths were actually fictions. Copyright protects the creative labor of authors; it does not protect authors’ post-completion representations about the lack of veracity of their own avowedly truthful work.

Here, the text of the Work explicitly represents its account as historically accurate, not historical fiction. Both Corbello’s husband and she herself sent potential publishers cover letters emphasizing that the Work provided a behind-the-scenes factual look at the Band. Consistent with those promises of truthfulness, the Work reads as a straightforward historical account and is presented as an autobiography, with DeVito listed as a co-author. So the Work was expressly and repeatedly held out as a factual account.

Corbello argued strenuously that the asserted truths doctrine cannot apply in this case because the Work was never published. She argued that only representations of truth made to the public trigger the asserted truths doctrine, and that there was no representation to the public because the Work was unpublished.

This passing reference to “the public,” does not suggest that publication is a prerequisite to the application of the asserted truths doctrine; “the public” could include actual or intended readers of work, including works not mass produced for sale.

Requiring readers of purported nonfiction to investigate the accuracy of each quoted statement in a work that presents itself as completely true and accurate nonfiction would frustrate the pro-creation goals of copyright law.

Each of the six similarities between the Play and the Work the appeal next discussed fail the extrinsic test for substantial similarity because, whether or not actually factual, they involve – sometimes in combination with other non-protected features – elements of the work held out as facts and so not protectable.

DeVito’s Introduction of Valli to Mary and Mary’s Characterization

As the district court correctly concluded, “the Play copied no creative expression from the Work in relation to Valli’s introduction to or relationship with Mary. The Play used its own creative expression in telling the story of Valli’s interest in Mary. The historical facts of these events are not protectable by copyright.” Facts presented in a historical work, “whether correct or incorrect,” may be used by subsequent authors without infringing.

DeVito’s Intercession After Valli’s Arrest

Both the Play and the Work relay a story about DeVito helping Valli after he was arrested. The only similarities are the unprotectable historical fact of intervention by DeVito on Valli’s behalf and Valli’s probation sentence. That Valli testified at his deposition that neither story is accurate does not change analysis. It is not protectable creative fiction. As the Work holds it out as true that DeVito helped Valli, that asserted fact is not copyright protectable.

The “Roman Orgy” Scene

Both the Work and the Play depict a party the record label threw for the Band during their first nationwide tour. As the district court correctly noted, that the party took place is an unprotectable historical event.

Fake Murder in Valli’s Car

The Work and the Play both depict an incident in which some men attempt to extort money from Valli after staging a fake murder in his car. The incident itself is an unprotectable historical event, and Valli himself has told the story many times, including to the writers of the Play. The only similar expression is the “asshole” line. That line alone is unprotected by copyright because the Work holds it out as historically accurate dialogue. The Play may have “taken facts and ordinary phrases from the Work, but it has not taken protected expression.”

The Dialogue Surrounding the Song Title and Subject Matter of the Song “Walk Like a Man”

The Work and the Play feature a similar portrayal of the origin of the title of the song “Walk Like a Man,” written by Gaudio. The parties do not dispute that conversation actually happened, so the event itself is not protectable. They do dispute whether the particular language used in the Work was original expression, rather than a report of what was actually said.

The dialogue is held out by the Work as a historically accurate depiction of a real conversation. The asserted facts do not become protectable by copyright even if, as Corbello now claims, all or part of the dialogue was made up.

Conclusion

Given the Work’s emphatic representation that it is a nonfiction autobiography, the Play did not infringe on any of the protected expressive elements of the Work, even if the writers of the Play “appropriated Woodard’s historical research.” As the similarities between the Play and the Work involve only elements of the Work not protected by copyright, the appeal affirmed the district court’s grant of JMOL.

The IPEC is directed to coordinate enforcement efforts with an advisory committee made up of delegates from different federal agencies and to act as a principal advisor to the President on IP enforcement issues. Each year, IPEC issues an annual intellectual property report to Congress detailing the activities of the advisory committee during the preceding fiscal year.

In addition to submission of an annual report to Congress, the IPEC is tasked with coordinating with the advisory committee the development and implementation of a Joint Strategic Plan (“JSP”) against counterfeiting and infringement. Envisioned as the “framework for coordinating and assessing Federal efforts to combat piracy,” the JSP is released every three years.

The JSP’s objectives include reducing the number of infringing goods, identifying and addressing weaknesses in IP enforcement, ensuring that relevant information is shared among government agencies, disrupting and eliminating infringement networks, and protecting IP rights overseas through information sharing and enforcement coordination with other countries.

Related to the JSP’s objectives, the IPEC has encouraged various “cooperative efforts within the business community to reduce Internet piracy,” and to “address repeated acts of infringement.” Accordingly, the JSP directs federal agencies to conduct benchmark studies on initiatives currently in place and to consider future multi-stakeholder engagement.

The JSP also addresses measures that search engines, social media sites, and mobile applications can take, and recommends the use of multi-stakeholder processes to develop industry standards and best practices in each area.

Comments submitted in response to the development of the next JSP have addressed similar topics, including the use of technology to address online piracy and the challenges faced by creators to license content to large internet platforms.

Internet Policy Task Force

The Department of Commerce launched the Internet Policy Task Force (“IPTF”) in 2010 to identify public policy and operational challenges impacting the digital economy. In 2013, following a public process involving a series of stakeholder listening sessions and the receipt of written comments, the IPTF published Copyright Policy, Creativity, and Innovation in the Digital Economy (“Green Paper”).

Discussing challenges with online copyright enforcement, the Green Paper concluded that some gaps and shortcomings in existing legal tools “may require legislative solutions,” but that “voluntary initiatives are an important component.” The Green Paper identified the notice-and-takedown system as an issue that warranted further IPTF study and called for a multi-stakeholder forum to identify best practices for improving its operation.

The IPTF’s multi-stakeholder forum took place in 2014 and consisted of a series of meetings throughout the country, as well as smaller working and drafting groups. In April 2015, the IPTF issued a document developed by forum participants entitled DMCA Notice-and-Takedown Processes: List of Good, Bad and Situational Practices.

It provides a “set of agreed upon practices” aimed at “improving the efficiency of the handling and processing of DMCA notices by both senders and recipients.” These practices consist of common-sense guidelines aimed at both OSPs and rightsholders, such as OSPs making notice and counter-notice instructions easily located and understandable, and rightsholders establishing automated search parameters so that flagging non-infringing content is minimized.

While music publishers “usually own the copyright in the lyrics for a given song,” companies like Plaintiff and LyricFind “do not typically receive any actual lyrics transcriptions in connection with their licensing agreements,” and must otherwise generate or obtain the lyrics they have licensed for display. Plaintiff also “obtains lyrics directly” from artists.

Plaintiff “earns revenue in several ways,” including by “licensing its database of high-quality lyrics” to “major companies, such as Apple,” and by “generating ad revenue through web traffic on its website and apps.” All visitors to Plaintiff’s website are bound by terms and conditions, “which are accessible to users from all pages of website.”

The Terms of Service prohibit, inter alia, the unauthorized “licensing, copying, modification, sale, or transmission for any commercial purpose, of any portion of Plaintiff’s Service, or access to Plaintiff’s Service.” The Terms of Service also prohibit, inter alia, the unauthorized “modification, copying, sale, or distribution” of Plaintiff’s content, other than a user’s own content that a user has “legally uploaded” to Plaintiff’s website.

Many visitors arrive at Plaintiff’s website via a search engine, “most typically Google’s,” and website “is often the top-ranked organic search result on Google for lyrics search queries.” However, even if Plaintiff is the top-ranked organic result for a user’s lyrics search, a Google search feature known as an “Information Box” may still appear “above all other organic search results,” displaying “the complete lyrics for the requested song.”

Such lyrics Information Boxes are often “displayed in such a manner that the user cannot see any other search results without first scrolling down,” and significantly reduce the “click-through rate” to Plaintiff’s website.

When Google introduced the Information Box feature into its lyrics search results, Plaintiff “observed that the lyrics in those Information Boxes were sometimes identical, on a character-for-character basis,” to lyrics on Plaintiff’s website. Because such a match “is highly unlikely” given the particular nature of the lyrics transcription process, Plaintiff came to suspect that its “lyrics were being misappropriated.”

In August of 2016, in an effort to further investigate this suspected misappropriation, Plaintiff created a “digital watermark to embed in certain lyrics appearing on its site” (“Watermark #1”). In May of 2017, Plaintiff notified Google via email that it had found Watermark #1 in Google’s lyrics Information Boxes, “proving that Google was displaying lyrics copied from Plaintiff’s website.” In response to that initial email and subsequent follow-up communications by Plaintiff, Google informed Plaintiff that it was “looking into the issue.”

In April of 2019, Plaintiff “again notified Google, in writing, that it was displaying content misappropriated from Plaintiff’s website,” in response to which Google eventually “identified LyricFind as the source of the lyrics in the examples that Plaintiff provided to Google.” Plaintiff then “wrote to LyricFind to request that it cease and desist from the misappropriation and commercialization of content appearing on Plaintiff’s website.” Despite having been “placed on actual notice of their behavior,” Defendants failed to take “any steps to cease such conduct.”

Soon after Google began adding source attributions to its lyrics Information Boxes, including attributions to LyricFind for lyrics that Plaintiff had previously notified Google appeared to be taken from Plaintiff’s website. Around the same time, Plaintiff “discovered that Watermark #1 had disappeared from Google’s lyrics Information Boxes.”

Suspecting “a deliberate effort to conceal continued misappropriation of lyrics from Plaintiff’s website,” Plaintiff created a second watermark, this time designed to spell out the word “GENIUS” in Morse code (“Watermark #2”). In a number of instances involving lyrics in which Plaintiff had embedded both Watermark #1 and Watermark #2, Plaintiff observed that Watermark #2, “the details of which had not previously been made public,” was present, while Watermark #1 was not.

On November 6, 2019, Plaintiff informed Google of these findings, and “demanded that Google stop displaying lyrics misappropriated from Plaintiff’s website and address the issue.” In response, Google asserted it had not done anything wrong, and stated that it had “‘obtained additional assurances’ that their data partners ‘do not, and would not, obtain lyrics from Plaintiff’s website.’”

On December 3, 2019, Plaintiff commenced its action, asserting claims for (1) breach of contract, based on Defendants’ alleged violation of Plaintiff’s Terms of Service; (2) indemnification for “damages and incurred expenses including attorneys’ fees and lost advertising and licensing revenue,” pursuant to Plaintiff’s Terms of Service; (3) unfair competition; and (4) unjust enrichment. Plaintiff sought money damages and injunctive relief.

Breach of contract claims

Plaintiff’s breach of contract claims are nothing more than claims seeking to enforce the copyright owners’ exclusive rights to protection from unauthorized reproduction of the lyrics and are therefore preempted. Plaintiff asserted that its contract rights for use of the lyrics transcriptions are “separate and apart” from the copyright owners’ exclusive rights in the lyrics.

Plaintiff’s argument is, in essence, that it has created a derivative work of the original lyrics in applying its own labor and resources to transcribe the lyrics, and thus, retains some ownership over and has rights in the transcriptions distinct from the exclusive rights of the copyright owners.

Plaintiff’s breach of contract claims are based on the theory that Defendants breached their obligation under the Terms of Service by using Plaintiff’s lyrics — LyricFind by selling those lyric transcriptions to Google and Google by employing and displaying those lyric transcriptions in its search engine.

Unjust enrichment claims

Plaintiff’s unjust enrichment claims are preempted because they fall within the scope of the Copyright Act. Plaintiff alleged that LyricFind copied content from Plaintiff’s website and then “benefitted by entering into licensing agreements with content partners whereby LyricFind received compensation for distributing content misappropriated from Plaintiff’s website,” and that those “benefits came at Plaintiff’s expense.”

Plaintiff similarly alleges that Google benefitted from its “misappropriation of content from Plaintiff’s website,” by “retaining users in and among Google-owned properties further concentrating its market power,” and that these “benefits came at Plaintiff’s expense.”

Because the “gravamen” of Plaintiff’s unjust enrichment claims is that Defendants were unjustly enriched by their use of Plaintiff’s lyric transcriptions — work that, as discussed above, is within the scope of the Copyright Act — these claims are preempted.

Unfair competition claims

Plaintiff’s unfair competition claims are preempted by the Copyright Act. Plaintiff alleged that Defendants “misappropriated content from Plaintiff’s website,” in “an unjustifiable attempt to profit from Plaintiff’s expenditure of time, labor and talent in maintaining its service,”. Plaintiff’s claims are precisely the type of misappropriation claims that courts have consistently held are preempted by the Copyright Act.

Given that the Court found that all of Plaintiff’s state law claims are preempted by the Copyright Act, and Plaintiff has not asserted any federal law claims, the Court dismissed the Complaint for failure to state a claim.

Bain alleged that Haid asked Bain to allow Haid to add scenes from the Film to her acting reel, but Bain refused, fearing that release of portions of the Film could hinder Bain’s efforts to obtain a distribution deal for the film. The Film was exhibited at a number of film festivals in 2016 and distributed on streaming platforms and through other avenues beginning in 2018.

In 2017, after the Film was screened at film festivals, but before a wider commercial release, Haid obtained a watermarked copy of the Film. Haid retained LA Media Works, Corp. (“LA Media”) to edit scenes from the Film to create an acting reel she could submit to casting directors so that Haid could obtain additional acting roles in other productions.

LA Media removed the watermark from scenes in the film in which Haid appeared when it created the reel. LA Media created at least two versions of the acting reel, one version was approximately 2 minutes and 50 seconds, and the other was approximately 3 minutes and 39 seconds. The longer of the two versions of the reel includes approximately 40 clips from the 95 minute film.

In August 2017, Bain discovered Haid’s reel on LA Media’s website. On August 11, 2017, an attorney representing Bain contacted Haid and demanded that she destroy all copies of the Film and to remove the reel from the internet. Haid did remove the reel from the internet and stated that she did not possess a copy of the Film as of August 31, 2017.

Bain commenced action on May 16, 2018, and asserted claims for: (1) copyright infringement; (2) vicarious and/or contributory copyright infringement; (3) violations of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1202; and (4) conversion. The Court granted Haid’s Motion to Dismiss the conversion claim.

Haid then filed, on August 28, 2018, a Counterclaim against Bain. According to the Counterclaim, among other allegations, Bain exposed Haid to unsafe conditions on the film set and, given the length of time Haid was on set, and the daily flat rate Haid was paid, Bain failed to pay Haid minimum wage for her work on the set, failed to pay her for reshoots or promotional work for the Film, and did not provide wage statements required by California law.

Haid, contended that the portions of the Film used in her acting reel qualify as “fair use,” sought summary judgment on Bain’s copyright claims. Haid also claimed that she is entitled to summary judgment on Bain’s DMCA claim because Bain has no evidence that Haid possessed the required intent for DMCA liability.

Purpose and Character of the Use

Haid’s reel is transformative. Unlike the Film, which seeks to tell a story involving the sexual exploitation of women, the reel tells no story. The reel’s purpose is to provide information about Haid’s acting abilities so that casting directors may become interested in casting her in other roles. The reel changes the original work by showing mostly brief portions of selected scenes in a manner that conveys little information about the plot of the film. This factor therefore weighs strongly in Haid’s favor.

Nature of the Copyrighted Work

Here, by the time Haid created the reel, the Film had screened at approximately 6 film festivals, but had not been released commercially. As a result of both the Film being close to the “core of intended copyright protection” and the limited nature of the Film’s release prior to the creation of Haid’s reel, the Court concludes that this factor weighs in favor of Bain.

Amount and Substantiality of the Portion Used

Even the longer version of Haid’s reel, at 3 minutes and 39 seconds, comprises less than 4% of the Film’s 95 minute length, with all but 2 of the 40 clips lasting less than 10 seconds. The reel’s use of 1 minute and 9 seconds from the 2 minute and 37 second motel scene, which Bain characterizes as “the most pivotal scene in the Film,” presents a closer question.

However, the Ninth Circuit “has acknowledged that this factor will not weigh against an alleged infringer, even when he copies the whole work, if he takes no more than is necessary for his intended use.” Even here, the length of the scene used in the reel serves the purpose of conveying Haid’s acting range in a way that a shorter clip from that scene might not. This factor therefore weighs in favor of Haid.

Effect of the Use on the Potential Market

Although Bain characterizes Haid’s use as “commercial,” because Haid hoped to obtain payment for additional acting jobs she might obtain as a result of the distribution of the reel to casting directors, there is no evidence that Haid ever required payment for her reel or distributed the copy of the Film saved on her Google Drive to anyone other than LA Media for creation of the reel.

There is no reasonable probability that distribution of an actor’s reel like those prepared for Haid to casting directors – the intended “market” for such a reel – would interfere with the profitability of or market for a film. The Film and the reel serve different market functions. This factor therefore weighs in favor of Haid.

Of the four factors, only the nature of the copyrighted work favors Bain. The remaining factors, based on undisputed facts, weigh decidedly in favor of a finding that Haid’s reel was a transformative use of the Film, for a different purpose, using a limited portion of the original work, and without causing a substantial effect on the market for the Film.

The Court therefore concluded that Haid’s use of the Film for her reel was “fair” for purposes of 17 U.S.C. § 107, and that Haid is entitled to summary judgment on Bain’s copyright infringement claims.

The Copyright Office plans to build upon the recommendations in the Report by facilitating discussions among a wide range of stakeholders, with a particular focus on ensuring that those who have not traditionally participated in the development of prior voluntary measures – such as small creators and individual users – have a meaningful opportunity to participate.

To this point, the Office believes it would be essential for technologists from the relevant industries to participate in the discussions to evaluate the effectiveness and feasibility of adopting certain measures as STMs.

The Office anticipates two potential hurdles that could ultimately impact the success of these discussions: (1) without regulatory authority, the Copyright Office’s ability to facilitate the adoption of STMs is limited to its ability to secure the cooperation of relevant parties, and (2) the current wording of the statute contains certain ambiguities that may limit the universe of potential qualifying technologies.

Regulatory Authority

In the Report, the Copyright Office suggested that Congress may wish to consider providing the Office with regulatory authority to facilitate the identification and adoption of STMs. Delegating such regulatory authority to the Office would lessen the likelihood that the identification of STMs could be blocked by a small minority of stakeholders.

Statutory Ambiguities

Without legislative change or regulatory authority, the current wording of section 512(i) contains ambiguities that could impede the identification and adoption of STMs. The Office anticipates that these ambiguities would be the subject of discussion during the kick-off meeting, in an effort to reach consensus on the scope of potential STMs. Some of the questions raised by the current statute include the following:

• Under section 512(i)(2)(A), a measure can qualify as an STM if it has been “developed pursuant to a broad consensus of copyright owners and service providers in an open, fair, voluntary, multi-industry standards process.” It is unclear what level of agreement among stakeholders is sufficient to constitute a “broad consensus.”
• Under section 512(i)(2)(B), a qualifying measure must also be “available to any person on reasonable and nondiscriminatory terms.” It is unclear whether this language is merely intended to serve as a threshold requirement for a technology to be defined as an STM, or whether it may carry an obligation, once a technology has been defined as an STM, to continue to make it available on reasonable and nondiscriminatory grounds.
• Under section 512(i)(2)(C), an STM must not “impose substantial costs on service providers or substantial burdens on their systems or networks.” However, given the variation in size among OSPs and their associated ability to carry any costs associated with implementation of a particular STM, some smaller OSPs may be negatively impacted more significantly than others. Some stakeholders have raised the concern that a requirement to implement such technologies could thus result in further entrenchment of incumbent stakeholders. It is unclear, then, whether the substantiality of costs and burdens on an OSP should be evaluated by an objective standard that looks at the average OSP, or a subjective standard that evaluates the costs and burdens on each specific OSP.
• • Section 512(i)(1)(B) states that an OSP must “accommodate and not interfere” with STMs. To the extent that a technology is defined as an STM, it would seem clear from this language that an OSP cannot block a rightsholder from using that technology on its own systems to identify and protect their works. However, the statute does not provide clarity as to an OSP’s obligation with respect to technologies that must run on the OSP’s system. Does 512(i)(2)(C) imply that an OSP must deploy such an STM on its system at its own cost? Does accommodation require that an OSP provide access to its system (including, potentially, its back-end) to allow a rightsholder to deploy an STM directly?

On August 27, 2019, the USPTO issued a request for comments (RFC) on patenting AI inventions. The USPTO received 99 comments from a wide range of stakeholders, including individuals, associations, corporations, and foreign IP offices.

On October 30, 2019, the USPTO issued a second RFC related to the impact of AI on other IP policy areas, including copyrights, trademarks, database protections, and trade secret law. The USPTO received 98 comments from a wide range of stakeholders, including individuals, associations, and corporations.

Following the conclusion of the comment periods, a team of experts assembled from across the USPTO to examine the responses and generate the report. The report is divided into two parts. Part I focuses on the first RFC solicitation dedicated to patenting of artificial intelligence technologies and provides AI context, legal background, and public comment synthesis, as appropriate, for each of the patent RFC questions.

Part II follows a similar format for the second IP RFC solicitation dedicated to non-patent intellectual property protections for artificial intelligence technologies, such as trademark, copyright, and trade secret. Below you can find briefly answers on some most interesting questions. All other questions and supplementary information you can find in full report.

Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law? Why or why not?

Under current U.S. law, a work created without human involvement would not qualify for copyright protection. However, a work created by a human with the involvement of machines would qualify for copyright protection if other conditions are met. The Supreme Court has long recognized copyright protection for creative works, even when an author is assisted by a machine.

The U.S. Copyright Office, in its Compendium of Practices (Third Edition), has addressed the question of human contribution to creative works. It notes that:

The Copyright Act protects “original works of authorship.” 17 U.S.C. § 102(a). To qualify as a work of “authorship,” a work must be created by a human being. …. Works that do not satisfy this requirement are not copyrightable. …. Similarly, the Office will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.

Accordingly, the U.S. Copyright Office will not grant a copyright registration unless the author is a human being. A draft update to the Compendium further specifies that works “produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author” will not be granted copyright registration.

The United States is a member of the Berne Convention, the leading multilateral agreement establishing the framework for international copyright protection, which has been incorporated in large part in the TRIPs Agreement and subsequent U.S. free trade agreements. The Berne Convention has been interpreted to require protection only for works that are original and created with human involvement.

Assuming involvement by a natural person is or should be required, what kind of involvement would or should be sufficient so that the work qualifies for copyright protection?

U.S. law requires a minimum threshold of human creativity to qualify for copyright protection. A work’s copyrightability depends on whether creative expression, contributed by someone who can reasonably be described as an author of the work, is evident in the resultant work.

To the extent an AI algorithm or process learns its function(s) by ingesting large volumes of copyrighted material, does the existing statutory language (e.g., the fair use doctrine) and related case law adequately address the legality of making such use? Should authors be recognized for this type of use of their works? If so, how?

Existing statutory and case law should adequately address the legality of machine “ingestion” in AI scenarios. Mass digitization and text and data mining (TDM), as relevant examples of other activities with copyright implications, may be considered copyright infringement or fair use, depending on the facts and circumstances at issue. Copyright law in its current form appears to be adaptable to new technologies and circumstances, including those raised by AI.

Copying substantial portions of expressive (copyrighted) works, even for non-expressive purposes implicates the reproduction right and, absent an applicable exception, is an act of copyright infringement. Depending on the copyrighted work and the activity taking place, it may or may not be eligible for an exception to the reproduction right.

Regardless of whether an “ingestion” use is determined to be an infringement or not in a given situation, there is a separate issue of whether authors of ingested works should be remunerated for these types of uses. Many publishers now include TDM terms in their contracts and expressly set a licensing fee for for-profit entities or permit licensing at no additional cost for researchers and public research organizations, while ensuring that the licensed content is machine-readable and searchable.

Advocates for authors have suggested that when copyrighted works are used as inputs into AI systems to train the AI to create works of authorship or engage in other activities that result in remuneration, the authors should be entitled to a share of the revenues generated by the AI. The recognition sought is not attribution but rather remuneration.

The ingestion of copyrighted works for purposes of machine learning will almost by definition involve the reproduction of entire works or substantial portions thereof. Accordingly, whether this constitutes copyright infringement will generally be determined by considering the applicability of the fair use doctrine, an exception set forth in section 107 of the Copyright Act, 17 U.S.C. § 107. Fair use is applied on a case-by-case basis, requiring courts to weigh several statutory factors, and is highly fact-dependent.

When AI algorithms or processes “learn” their functions by ingesting copyrighted works, reproductions of those works are made in the process as the works are digitized and/or “read” by the AI algorithms or processes. Some mass digitization scenarios may be a fair use, whereas others may be infringements.

Although mass digitization for purposes of machine learning (ML) “ingestion” processes — and large-scale ingestion of already-digitized works — has not yet been tested by the courts, some rights holders argue that AI trainers should be required to compensate the authors and rights holders whose copyrighted works their machines are ingesting as a simple matter of doing business.

Are current laws for assigning liability for copyright infringement adequate to address a situation in which an AI process creates a work that infringes a copyrighted work?

While an AI machine cannot currently own intellectual property rights, it may be able to infringe others’ rights. Federal copyright law sets forth a straightforward standard for copyright infringement: “Anyone who violates any of the exclusive rights of the copyright owner” is liable for copyright infringement.

If the AI’s owner takes sufficient action to cause the AI’s infringement — through programming, data inputs, or otherwise — the owner could directly or contributorily infringe. Alternatively, if AI becomes more autonomous, it is conceivable that an AI owner might be vicariously liable for the AI’s copyright infringement when the owner possesses the right and ability to supervise the infringing conduct and a financial interest in the infringement.

Are there other copyright issues that need to be addressed to promote the goals of copyright law in connection with the use of AI?

The term “AI” can comprise a range of meanings. For example, generative algorithms (i.e., algorithms that possess the ability to create data) are responsible for producing unique works of varying complexity.

These works can result from collaborative efforts between a human creator and an AI program, or they can result from an independent AI process or algorithm. Therefore, no bright-line rule about “AI and authorship” or “AI and copyrightability” can be made; rather, it depends on a human being’s role in tandem with AI in generating a creative output that is potentially copyrightable.

End users/consumers

In some cases, end users/consumers are concerned about the divergent implementation of the preservation exceptions across the EU and consider that more harmonisation of the preservation exception is needed in view of technological developments. Some end users/consumers also suggest broadening the scope of this exception, notably to allow public libraries and other beneficiaries to make the works in their collections available online.

Institutional users

The vast majority of institutional users report that they have experienced problems when trying to use an exception to preserve and archive specific works in their collections. They generally believe that the preservation exception is too narrow. Some point out that the mere preservation of works in their collection is not the sole reason why libraries and other institutions wish to reproduce them.

Other objectives include making these works more easily searchable or available across digital networks, including across research platforms and infrastructures. Some respondents highlight problems in relation to recital 40 of the InfoSoc Directive, according to which this exception should not cover uses made in the context of online delivery of content.

It is also stressed by some respondents that the exception should allow beneficiaries to go beyond the specific acts of reproduction which are currently allowed and that it should allow mass digitisation.

Institutional users also raise issues with ‘born-digital’ content and highlight that the preservation exception does not allow them to produce back-up copies of content (for examples articles) that they subscribe to.

More broadly, institutional users consider that licences are not a sustainable solution for the digital preservation of content in the long run. Licensors, for example publishers, may cease to exist and subscriptions may be stopped and, as a consequence, libraries and other institutions may lose access to content, which would prevent them from fulfilling their role as custodians of cultural heritage.

They also mention some difficulties with the fact that this exception only covers acts carried out without direct or indirect commercial advantage: they consider this requirement too broad and potentially problematic, for example when institutional users cooperate with commercial entities for preservation or other purposes.

It is proposed that the exception’s scope should clearly include format shifting. Some respondents in this category also call for the current exception to be made mandatory and for a clarification that contracts cannot override exceptions. Finally, some respondents suggest that the introduction of a ‘fair use’ approach in EU copyright law would help libraries and cultural institutions to fulfil their role.

Publishers/producers/broadcasters

They consider in particular that the preservation exception should not be broadened nor made mandatory. Generally speaking, for respondents in this category, legislative changes should only be considered in the presence of a market failure. Audio-visual producers refer to the principles and procedures for the digitisation of film heritage agreed upon in the context of Licences for Europe.

In order to prevent unnecessary harm to commercial markets, a distinction should be made between heritage/deposit libraries, which have a clear preservation mission, and other libraries when defining the beneficiaries of libraries exceptions and the conditions attached to them.

Collective management organisations (CMOs)

Some CMOs report that cultural heritage institutions in certain Member States digitise not only for preservation purposes but also to make digitised content easily accessible (online) to a wider public. Some respondents point out that licences are available to cover both activities (at least in a number of Member States) but report that, in their view, cultural institutions are not always willing to use them and remunerate rightholders for their use of copyright protected content.

Generally (draft), a videogame contains two major components: the audiovisual material and the computer program that runs the game. If the copyright in the audiovisual material and the computer program are both owned by the same entity, they should be registered together on one application. By contrast, if the copyright in the program and the audiovisual material are owned by different parties, separate applications will be required.

An application to register a videogame should clearly state whether the claim extends to the computer program, the audiovisual material, or both components. If the authorship is described simply as “videogame,” the registration specialist may communicate with the applicant if the scope of the claim is unclear from the deposit material. For example, if the deposit material does not include source code for the computer program, the claim will extend only to the audiovisual material.

Videogames are commonly released on several different platforms. Applicants often attempt to register each platform separately. Generally, when the same work is published in different versions, the Office will issue separate registrations for each version only if they contain separable copyrightable material.

If there are copyrightable differences in the audiovisual material (or the computer program) for each platform, the Office may issue a separate registration for each version. In this situation, the deposit material for each version should show some of the differences. In addition, the applicant should confirm, either in the Note to Copyright Office field or in a cover letter, that the audiovisual material (or computer program) differs between versions.

If the differences do not appear in the audiovisual content, but instead appear solely in the computer programming that is used to achieve compatibility with the hardware and/or software for a particular device, console, platform, or operating system, the applicant should register only one version of the audiovisual work. This version will cover the copyrightable content in the other versions.

If the audiovisual material is the same for each platform and the versions are published on separate dates, the applicant must register the version which was published first.

Karaoke Displays

Karaoke displays may be registered as audiovisual works if they contain a series of images other than scrolling preexisting lyrics. A display containing only scrolling preexisting song lyrics is not copyrightable.

Apps for Computers, Tablets, or Mobile Phones

Apps may constitute audiovisual works. Many apps contain a significant amount of preexisting artwork, such as icons. In such cases the preexisting material should be identified and excluded from the application, and the claim should be limited to the new copyrightable authorship. The new copyrightable authorship should be described as “audiovisual material,” rather than “app” or “computer app.”

Banner Advertisements

Some banner advertisements are comprised of images and words that flash or scroll (using Java or flash-based script) across a small window. Banner advertisements also may be comprised simply of images, text, and a link. The Office will consider the work as a whole to determine whether it contains sufficient copyrightable expression.

Slide Presentations

A slide presentation is a series of stills on a computer screen, videodisc, or videotape intended to be viewed as a single cohesive work, such as a PowerPoint presentation. If the work contains preexisting visual or aural material, that material should be identified and excluded from the claim, and the claim should be limited to the new copyrightable authorship.

Many works that contain audiovisual material also contain literary and visual arts authorship, and sometimes it is difficult to determine which type of work should be specified in the application. This is particularly true for CD-ROMs, multimedia works, and website content. As a general rule, the applicant should select the type of work that is appropriate for the predominant form of authorship in the works.

For example, a videogame that is primarily audiovisual should be registered as a “Motion Picture / AV Work.” A CD-ROM that contains a collection of photographs should be registered as a visual art work. A website that predominantly contains text should be registered as a literary work.

For some types of audiovisual works, the applicant may deposit identifying material instead of submitting a complete copy of the work. If the applicant uses the term “audiovisual” to describe the authorship in the work, the registration specialist will examine the deposit copy(ies) for audio and visual material.

If the applicant uses specific terms, such as “music” or “sounds,” the specialist will examine the deposit copy(ies) for that type of authorship. Thus, if the applicant submits identifying material in lieu of the entire work, the identifying material should contain the authorship that is specifically claimed in the application.