EXAM NO. ________
ARIZONA STATE UNIVERSITY
COLLEGE OF LAW
Monday, December 11, 2006 8:30 a.m.
This examination consists of a three essay questions that you are to answer in bluebooks or by computer. The total exam time is 2-1/2 hours. The problems will be weighted 25%-35%-40% in determining the grade on the exam, but you may allocate your time to the problems as you choose. The weights were determined very roughly by the number of issues I found in the problems in drafting model answers. If you wish to allocate your time according to the problem weights, you should devote 37-1/2 minutes to Problem 1, 52-1/2 minutes to Problem 2, and 60 minutes to Problem 3. However, I believe that you should have enough time to deal with all of the problems adequately without formally allocating such blocks of minutes to each one.
You are permitted to have with you and to use during the examination your textbook, the statutory supplement or other printed version of the Copyright Act, any class handout materials (including materials printed from the Course Materials web page for the class), your class notes, and any other written materials made by you or your study group (not photocopied from printed materials).
Base your answers SOLELY on the materials that were assigned on the syllabus or discussed in class. Please remember that your answers should RAISE issues, not eliminate them. Even if you are quite sure that your resolution of one issue eliminates the need to consider others, where significant issues arise with another resolution, try to deal with those issues on the assumption that the first issue is resolved contrary to your own approach to it. This is especially the case if there are facts in the problem that are relevant only to these subsidiary issues and that you have not made use of in resolving the primary issue. This is an EXAM, not real life! Do not give abstract lectures on copyright law (and, in particular, do not give back to me lengthy quotes concerning what you think I said in class), but in applying copyright law to the facts of a given problem, be sure you make full use of the facts that are given. If you have not used all the facts, you are probably missing an issue that you are expected to consider.
If you write your answers in longhand, please write legibly, double space, and ON ONE SIDE OF A BLUEBOOK PAGE ONLY. If you type or use a computer, try to type enough of the letters of each word correctly to make the word decipherable. Your score will be based on what is actually on the paper, not my guess as to what you might really have meant.
Problem 1 (25%)
Jones, a prominent person in politics and business, decides that someone should write his biography, to preserve knowledge of Jones’s good works for posterity. To this end, Jones contacts Writer and engages Writer to write Jones’s biography (the “Work”). The parties agree orally that Writer will work full time on the project, that the project will be completed in 1 year, and that during the project Jones will pay Writer $1,000 per week until completion. They also agree at that time that the Work will be deemed a “work made for hire” and that, when the Work is completed, Writer will transfer all of Writer’s copyright interest in the Work to Jones. Writer begins immediately, works full time on the project (using her own computer and other tools and spending time with Jones or on Jones’s property only to the extent necessary to collect the relevant information), and completes the Work in about 1 year, as projected. During that time Jones pays Writer the agreed-upon $1,000 per week, with no withholding of taxes but agreeing that Writer could take 2 weeks vacation, with pay, about half way through the project. When the Work is completed, Writer and Jones enter into a written agreement, signed by both, explicitly stating that the Work is a “work made for hire” and transferring all of Writer’s copyright interest in the Work to Jones. Jones immediately has the Work published, and it turns out to be quite a good seller, as biographies go.
Some 35 years later, after Jones’s death, copies of the Work are still selling well, and Writer suspects that a film version of the Work might be a big hit. Writer therefore becomes interested in terminating the copyright transfer to Jones. Does Writer have any termination rights with respect to this copyright transfer and, if so, when can she exercise them? (Assume all of the above facts can be p roved.)
Only authors have termination rights under section 203, and Writer is not the author if the work is a “work made for hire” (WMFH). (Moreover, there are no termination rights with respect to WMFHs.) That issue is determined under clauses (1) or (2) of the definition in section 101: (1) Did Writer prepare the Work as Jones’s employee within the scope of her employment? Aymes v. Bonelli (text page 317) notes that all cases in which the hiring party failed to extend benefits or withhold social security taxes have treated the hired party as an independent contractor. Here, Jones did extend one benefit, namely, 2 weeks of vacation, but the facts say nothing about health benefits, life insurance, a retirement plan, or other benefits common to the employment relationship. Moreover, Jones withheld no taxes of any kind. The facts tell us that Writer used her own tools, and it seems that she worked without much direct supervision from Jones, although that is not explicit in the facts. Additional factors cut in both directions: Writer was paid a weekly “salary,” which points in the direction of an employment relationship, and the duration was for a full year, which is longer than many employees stay on the job. On the other hand, there is no indication that Jones could assign Writer additional tasks during her year nor that Jones was engaged in any business that would normally hire people to write for them (let alone write biographies). While this is an “all the facts and circumstances” type of analysis, meaning that the conclusion could change if more facts were uncovered, on the basis of what we know it seems that Writer was not Jones’s employee and therefore the Work cannot be a WMFH on the basis of clause (1). In other words, Writer was an indede+kapendent contractor.
Clause (2) applies to independent contractors and requires a writing signed by both parties that the Work is to be deemed a WMFH, which we have in this case. The writing, however, was executed after the Work was finished, and the Seventh Circuit per Judge Posner has opined that the writing for this purpose must precede the creation of the work (text p. 329). However, the Dumas case (p. 329) holds that writing can be executed after completion of the work, as long as the parties agree at the time the work is commissioned, notwithstanding the strained logic of asserting that the characterization of “authorship” can actually be changed by a later agreement of the parties. (In Marvel (text p. 452), the court refused to allow the parties to agree retroactively that a work was a WMFH, but the facts are quite different from those presented here. In that case, there was no such thing as termination rights at the time the agreement was made, so the parties could not have been thinking of this particular effect of the characterization.) Here we have the oral agreement at the time of the commission, which was ratified in writing after completion. Judge Posner’s fears about marketability of the work cannot arise in this situation, because no third parties are involved between the oral agreement and the written agreement. I would say that the written agreement requirement of clause (2) has been satisfied.
However, clause (2) is effective to classify a work as a WMFH only if the work belongs to one of the nine categories specified: collective work, audiovisual work, translation, supplementary work, compilation, instructional text, test, test answer material, or an atlas. The Work is a literary work that does not fall into any of these categories. (It is not an “instructional text” because it is not designed for use in systematic instructional activities, although it, as any literary work, could be so used.) Because the Work is not in any of these categories, it cannot be deemed a WMFH under clause (2). NOTE: A number of answers concluded early on that the biographical work in question was not one of the nine allowed to be characterized as WMFHs under clause (2) and therefore made no use of the facts in the problem relating to the timing of the agreement between the parties, which were intended to bring out the knowledge they had of cases like Schiller & Schmidt, by Judge Posner, and Dumas. That cost them some points. The lesson is to READ EXAM INSTRUCTIONS CAREFULLY!
Because the Work is not a WMFH, Writer is the author of the Work and does have termination rights under section 203. Because the publication right was included in the transfer, the termination rights are exercisable 35 years after publication or 40 years from the date of the grant, whichever is earlier. Here, they both come to much the same result, namely, 35 years from the grant, because the Work was published “immediately” after the copyright was transferred. Writer can terminate by giving the notice required under section 203(a)(4). Because 35 years have already passed, and Writer must give at least a 2-year notice, Writer may set termination at any time between 2 and 5 years. If she waits more than 3 years, she will lose termination rights, because the effectrive termination date must be within the 5-year window set in section 203(a)(3) and a minimum of 2 years notice is mandatory.
Problem 2 (35%)
Author dictates a short story to her Brother, who as a family favor to Author takes the story down in shorthand and transcribes it into readable form on a word processor. Brother corrects obvious grammatical errors and eliminates all the "Ah"s and "Um"s but otherwise transcribes Author’s spoken words verbatim. Author dies shortly thereafter, and Spouse succeeds to Author's estate, including all of Author’s copyright rights in this short story, if any. Spouse considers the short story to be obscene and demands that Brother destroy all copies. Brother, however, believes that the story is a great work of literature and that it would be a travesty to keep it out of the world’s literary canon. Brother therefore makes the story available on the internet at his personal web site and emails the story to about 1000 libraries and individuals who he thinks would be interested in having and reading it. Spouse obtains a copy from Brother’s web site and uses that to register the copyright. Spouse then brings an action against Brother for copyright infringement. Brother defends on the ground that he is the author of the story, or at least a joint author, and that in any event his making the story available to others in the way he has was a fair use. Evaluate the issues in this litigation (but do not get into remedies if you conclude that Spouse does have a copyright that has been infringed).
First, whether the work is, in fact, obscene, is irelevant to the issue of whether the work is copyright protected. The authorities we have studied follow the Holmes dictum that courts should not get into qualitative decisions in deciding what is or is not copyright subject matter. Indirectly, however, it might affect a court’s decision on vague issues like fair use. For example, the court in Devils Films (text p. 299) declined to issue a discretionary preliminary injunction, which would enlist the assistance of the law in violating state and federal laws against the distribution of obscenity.
If Brother were either the author or even a joint author, he would have the right to do what he did. Although Brother did physically fix the work in tangible medium, the Andrien (text p.303-04) and Lindsay cases (text p.301) treats him as an “amanuensis” and not an author. That is, while Brother made the physical copy in which the work was first fixed, the work is the intangible that arose out of Author’s own intellectual creativity. Brother’s fixation of the work was perhaps a necessary condition of Author’s copyright, but Author remains the author of the work, not Brother.
Joint authors have only the obligation to account to the other copyright holders for profits made from exploiting the work. Each has the right to exploit the work as he or she sees fit. However, in order to be a joint author, one must contribute original expression to the work. By correcting Author’s grammatical errors, Brother may actually have eliminated some of Author’s “expression,” but since grammar is a standard system, it is difficult to see how that act results in authorship on Brother’s part. Similarly with respect to elimination of the “Ah”s and “Um”s. Moreover, the cases we studied make clear that even if a secondary author does contribute some protectable expression to the final product (of which there is no evidence here), that person does not become a joint author unless the primary author had the intention that the two would be considered joint authors. There is no “objective manifestation” of such intent on Author’s part here. Consequently, Brother will not be considered a joint author, either.
Brother has made and distributed copies of the protected work, in which Spouse now owns the copyright. Prima facie, these actions infringed Spouse’s reproduction and distribution rights under sections 106(1) and 106(3). Brother’s only defense, therefore, is fair use.
Fair use analysis always begins, although it may not end, with the four factors of section 107. Factor 1 looks to the purpose and character of the use, in particular whether the use is commercial and whether the use is transformative. Here there is no evidence that Brother has sought to profit from his infringing activities. Rather, his goal was to assure that the story would be available to society, which is a goal that copyright, at least in general, is designed to promote. The story was reproduced verbatim, which means that the use was not transformative. This normally cuts against fair use. While Blanch v. Koons (text p. 733) says that a different goal may make even a verbatim use “transformative,” here Brother’s “use” of the story is that same as that the copyright owner would make, namely, distributing it to others simply to read for what it is. Nevertheless, if the goal of making the work available to the public is sufficient to override the copyright owner’s interest in seeking to keep the work unpublished, the absence of a transformative use should not change the result. Thus, the key question is whether the copyright owner has a stronger interest in suppressing the work than the public has in access to it. This is the key tradeoff that runs through all of the fair use analysis.
Factor 2 looks to the nature of the copyright-protected work. A short story, as a fictional literary work, is at the traditional core of copyright, so this factor cuts against fair use. Moreover, the work is unpublished, and Harper & Row (text p. 746) makes much of the author’s right of first publication. That a work is unpublished is no longer conclusive on fair use, as section 107’s last sentence makes clear, but it remains a factor in the Factor 2 analysis. This case is obviously distinguishable from Harper & Row, where the work in question was already scheduled for publication by the copyright owner, so its holding that there was no fair use in that case would not deprive the public of access to the work in a similar case for more than a few weeks. Here, however, the public will be denied access forever (especially if the copyright owner is successful in his demand that all copies of the work be destroyed). In Salinger (text p. 759), private letters of a living author were publicly available in a university library. The letters were not copied in full, but a number of sentences were taken either verbatim or closely paraphrased in an “unauthorized” biography of the author. The court held that fair use was unavailable to the biographer/defendant. Because the taking in Salinger was much less than here, its holding would seem more strongly to support the copyright owner’s claim in this case. However, on the other side is the point that the letters were publicly available in the university library. Eventually, copyright in the letters will expire and they will be freely usable by subsequent biographers and others. On balance, Factor 2 seems to weigh somewhat against fair use, but it is a close case.
Factor 3 looks to the amount of the protected work taken, and here the entire work was used. However, even taking a work in its entirety does not mean that fair use is unavailable, as the Sony case (text p. 826) makes clear. Campbell says that the amount taken must be measured against the purpose of the use, asking whether quantity and quality of the material used are reasonable in relation to the purpose of the copying. Again, the question comes down to a balance of the public interest in dissemination of a work versus the copyright owner’s interest in suppressing all public knowledge of the work. If the public interest wins, the amount taken is exactly what is needed to satisfy that public-interest need, namely, the entire book. If the copyright owner’s interest in deciding whether and how the work gets disseminated wins, then copying the entire story must weigh against fair use. Thus, Factor 3 plays little role in the fair use analysis, as it weighs in the same direction as the basic policy balance is reconciled.
Factor 4 looks to the effect of the use on the market for or value of the work. In contrast to the usual case, here the copyright owner is not interested in the work’s economic value and seeks to suppress the market for it entirely. So, taken on its own (and the courts continue to repeat the litany that Factor 4 is “greatest among equals” in the fair use analysis), Factor 4 would seem to weigh in favor of fair use, because Brother’s actions have kept the work “alive” so that a market can actually develop at some point should this copyright owner (or a successor) choose to exploit it. How much should we weigh the copyright owner’s desire not to have a market in this work? This again brings us back to the basic question of whether the copyright owner’s interest in preventing dissemination of this work outweighs the public interest in having access to it.
Section 107 specifies only a nonexclusive list of four factors. Courts are free to consider other factors that bear upon the basic question of whether a given use was “fair.” As the Supreme Court said in Campbell, the fair use doctrine permits and even requires courts not to apply copyright law rigidly when it would stifle the creativity copyright is designed to foster (text p. 719). If Author were still alive and seeking to suppress dissemination of the work, we would be more sympathetic to her claim. Authors who wish to keep some of their canon unpublished, for whatever reason, should normally have their wishes respected. Even after their deaths, we may wish to respect such a wish if the author has left a clear indication that he or she does not want the work to see the light of day. Here, however, Author not only left no indication that she wanted the story suppressed; she actually took the trouble to dictate the story to Brother shortly before her death, presumably (in the absence of more facts) because she wanted the story to be published. Spouse is Author’s successor as copyright owner, but there is at least some reason to believe that his characterization of the story as obscene does not comport with Author’s own view of the story when she dictated it. In a case like this, where the balance between a copyright owner’s unquestioned right to decide when, and even whether, to publish a work and the public’s interest in eventual access to the work are so nearly in equipoise, I believe this additional factor should be determinative. Unless there are additional facts showing that Author herself would have sought to suppress publication and distribution of the story, this very close case should be decided in favor of the free availability of a story that at least some believe is great literature and against the nonauthor copyright owner’s interest in its suppression.
There is at least once more consideration, however, that goes in the opposite direction. In this case, it is not clear who owned legal title to the first physical copy (fixation) made by Brother. That copy was made with the authority of Author, who dictated to Brother specifically for that purpose. Perhaps state property law will imply an agreement by Brother to turn the physical copy over to Author (or, in this case, to her estate). If, on the other hand, Brother is the owner of the copy, Spouse’s demand that it be destroyed would not be something Brother would be obliged to comply with. Consequently, it may not have been necessary, in order to preserve the work for posterity, for Brother to post the story on his web site or to send out copies as he did. He could showed his one legal copy to persons in private gatherings, and he could have given that copy to a library for safekeeping, where it could have been made available to others. Had Brother done so, the work would have been preserved along with the copyright owner’s practical position to market the work at a later time, should he or a successor choose to do so.
Problem 3 (40%)
The wonders of digital technology have allowed Dan to install on his car an electronic device that unlocks the doors and starts the engine (in park) when a pre-programmed English-language phrase is spoken near the vicinity of the car. Dan, who has never read any Shakespeare or seen any Shakespearean plays performed, thinks up on his own and writes down on a piece of paper the words “uneasy rests the head that wears a crown”, which he then programs into his car-starting device. As it turns out, the phrase “uneasy lies the head that wears a crown” is a famous line from the Shakespearean play Henry IV, Part II. Dan’s coworker Jane sees Dan’s words lying on Dan’s desk and guesses correctly what they are for. Jane circulates an email around the office (to everyone but Dan) saying that anyone who wants to take Dan’s car out for a spin can do so by simply saying the magic words “uneasy rests the head that wears a crown” near Dan’s car. When Dan goes for his car to return home at the end of the workday, he finds his car missing. He calls the police but nothing ever turns up. The car had a fair market value of $30,000.
Dan soon learns of Jane’s email. He thereupon duly attempts to register his phrase “uneasy rests the head that wears a crown” with the Copyright Office as a literary work, but the Copyright Office denies registration on the grounds that words and short phrases are not copyright protectable and that, in any event, this particular phrase was a trivial paraphrase of a public domain phrase. Dan brings a copyright infringement action against Jane, serving a copy of the complaint on the Register of Copyrights, seeking $30,000 in actual damages or, alternatively, statutory damages. Discuss whether (1) Dan has a valid copyright in his phrase “uneasy rests the head that wears a crown”; (2) whether the court has jurisdiction over Dan’s suit against Jane, given that the copyright has not been registered; (3) whether Jane has infringed if Dan does have a copyright in his phrase “uneasy rests the head that wears a crown”; and (4) what damages might be available if Dan’s copyright is available and Jane has infringed. Assume the facts as stated above can be proved (regardless of plausibility). Do not discuss fair use.
(1) A work must be original, in the sense that it is the product of the claimant’s intellectual processes, at least a little bit creative, and fixed in a tangible medium of expression in order for copyright to attach. Here, Dan fixed his work on the piece of paper on which he first wrote it. We should be loathe to deny creativity in the phrase, as we would be placing ourselves in the position of evaluating artistic quality, contrary to the Holmes dictum in Bleistein (text p. 35), and indeed expressing the near heresy that Shakespeare was not creative. But is the work original. “Original” in copyright means that the work arose from the author’s own intellectual thinking and not copied from other sources. The facts say that Dan was essentially ignorant of Shakespeare, so we may assume that he did not copy (with one small change) the Shakespearean phrase directly. Does that mean it was the product of his own intellectual efforts? The courts have adopted the notion of unconscious copying in the case of defendants who are charged with copyright infringement (Bright Tunes, text p. 518). There is no reason this same doctrine should not apply to copyright claimants who come up with famous phrases in the public domain. Had Dan claimed to have thought up the entire text of Henry IV, Part II, on his own, no one would believe him, no matter how sincere he was. The phrase in question is so well known that Dan may well have heard or read it in numerous places during his life and that he unconsciously adopted it as his own. Who should have the burden of proof on this issue is an interesting question. In Nichols, Judge Hand recognized the issue but did not have to address it because he found no infringement in any event. Even if Jane has the burden of proof, she can probably find enough examples of the use of Shakespeare’s phrase, and variants thereon, to convince a trier of fact that Dan did, at best, unconsciously base his phrase on Shakespeare.
Does Dan in any event have a derivative work copyright, given that he has made a slight modification of the Shakespearean phrase (“lies” becomes “rests”)? In copyright terms, this is rather a trivial change, substituting a single word for another that means much the same thing. We have seen that the creativity standards for getting a copyright in a derivative work are higher than those for original works of authorship in general, and this phrase is therefore unlikely to qualify.
Finally, the Copyright Office regulations have long denied copyright to “words and short phrases” (text p. 78). This rule is not necessarily based on lack of creativity, although the Magic Marketing court seemed to think that it was. Rather, as a policy matter it should be based on the notion that copyright in single words or short phrases would inhibit free and open discourse. A single word or phrase, even one newly and creatively coined (think of the first uses of “Eureka!” or “Where’s the beef?”), can become part of the common vocabulary that should others should be free to use, because once they acquire their colloquial meanings, there can be no substitute that conveys that same thought and mood. We can say that idea merges with expression in such short words and phrases, even if original (in the copyright sense) and creative. This, too, should serve as an independent ground for rejecting Dan’s copyright in the phrase.
Another ground for denying copyright protectability on these facts is that the phrase is functional. It is not used as literature but rather to unlock and start a car. This should not be a ground for denying copyright altogether as a literary work, if otherwise valid, however, and we will therefore take up the functionality problem in connection with the infringement analysis.
Finally, Dan’s attempt here to register the work was rejected by the Copyright Office, meaning that there is no presumption of validity under section 410(c). While courts typically give much less weight to the presumption in copyright cases than they do in patent cases, because the Copyright Office does not do a thorough search and will generally register a submitted work if it appears on its face to be copyright subject matter, this gives additional support for a court’s decision to decide the copyright protectability question according to common sense.
(2) Section 411(a) prohibits the bringing of an infringement action until registration. However, it makes an exception for works with respect to which an application for registration has been duly made but is rejected by the Copyright Office. That is the case here, so the court does have subject matter jurisdiction.
(3) If Dan does have a valid copyright in his phrase “uneasy rests the head that wears a crown,” did Jane infringe by making and distributing copies by email? At first blush it seems obvious that she did. She made a copy when she first typed the phrase into her computer, and she distributed the work at least to her coworkers. We do not know how many coworkers there were, and section 106(3) only gives the exclusive right to distribute to the “public,” which would not cover giving a copy to one or two friends. Looking at the definition of “public performance or display” in section 101, however, we may infer roughly that the public may consist of a “substantial number of persons outside of a normal circle of a family and its social acquaintances.” If there are more than twenty or so coworkers, it would likely constitute a distribution. In any event, Jane clearly made copies by sending them around the office, implicating section 106(1)’s exclusive right of reproduction.
The problem with this highly formalistic approach to analyzing infringement in this case is that Dan’s work has an intrinsic utilitarian function other than simply to convey the information and poetry contained in the words he wrote down, namely, to unlock and start his car. Of course, there are many good reasons that others should not be able to use those words to “borrow” his car without his permission, but those reasons are exactly the same as those we would apply to someone who finds Dan’s physical key and uses that to unlock and start Dan’s car. The phrase, in other words, is essentially a functional key to Dan’s car. While the law should protect Dan’s interest in controlling his car, that is a property law question, not a concern of copyright. Here, Jane did not copy and distribute the phrase as a literary work, to be admired for its poetry or intrinsic meaning (that heads of state are always in danger). Rather, she acted like a practical joker to induce others to take Dan’s key and use his car. Here the joke went awry, but that is not and should not be a copyright concern. Copyright does not protect functionality (outside of computer programs and, possibly, architectural works), even in the form of literary works. The court in Sega (text p. 776) held that the interoperability information hidden in the object could be validly extracted, even via the path of reproducing the entire computer program in which the information was embedded. Admittedly, that was a fair use case and the information in question was not copyright protected (as we are now assuming here), but we argued in class that the result in that case should not have changed had the interoperability information been an original poem or short story that had to be entered verbatim to allow the games in question to run on the console. Dan might argue that it was not necessary to make a copy of his work in order to make use of its functionality, and that seems literally correct. Had Jane simply spoken the magic phrase to Dan’s car, it would have started right up. This argument, however, cannot stand up to correct copyright analysis. Copyright simply does not regulate the making and distribution of physical keys, no matter how artfully and creatively designed they may be, and Jane has done the equivalent in the digital world. She may have broken some other laws respecting property, but we should not deem her actions to be an infringement of copyright, notwithstanding the formal making and distribution of “copies.”
(4) If Dan’s phrase is copyright protected and if Jane has infringed, Dan may seek actual damages resulting from the infringement, plus any of Jane’s profits. Jane has no profits, and Dan has no direct actual damages from things like lost sales, because he never intended to market his work and it is unlikely he could ever have done so, even as a pure literary work. After all, anyone wanting to use the phrase could simply copy from Shakespeare, whose works are in the public domain. (This shows how silly it is, as a practical rather than as an examination matter, even to assume that Dan’s phrase is copyright protected, but that is where Judge Hand’s Grecian Urn example takes us.) Can Dan recover the value of his car from Jane? Section 504(b) says the copyright owner may recover damages suffered “as a result of the infringement.” In a sense, Jane’s infringement was a “but for” cause of Dan’s loss of his car, because had she not sent her email, the car almost surely would not have been stolen. On the other hand, the Frank Music case (text p. 920) says that damages represent the degree to which the market value of the work has been impaired or destroyed. Had Jane simply gone around office to office telling people “You can start Dan’s car by saying ‘uneasy rests the head that wears a crown,’” she would not have infringed Dan’s copyright. (Because she, in this hypo, is not working from a copy, she would be engaged in a series of private performances, perhaps, but no public performance. The video rental cases are not on point, because they involve rental of the same copy to different people at different times.) The harm, in other words, is caused by transmission of the functional information content, which cannot be copyright protected, and not by the infringement in the form of copying and distributing the copies to others. If Jane had copied and distributed, say, an inflammatory diatribe by Dan against a given racial or ethnic group, and in response thereto someone burned Dan’s car or house down, Dan’s copyright damages against Jane should not extend to the house or car. The damages suffered by Dan in either case bear no relation to the economic interests that copyright is designed to protect. In statutory terms, the loss of Dan’s car does not represent damages “resulting from” the infringement.
Can Dan seek statutory damages and attorneys fees? Under section 412, neither can be awarded with respect to pre-registration infringements for unpublished works or for post-publication infringements more than 3 months earlier than registration. Here there was no registration at all, so it would seem that Dan is out of luck. But should “registration” in section 412 be interpreted to mean “registration or rejection following a due attempt to register”? It seems unfair to deny such benefits to copyright owners who have done everything they could to comply with the requirements for statutory damages and attorneys fees. If a court were to adopt this interpretation, Dan is still out of luck if his work is considered to be unpublished, because Jane’s infringement occurred prior to Dan’s attempt to register. If Jane’s circulation of the work counts as publication, however, Dan’s attempt to register upon learning of Jane’s actions (“soon” after they took place) probably puts him within the 3-month grace period of section 412(2). Was Jane’s circulation of the email a “publication” of Dan’s work? We did not study the issue of publication in any detail this semester, so no comprehensive answer was expected to this question. Generally, the older cases hold that unauthorized distribution of a work does not count as a “publication,” but those cases were mainly decided in the days when publication without the copyright notice could result in forfeiture of the copyright. Here, Jane has taken action that, if taken by the copyright owner, might well constitute “publication” of the work. (Given that there were no explicit or implicit limits on further dissemination of Jane’s email, it probably would not be considered a “limited publication,” and in any event maybe even a “limited publication” would be a “publication” for section 412 purposes.) There seems to be no policy reason why the actions by an infringer to distribute a work contrary to the wishes of the copyright owner should redound to the infringer’s benefit. The policy basis for section 412 is to encourage early registration of works, especially works designed for economic exploitation. Here, Dan could obviously have registered his work immediately upon its creation, but whether the registration would have issued in time to precede Jane’s harmful activity is questionable. I would conclude, therefore, that if Dan gets this far in his case, which is doubtful, he should be entitled to an award of statutory damages and attorneys fees.