Model Jury - Section 17
CIVIL INSTRUCTIONS
__________
17. COPYRIGHT
17.00 PRELIMINARY INSTRUCTION--COPYRIGHT
The plaintiff, ______________, the owner of a copyright, seeks damages against the defendant, _______________, for copyright infringement. The defendant denies infringing the copyright [and contends that the copyright is invalid]. To help you understand the evidence that will be presented in this case, I will explain some of the legal terms you will hear during this trial.
DEFINITION OF COPYRIGHT
Copyright is the exclusive right to copy. The owner of a copyright has the right to exclude any other person from reproducing, preparing derivative works, distributing, performing, displaying, or using the work covered by copyright for a specific period of time.
Copyrighted work can be a literary work, musical work, dramatic work, pantomime, choreographic work, pictorial work, graphic work, sculptural work, motion picture, audiovisual work, sound recording, architectural work, mask works fixed in semiconductor chip products, or a computer program.
[Facts, ideas, procedures, processes, systems, methods of operation, concepts, principles or discoveries cannot themselves be copyrighted.]
[The copyrighted work must be original. An original work that closely resembles other works can be copyrighted so long as the similarity between the two works is not the result of copying.]
[COPYRIGHT INTERESTS]
[The copyright owner may [transfer] [sell] [convey] to another person all or part of the owner's property interest in the copyright, that is, the right to exclude others from reproducing, preparing a derivative work, distributing, performing, displaying, or using the copyrighted work. To be valid, the [transfer] [sale] [conveyance] must be in writing. The person to whom a right is transferred is called an assignee.
One who owns a copyright may agree to let another reproduce, prepare a derivative work [of], distribute, perform, display, or use the copyrighted work. [To be valid, the [transfer] [sale] [conveyance] must be in writing.] The person to whom this right is transferred is called an exclusive licensee. The exclusive licensee has the right to exclude others from copying the work [to the extent of the rights granted in the license.]
[HOW COPYRIGHT IS OBTAINED]
[Copyright automatically exists in a work the moment it is created. The owner of the copyright may register the copyright by delivering to the Copyright Office of the Library of Congress a copy of the copyrighted work. After examination and a determination that the material deposited constitutes copyrightable subject matter and that legal and formal requirements are satisfied, the Register of Copyrights registers the work and issues a certificate of registration to the copyright owner.]
PLAINTIFF'S BURDEN OF PROOF
In this case, the plaintiff, ______________, contends that the defendant, ____________, has infringed plaintiff's copyright. The plaintiff has the burden of proving by a preponderance of the evidence that the plaintiff is the owner of the copyright and that the defendant copied original elements of the copyrighted work. Preponderance of the evidence means that you must be persuaded by the evidence that it is more probably true than not true that the copyrighted work was infringed.
LIABILITY FOR INFRINGEMENT
One who [reproduces] [prepares derivative works] [distributes] [performs] [or] [displays] a copyrighted work during the term of the copyright, infringes the copyright, unless licensed by the copyright owner.
[To prove that the defendant infringed the copyright, the plaintiff may show that the defendant had access to the plaintiff's copyrighted work and that there are substantial similarities between the defendant's work and the plaintiff's work [and that the defendant's work was not independently created].]
[Copyright may also be infringed by [vicariously infringing] [and] [contributorily infringing].]
[VICARIOUS INFRINGEMENT]
[A person is liable for copyright infringement by another if the person has a financial interest and the right and ability to supervise the infringing activity, whether or not the person knew of the infringement.]
[CONTRIBUTORY INFRINGEMENT]
[A person is liable for copyright infringement by another if the person knows or should have known of the infringing activity and [induces] [causes] [or] [materially contributes to] the activity.]
[DEFENDANT'S BURDEN OF PROOF]
[The defendant contends that there is no copyright infringement. There is no copyright infringement where the [defendant makes fair use of a copyrighted work by reproducing copies for criticism, comment, news reporting, teaching, scholarship, or research] [plaintiff has abandoned ownership of the copyrighted work].]
Comment
See generally 17 U.S.C. § 101 et seq.
17.01 COPYRIGHT--DEFINED (17 U.S.C. § 106)
Copyright is the exclusive right to copy. The owner of a copyright has the exclusive right to:
[1.] [reproduce the copyrighted work [in] [copies] [sound recordings]];
[2.] [prepare derivative works based upon the copyrighted work];
[3.] [distribute [copies] [sound recordings] of the copyrighted work to the public by [sale or other transfer of ownership] [or] by [rental] [lease] [lending]];
[4.] [perform publicly a copyrighted [literary work,] [musical work,] [dramatic work,] [choreographic work,] [pantomime work,] [motion picture] [or] [specify other audiovisual work]]; and
[5.] [display publicly a copyrighted [literary work,] [musical work,] [dramatic work,] [choreographic work,] [pantomime work,] [pictorial work,] [graphic work,] [sculptural work,] [the individual images of a motion picture] [or] [specify other audiovisual work]].
The term "owner" includes [the author of the work] [an assignee] [an exclusive licensee].
Comment
Note that there are exceptions to these "exclusive" rights. See, e.g., 17 U.S.C. §§ 107-120.
17.01.01 COPYRIGHT INTERESTS (17 U.S.C. § 501)
An owner of copyright is entitled to exclude others from copying the work.
An owner may enforce the right to exclude others in an action for copyright infringement.
Comment
17 U.S.C. § 106.
17.01.02 COPYRIGHT INTERESTS--JOINT AUTHORS (17 U.S.C. § 201(a))
An owner of copyright is entitled to exclude others from copying a joint work. A joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.
An owner of copyright in a joint work may enforce the right to exclude others in an action for copyright infringement.
Comment
17 U.S.C. §§ 101, 106, 501.
17.01.03 COPYRIGHT INTERESTS--AUTHORS OF COLLECTIVE WORKS (17 U.S.C. § 201(c))
An owner of copyright is entitled to exclude others from copying a collective work. A collective work is a work [such as [a periodical issue] [anthology] [encyclopedia]] in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole. The person who assembles the contributions of independent works into a collective whole is the author and is entitled to copyright. Copyright in a collective work is distinct from copyright in the separate contributions to the work.
An owner of copyright in a collective work may enforce the right to exclude others in an action for copyright infringement.
Comment
17 U.S.C. §§ 101, 106, 501.
1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 5.02 (1992).
17.01.04 COPYRIGHT INTERESTS--WORK MADE FOR HIRE (17 U.S.C. § 201(b))
An owner of copyright is entitled to exclude others from copying a work made for hire. A work made for hire is one which is prepared by an employee in carrying out the employer's business. The employer owns the copyright [unless the employer and employee have agreed otherwise in writing].
An owner of copyright in a work made for hire may enforce the right to exclude others in an action for copyright infringement.
Comment
17 U.S.C. §§ 101, 106, 501.
Community for Creative Non-Violence v. Reid, 490 U.S. 730, 739-740 (1989) (Congress used the words "employee" and "employment" in 17 U.S.C. § 101 to describe the conventional relationship of employer and employee.).
17.01.05 COPYRIGHT INTERESTS--ASSIGNEE--WRITTEN INSTRUMENT (17 U.S.C. § 201(d)(1))
An owner of copyright may [transfer] [sell] [convey] to another person all or part of the owner's property interest in the copyright, that is, the right to exclude others from copying the work. To be valid, the [transfer] [sale] [conveyance] must be in writing. The person to whom this right is transferred is called an assignee. [The assignee may enforce this right to exclude others in an action for copyright infringement.]
[The plaintiff is an assignee of the copyright.]
Comment
17 U.S.C. § 204(a).
"A `transfer of copyright ownership' is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license." 17 U.S.C. § 101.
Ownership of a copyright may also be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession. 17 U.S.C. § 201(d)(1). If the transfer occurred by operation of law, it need not be in writing.
Valente-Kritzer Video v. Pinckney, 881 F.2d 772, 775 (9th Cir. 1989) (letter reserving author's right to comment on agreement not a memorialization of agreement giving producer exclusive right to negotiation; execution must be in writing), cert. denied, 493 U.S. 1062 (1990).
17.01.06 COPYRIGHT INTERESTS--EXCLUSIVE LICENSEE (17 U.S.C.
§ 201(d)(2))
An owner of copyright may [transfer] [sell] [convey] to another person any of the exclusive rights comprised in the copyright. [To be valid, the [transfer] [sale] [conveyance] must be in writing.] The person to whom this right is transferred is called an exclusive licensee. The exclusive licensee has the right to exclude others from copying the work [to the extent of the rights granted in the license]. An exclusive licensee is entitled to bring an action for damages for copyright infringement.
[The plaintiff is an exclusive licensee of the copyright.]
Comment
17 U.S.C. §§ 101, 204(a).
3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 12.02[B] (1992).
Section 201(d)(2) of Title 17 provides: "Any of the exclusive rights comprised in a copyright ... may be transferred ... and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title." (Emphasis added.) The bracketed language in the fourth sentence--"to the extent of the rights granted in the license"--should not be needed in the typical case, in which the extent of the license and its applicability to the alleged infringing activity will have been established in pretrial proceedings.
An exclusive license must be in writing if it was granted after 1978. 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 10.03[A] (1992). If it was granted prior to 1978, however, an exclusive license may be oral or implied by conduct. Id. at § 10.03[B][1]. See also Effects Assocs. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990) (exclusive licenses must be in writing despite purported customary practice in the motion pictures industry not to have written licenses), cert. denied, ___ U.S. ___, 111 S. Ct. 1003, 112 L. Ed. 2d 1086 (1991).
"A `transfer of copyright ownership' is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license." 17 U.S.C. § 101.
17.01.07 COPYRIGHT INTERESTS--DERIVATIVE WORK (17 U.S.C. § 101)
An owner is entitled to copyright protection of a derivative work. The term derivative work refers to a [translation] [musical arrangement] [dramatization] [fictionalization] [motion picture version] [sound recording] [art reproduction] [abridgement] [condensation] [, or any other form in which a work may be recast, transformed, or adapted] that is based upon one or more preexisting works. [A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a derivative work.] Copyright protection of a derivative work extends only to the contribution of the author of the derivative work.
The owner of a derivative work may enforce the right to exclude others in an action for copyright infringement.
Comment
17 U.S.C. § 103.
"[A] work will be considered a derivative work only if it would be considered an infringing work if the material which it has derived from a preexisting work had been taken without consent of a copyright proprietor of such preexisting work. It is saved from being an infringing work only because the borrowed or copied material was taken with the consent of the copyright owner of the prior work, or because the prior work has entered the public domain." 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 3.01, at 3-3 to 3-4 (1992).
In order to qualify for a separate copyright as a derivative work the additional material injected in a prior work or the manner of rearranging or otherwise transforming a prior work must constitute more than a minimal contribution. 1 M. Nimmer & D. Nimmer, Nimmer on Copyright § 3.03 (1992).
17.01.08 COPYRIGHT INTERESTS--COMPILATION (17 U.S.C. § 101)
An owner is entitled to copyright protection of a compilation. A compilation is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.
The owner of a compilation may enforce the right to exclude others in an action for copyright infringement.
Comment
The term "compilation" includes collective works. 17 U.S.C. § 101.
17.02.01 COPYRIGHT--SUBJECT MATTER (17 U.S.C. § 102)
Original works of authorship [fixed] [produced] in any tangible [medium] [form] of expression from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device are protected by the Copyright Act. Works of authorship include [the following categories]:
[1.] [literary works;]
[2.] [musical works, including any accompanying words;]
[3.] [dramatic works, including any accompanying music;]
[4.] [pantomimes;]
[5.] [choreographic works;]
[6.] [pictorial works;] [graphic works;] [sculptural works;]
[7.] [motion pictures] [and other audiovisual works;]
[8.] [sound recordings;]
[9.] [architectural works;]
[10.] [mask works fixed in semiconductor chip products;]
[11.] [computer programs].
[Copyright protection for an original work of authorship does not extend to any [idea] [procedure] [process] [system] [method of operation] [concept] [principle] or [discovery], regardless of the form in which it is described, explained, illustrated, or embodied.]
Comment
17 U.S.C. § 901 et seq.
Facts are not copyrightable; compilations of facts may be copyrightable. Feist Publications v. Rural Tel. Serv. Co., ___ U.S. ___, 111 S. Ct. 1282, 1287, 113 L. Ed. 2d 358 (1991). Original means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. Id. (citing 1 M. Nimmer & D. Nimmer, Nimmer on Copyright §§ 2.01[A], [B] (1990)). Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. Id. at 1290.
H.R. Rep. No. 1476, 94th Cong., 2nd Sess., 54 ("The term `literary works' does not connote any criterion of literary merit or qualitative value: it includes catalogs, directories and similar factual, reference, or instructional works and compilations of data. It also includes computer data bases, and computer programs to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from the ideas themselves.").
17.02.02 COPYRIGHT--SUBJECT MATTER--COMPUTER PROGRAM DEFINED (17 U.S.C. § 101)
A computer program is a set of statements or instructions to be used directly or indirectly in a computer to bring about a certain result.
Comment
See 17 U.S.C. § 117 for exceptions.
17.03.01 INFRINGEMENT GENERALLY
Anyone who copies original elements of a copyrighted work during the term of the copyright without the owner's permission infringes the copyright.
Comment
See Feist Publications v. Rural Tel. Serv. Co., ___ U.S. ___, 111 S. Ct. 1282, 1296, 113 L. Ed. 2d 358 (1991) (the two elements that must be proved to establish infringement are: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original").
17.03.02 COPYRIGHT INFRINGEMENT--ELEMENTS AND BURDEN OF PROOF
[On plaintiff's ____________ claim,] plaintiff has the burden of proving each of the following by a preponderance of the evidence:
1. plaintiff is the owner of a valid copyright; and
2. the defendant copied original elements of the copyrighted work.
[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]
Comment
Feist Publications v. Rural Tel. Serv. Co., ___ U.S. ___, 111 S. Ct. 1282, 1296, 113 L. Ed. 2d 358 (1991) (the two elements that must be proved to establish infringement are: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original").
North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir. 1992) ("To establish copyright infringement, the holder of the copyright must prove both valid ownership of the copyright and that there was infringement of that copyright by the alleged infringer..."; if ownership of a valid copyright is established, plaintiff must establish infringement by showing both access and substantial similarity between the copyrighted work and the alleged infringing work).
17.03.03 VICARIOUS INFRINGEMENT--ELEMENTS AND BURDEN OF PROOF
A person is liable for copyright infringement by another if the person has a financial interest and the right and ability to supervise the infringing activity whether or not the person knew of the infringement.
[On plaintiff's ___________ claim,] the plaintiff has the burden of proving each of the following by a preponderance of the evidence:
1. plaintiff is the owner of a valid copyright;
2. [direct infringer] copied original elements of the copyrighted work;
3. defendant had a financial interest in the infringing activity of [direct infringer]; and
4. defendant had the right and ability to supervise the infringing activity of [direct infringer].
[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]
Comment
See Sony Corp. v. Universal City Studios, 464 U.S. 417, 437-38 (1984) (vicarious and contributory infringement are legitimate theories of liability).
Gershwin Publishing Corp. v. Columbia Artists Management, 443 F.2d 1159, 1162 (2d Cir. 1971) (one need not have knowledge that direct infringer is engaging in infringing conduct to be held vicariously liable).
Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963) (vicarious liability exists "[w]hen the right and ability to supervise [the infringer] coalesce with an obvious and direct financial interest in the exploitation of copyrighted materials" (emphasis added)); Gershwin, 443 F.2d at 1162 ("a direct financial interest" (emphasis added)); Southern Bell Tel. and Tel. v. Associated Tel. Directory Publishers, 756 F.2d 801, 811 (11th Cir. 1985) ("a financial interest" (emphasis added)); RCA/Ariola Int'l v. Thomas & Grayston Co., 845 F.2d 773, 781 (8th Cir. 1988) ("[a]n obvious and direct financial interest" (emphasis added)).
17.03.04 CONTRIBUTORY INFRINGEMENT--ELEMENTS AND BURDEN OF PROOF
A person is liable for copyright infringement by another if the person knows or should have known of the infringing activity and [induces] [causes] [or] [materially contributes to] the activity.
[On plaintiff's ____________claim,] plaintiff has the burden of proving each of the following by a preponderance of the evidence:
1. plaintiff is the owner of a valid copyright;
2. [direct infringer] copied original elements of a copyrighted work;
3. defendant knew or should have known of [direct infringer's] infringing activity; and
4. defendant [induced] [caused] [or] [materially contributed to] [direct infringer's] infringing activity.
[Add appropriate concluding paragraphs from Instructions 5.03, 5.04, or 5.05.]
Comment
Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417, 439-42 (1984) (Manufacturer and seller of home videos was not liable for contributory infringement even though it had constructive knowledge that recorders likely to be used by some purchasers to make unauthorized tapes of copyrighted movies. By analogy to contributory infringement in patent law, one cannot be held liable simply for selling items that could be used in infringement but that also have substantial noninfringing uses. In Sony, recorders could also be used for "time shifting" programs, which is a fair use.).
Gershwin Publishing Corp. v. Columbia Artists Management, 443 F.2d 1159, 1162 (2d Cir. 1971) (classic statement of contributory infringement).
Cable/Home Communication Corp. v. Network Prods., 902 F.2d 829, 845 (11th Cir. 1990) (the standard of knowledge is objective: to know or have reason to know that the product in question is copyrighted and that defendants were violating the copyright laws; "[c]ontributory liability necessarily must follow a finding of direct or primary infringement.").
3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 12.04[A] [1] & [2] (1992).
Demetriades v. Kaufmann, 690 F. Supp. 289, 293 (S.D.N.Y. 1988) ("[J]ust as benefit and control are signposts of vicarious liability, so are knowledge and participation the touchstones of contributory infringement.").
17.03.05 COPYING--ACCESS AND SUBSTANTIAL SIMILARITY
If you find by a preponderance of the evidence that the defendant had access to the plaintiff's copyrighted work and that there are substantial similarities between the defendant's work and original elements of the copyrighted work [and that the defendant's work was not independently created], you shall find copying.
Comment
If the defendant has made a claim of independent creation, you may use the bracketed part.
See generally Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1018 (9th Cir. 1985) (discussion of access, substantial similarity and independent creation), cert. denied, 474 U.S. 1059 (1986).
See Granite Music Corp. v. United Artists Corp., 532 F.2d 718, 720-21 (9th Cir. 1976) (showing of access and showing of similarity permits inference of copying).
A showing of access and substantial similarity creates a presumption of copying. The defendant has the burden to rebut or meet the presumption with evidence of independent creation. See Walker v. University Books, Inc., 602 F.2d 859, 864 (9th Cir. 1979) (demonstration of access and substantial similarity establishes a prima facie case of copyright infringement); Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir. 1982) ("proof of access and substantial similarity raises only a presumption of copying which may be rebutted by the defendant with evidence of independent creation"); Benson v. Coca-Cola Co., 795 F.2d 973, 974 (11th Cir. 1986) (proof of access and similarity is insufficient to affirmatively establish infringement; elements of access and similarity raise a presumption of infringement which may be rebutted by proof of independent creation); Keeler Brass Co. v. Continental Brass Co., 862 F.2d 1063, 1065-66 (4th Cir. 1988) (prima facie case shifts burden of going forward but not burden of persuasion).
The burden of proof, however, remains at all times with the plaintiff and does not shift to the defendant. Overman v. Loesser, 205 F.2d 521, 524 (9th Cir.), cert. denied, 346 U.S. 910 (1953); see Fed. R. Evid. 301. But see Kamar Int'l v. Russ Berrie and Co., 657 F.2d 1059, 1062 (9th Cir. 1981) (copying may be established by showing access and substantial similarity; burden then shifts to the defendant to prove that the work was not copied but independently created); John L. Perry Studio, Inc. v. Wernick, 597 F.2d 1308, 1309 (9th Cir. 1979) (burden of persuasion shifts to alleged infringers to show independent creation); Transgo, 768 F.2d at 1018 (burden shifts to the defendant to prove independent creation).
On whether a striking similarity between works may by itself demonstrate access, see Selle v. Gibb, 741 F.2d 896, 901 (7th Cir. 1984) (striking similarity is one piece of circumstantial evidence tending to show access); Baxter v. MCA, Inc., 812 F.2d 421, 423 (9th Cir.) (access may be inferred from "striking similarity"), cert. denied, 484 U.S. 954 (1987); and 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.02[B] (1992).
17.03.06 SUBSTANTIAL SIMILARITY--EXTRINSIC TEST; INTRINSIC TEST
Works are substantially similar if:
1. the ideas in plaintiff's copyrighted work and the defendant's work are substantially similar; and
2. the expression of ideas in plaintiff's copyrighted work and the expression of ideas in defendant's work are substantially similar.
The test for expression of ideas is whether an ordinary reasonable person would find the total concept and feel to be substantially similar.
Comment
There is no bright-line rule regarding substantial similarity. Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir.), cert. denied, 484 U.S. 954 (1987).
The plaintiff must show that the plaintiff's and the defendant's works are substantially similar in both the ideas and the expression of those ideas. Berkic v. Crichton, 761 F.2d 1289, 1291-92 (9th Cir.), cert. denied, 474 U.S. 826 (1985).
Paragraph 1 of the instruction is known as the extrinsic text. Paragraph 2 is known as the intrinsic test.
The extrinsic test does not depend on the responses of the trier of fact, but on specific criteria which can be listed and analyzed. Sid & Marty Krofft Television Prods. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir. 1977). For the extrinsic test, "analytic dissection and expert testimony are appropriate." Id. "[T]his question may often be decided as a matter of law." Id. See also North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031 (9th Cir. 1992); Pasillas v. McDonald's Corp., 927 F.2d 440 (9th Cir. 1991); Shaw v. Lindheim, 919 F.2d 1353 (9th Cir. 1990).
The extrinsic test for computer programs requires analytic dissection of various standard components such as screens, menus, and keystrokes. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475 (9th Cir.), cert. denied, ___ U.S. ___, 113 S. Ct. 198, 121 L. Ed. 2d 141 (1992).
The intrinsic test must be applied cautiously where there is a very small amount of protectible work in the product. Cooling Sys. & Flexibles v. Stuart Radiator, 777 F.2d 485, 492-93 (9th Cir. 1985). In such a case, the jury should be instructed to limit its review to protectible material and the instructions should adequately explain which material is protectible in determining substantial similarity. Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 207 (9th Cir. 1989).
17.04.01 COPYRIGHT--AFFIRMATIVE DEFENSE--FAIR USE (17 U.S.C. § 107)
Defendant contends that defendant made fair use of the copyrighted work for the purpose of [criticism,] [comment,] [news reporting,] [teaching,] [scholarship,] [research,] [other]. The defendant has the burden of proving this defense by a preponderance of the evidence. In determining whether the use made of the work was fair, you shall consider the following factors:
1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole;
4. the effect of the use upon the potential market for or value of the copyrighted work; and
5. any other factors that bear on the issue of fair use.
[Add appropriate concluding paragraph from Instructions 5.03, 5.04, or 5.05.]
Comment
See Harper & Row Publishers v. National Enters., 471 U.S. 539, 540-41 (1985) (presenting an analysis of the factors).
Supermarket of Homes v. San Fernando Valley Bd. of Realtors, 786 F.2d 1400, 1408-09 (9th Cir. 1986) ("fair use" is an affirmative defense).
17.04.02 COPYRIGHT--AFFIRMATIVE DEFENSE--ABANDONMENT
The defendant contends that copyright does not exist in the work because the plaintiff abandoned the copyright. The plaintiff cannot claim ownership of the copyright if it was abandoned. Defendant has the burden of proving each of the following by a preponderance of the evidence:
1. plaintiff intended to surrender ownership rights in the work; and
2. an overt act of the plaintiff evidenced that intent.
Mere inaction [, or publication without a copyright notice,] does not constitute abandonment of the copyright; however, [this may be a factor] [these may be factors] for you to consider in determining whether the plaintiff has abandoned the copyright.
Comment
The bracketed portion pertaining to publication without copyright notice should be used if the copyright infringement action is brought under the 1909 Act.
Abend v. MCA, Inc., 863 F.2d 1465, 1482 & n.21 (9th Cir. 1988) (abandonment is an affirmative defense in copyright infringement), aff'd, 495 U.S. 207 (1990).
Forfeiture of copyright may occur as a consequence of publication without proper copyright notice and is effectuated by operation of law regardless of the intent of the copyright owner; abandonment occurs only if the copyright owner intends to surrender rights in the work. 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.06 (1992).
17.05.01 COPYRIGHT--DAMAGES (17 U.S.C. § 504)
If you find for the plaintiff [on plaintiff's ____________ claim], you must determine plaintiff's damages. Plaintiff has the burden of proving damages by a preponderance of the evidence.
An infringer of a copyright is liable for the copyright owner's actual damages and any profits of the infringer.
Comment
See 17 U.S.C. § 504 for the relationship between actual and statutory damages.
The question of willful infringement and innocent infringement is discussed in 17 U.S.C. § 504(c).
See 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 14.04[C] (1992) (discussing whether statutory damages are to be set by judge or jury).
17.05.02 COPYRIGHT--DAMAGES--ACTUAL DAMAGES (17 U.S.C. § 504(b))
The copyright owner is entitled to recover the actual damages suffered as a result of the infringement. Actual damages means the amount of money adequate to compensate the copyright owner for the reduction of the market value of the copyrighted work caused by the infringement. The reduction in the market value of the copyrighted work is the amount a willing buyer would have been reasonably required to pay to a willing seller at the time of the infringement for the use made by the defendant of the plaintiff's work.
Comment
See Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 512-13 & n.6 (9th Cir. 1985) ("`Actual damages' are the extent to which the market value of a copyrighted work has been injured or destroyed by an infringement.").
See also Sid & Marty Krofft Television Prods. v. McDonald's Corp., 562 F.2d 1157, 1172-74 (9th Cir. 1977) (discussion of difference between actual damages for reduction in value and infringer profits).
17.05.03 COPYRIGHT--DAMAGES--PROFITS (17 U.S.C. § 504(b))
In addition to actual damages, the copyright owner is entitled to any profits attributable to the infringement. You may not include in an award of profits any amount that you took into account in determining actual damages.
Profit is determined by deducting all expenses from gross revenue. Gross revenue is all of defendant's receipts from the [use] [sale] of a [product] [work] containing or using the copyrighted work. Expenses are all [operating] [overhead] and production costs incurred in producing the gross revenue.
Unless you find that a portion of the profit from the [use] [sale] of a [product] [work] containing or using the copyrighted work is attributable to factors other than use of the copyrighted work, the total profit is attributable to the infringement.
The plaintiff has the burden of proving gross revenue by a preponderance of the evidence. The defendant has the burden of proving the expenses [and the portion of the profit attributable to factors other than the copyrighted work] by a preponderance of the evidence.
Comment
Eales v. Environmental Lifestyles, Inc., 958 F.2d 876, 881 (9th Cir.) ("Any doubt as to the correctness of the profit calculation should ... be resolved in favor of the plaintiff."), cert. denied, ___ U.S. ___, 113 S. Ct. 605, 121 L. Ed. 2d 541 (1992).
See Sid & Marty Krofft Television Prods. v. McDonald's Corp., 562 F.2d 1157, 1175-77 (9th Cir. 1977) (Sneed, J., concurring) ("[W]hether plaintiffs are entitled either to (1) the greater of either damages or profits, or (2) both damages and profits ... has its roots in the conflict between the statutory language, which appears to contemplate a cumulative recovery, and the legislative history, which indicates that Congress envisioned an alternative recovery. This circuit ... expressly adopted the alternative recovery, and we are constrained to follow that decision here.") But see i.d. at 1179-81 (Carter, J., dissenting) (footnotes deleted).
See also Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 514-15 (9th Cir. 1985) (discussing calculation and proof of profits attributable to infringement).
See also Taylor v. Meirick, 712 F.2d 1112, 1119-21 (7th Cir. 1983) (court notes potential for "double counting" or "double recovery" in copyright cases in calculation of profits and actual damages, i.e., lost sales).