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Abstract:
In order to protect authors and artists from unremunerative transfers of copyright, Congress for the first time created, in the Copyright Act of 1976, an inalienable right to terminate transfers of copyrights during a five-year window beginning 35 years from the date of the transfer. Such inalienablity, however, posed substantial uncertainty to the exploitation of many works of authorship. In particular, works combining multiple copyrighted elements - such as collective works and motion pictures - could become unavailable due to the difficulty of relicensing all of the constituent components. For that reason, Congress provided a mechanism for precluding termination of at least some transfers. In the case of a "work made for hire," the hiring party acquires ownership of the copyright upon a work's creation, thereby dispensing with any transfer from the author and hence obviating any termination of such transfer 35 years later. To avoid the exception swallowing the rule, Congress circumscribed the situations under which a work qualifies for treatment as a "work made for hire." It must either be prepared by a true employee or specially ordered or commissioned and fall within one of nine categories, such as "contribution to a collective work" and "part of a motion picture or other audiovisual work."

This article examines a potentially significant and heretofore unrecognized conundrum of the 1976 Copyright Act relating to the "contribution to a collective work" category. Congress defined "collective works" as comprised of "preexisting materials." Yet the work made for hire provision contemplates "contributions to collective works" being specially ordered or commissioned. How is it possible for a publisher or record label to specially order or commission contributions that already exist? The authors' journey into the complex evolution of the 1976 Copyright Act reveals that Congress did not intend that "contributions to collective works" preexist their commissioning, even though the inartful drafting of some of the Section 101 definitions suggest otherwise. For purposes of applying the work for hire doctrine, courts should either ignore the use of the term "preexisting" in the definition of "collective work," or interpret the term "contribution to collective work" to include "contribution to yet-to-be-assembled collective work" in the definition of "work made for hire." The article also elucidates the legislative history underlying the right to terminate transfers, a right which will have justiciable implications beginning in 2003.

Copyright, Intellectual Property, Inalienability

Abstract:
The Supreme Court's indirect copyright liability standard, derived in Sony Corporation of America v. Universal City Studios from patent law and reasserted in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., is widely seen as creating a safe harbor for distributors of dual use technologies. Yet, when one looks to cases decided since Sony, legislative enactments, and the decisions of technology companies in the marketplace, a very different reality emerges. This article explores and explains the broad gulf between the idealized (and idolized) Sony safe harbor and the practical reality. It shows that the law in many respects reflects the tort principles that undergird copyright liability more generally.

Copyright, Contributory Liability, Indirect Liability

Abstract:
The dawning of the digital age has brought the Supreme Court's Sony "staple article of commerce" doctrine to center stage in legal and policy discussions about the proper role and scope of copyright protection. To technology companies, it represents a vital safe harbor for product design; to the content industries, this doctrine remains an Achilles heel. The origins of this doctrine have always been somewhat obscure. With nary a peak at the text or the legislative history of the then-recently enacted overhaul of the copyright system, the Supreme Court adverted to patent law to determine the scope of indirect liability - a fundamental issue that would loom large in the shift from the analog to the digital distribution platform for content. A slim majority of the Supreme Court justified this interpretation of the Copyright Act of 1976 on the basis of a vague assertion of "historic kinship" between patent and copyright.

This article scrutinizes this critical logical premise. Part I exhaustively reviews the litigation and correspondence of the justices to understand why the Court paid so little attention to the legislative materials and so much to the patent law. It finds that gaps in the information provided to the Court, in conjunction with the justices' lack of familiarity with copyright law generally and the Copyright Act of 1976 in particular, led the Court astray. Part II tests the "historic kinship" premise, finding that it cannot withstand scrutiny. Had the Court traced the origins of copyright and patent back to their source, it would have seen that they both derive from a common wellspring: tort principles. Concerns about patent misuse and improper leveraging of monopoly power led the courts, and later Congress, to carve out an express safe harbor in patent law for those selling "staple articles of commerce" - products suitable for substantial non-infringing uses. Part III demonstrates that the 1976 Copyright Act envisioned that courts would continue to use the traditional tort wellspring, informed by the distinctive challenges of copyright enforcement. This would have brought the reasonable alternative design framework of products liability law into play. The article shows that this approach would almost certainly have resulted in the same outcome that the Sony Court reached, but of critical importance, it would have provided a more sound and dynamic jurisprudential framework for calibrating liability as new technologies develop. Part IV examines Sony's legacy, showing that subsequent legislative activity, court decisions, and the marketplace reflect a practical reality that lies closer to the reasonable alternative design standard than a broad "staple article of commerce" safe harbor. In reality, Sony's "staple article of commerce" doctrine has proven largely symbolic and unworkable, as Congress, the courts, and businesses in the marketplace have sought to promote product innovation without unduly jeopardizing copyright protection. The failure to recognize that reality, however, breeds doctrinal confusion, distorts case law evolution, and stultifies the larger policy debate over copyright protection in the digital age.

Copyrights, Indirect Liability, Contributory Liability, Statutory Interpretation, Patents, Supreme Court

Abstract:
For a century, Congress has sought to protect authors and their families by allowing them to grant their copyrights for exploitation and then, decades later, recapture those same rights. After judicial interpretation of the 1909 Act frustrated this intent, Congress spoke unambiguously in 1976: Termination of the grant may be effected notwithstanding any agreement to the contrary . . . . 17 U.S.C. Section 304(c)(5). Yet, in Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008), the Second Circuit eviscerated that clear Congressional command by enabling a grantee to renegotiate the terms of the grant so as to frustrate recapture by the author's family. This ruling follows a Ninth Circuit decision similarly allowing a grantee to go through the charade of rescinding and regranting a copyright license for the express purpose of blocking the author's family members from exercising their statutory termination rights. Milne v. Stephen Slesinger, Inc., 430 F.3d 1036, 1046 (9th Cir. 2005). Notwithstanding the unequivocal meaning of the word any in Section 304(c)(5), explicated unmistakably in the legislative history, these decisions invite grantees to engage in all manner of opportunistic behavior to frustrate Congress' clearly expressed language and intent. In this amicus brief supporting grant of certiorari by the Supreme Court in the Steinbeck case, the authors argue that the Court can restore the intergenerational equity that Congress legislated and remove the cloud now hanging over innumerable copyrighted works.

Abstract:
One of the most complex features ever added to the Copyright Act of 1976 went under the label "Digital Performance Rights in Sound Recordings Act of 1995." In 1998, Congress amended this provision to make it even more obscure, via the Digital Millennium Copyright Act. The resulting statutory language is barely comprehensible.

In this article, David Nimmer untangles the strictures that apply to streaming audio on the Internet. He follows the twists and turns as to what conduct is permissible and where it turns infringing. In the course of his analysis, he illuminates some of the policy judgments that Congress reached and how they failed to serve the public interest.

Abstract:
In deliberating passage of the Digital Millennium Copyright Act, everyone on both floors of Congress decried something that they labeled "the specter of a 'pay per use' world." In other words, both Congressmen and Senators paid lip service to the need for a robust sector of fair use and free commentary, a realm over which copyright owners would be able to exert no control.

This article tests Congress' stated goals against its handiwork. The article concludes that, pious rhetoric aside, there are profound concerns that Congress failed in its goal to create legal safeguards against a "pay per use" world.

Abstract:
The Digital Millennium Copyright Act inserts many complex and alien concepts into US copyright law. This article explores that enactment by positing four scenarios, and attempting to determine what the practical impact should be on each as a result of this omnibus amendment. The four are: parents' keeping pornography away from minors; copyright management information, from names of movie stars to book dust jackets; determining when an ISP sees a "red flag" that should alert it to copyright infringement; and attempting to pigeonhole digital watermarks into their appropriate category under the new law.

Abstract:
This exploration into the history of ideas starts with Deuteronomy 17:19. The lessons that the Talmud and medieval commentators derive from that verse match surprisingly well the current fascination, sparked by the Internet, of the difference between atoms and bits. The author searches back in the history of copyright law to derive unexpected parallels to doctrines that have a pedigree of millennia.

Abstract:
TO SUBSCRIBE TO THE WILLIAM & MARY LAW REVIEW: Contact the Managing Editor, the William & Mary Law Review, William and Mary School of Law, P.O. Box 8795, Williamsburg, VA 23187-8795.This Forum on Attorney's Fees analyzes the Supreme Court's recent *Fogerty v. Fantasy* decision, to determine whether it indeed has had the impact that it set for itself of altering the way fees are awarded in copyright infringement cases. Taking their cues from the two John Fogerty songs at issue there, the panelists argue the pro and con. David Nimmer claims that the Old Man Is Stuck Down the Road. Although *Fogerty* claimed that it was making the playing field more even for the award of fees, any impact that it has had is a fantasy; instead, the traditional norms of fault-based awards are simply continuing on their merry way. Paul Marcus disagrees. Maintaining that we are now Running Through the Jungle, he claims that *Fogerty* has fundamentally altered the landscape for the award of fees in infringement suits -- witness the $1 million award to Fogerty himself, dwarfing any previous attorney fee award in the copyright arena.The forum is moderated by Eaton S. Drone, late author of a 19th Century classic on copyright law, who has contributed his insights by e-mail from the great beyond.