This is a sample answer to Professor Staudt’s Spring 2000 Copyright exam drawn from the top two or three student submissions.  It is not a perfect exam.  It is not 100% correct. It does not cover all the issues.  It was not written by the professor but by students during the exam period.  It is intended to give some insight into the style and type of answers that have been successful in the past.

Question 1

There are three parts to a prima facie case of copyright infringement that Pam would need to satisfy in order to be able to sustain a claim against Bob Builder. First, Pam needs to prove that she is indeed the owner of a valid copyright. That the photographs are subject to copyright protection is unquestionable. Under section 102(a)of the Copyright Act, copyright protection extends to original works of authorship fixed in any tangible medium of expression. Photographs were established as original works of authorship under BurrowGiles Lithographic Co. v. Sarony and meet the two constitutional requirements for originality as established by Feist Publications, Inc. v. Rural Telephone Service: they were independently created and exhibit a minimal level of creativity. That the photographs are fixed in a tangible medium of expression is undeniable, as they embodied on a copy from which they can be perceived and are sufficiently stable and permanent to be perceived for more than a transitory duration. 

Bob Builder might question whether Pam is the owner of the copyright in the photographs, by arguing that the photographs qualify as a work made for hire, making Bob Builder the copyright owner. A work can qualify as a work made for hire in one of two ways: 1) the work is prepared by an employee within the scope of her employment; or 2) the work is specially ordered or commissioned for use as a contribution to one of nine types of works specified in the Copyright Act, as long as the parties expressly agreed in a signed writing that the work would be a work made for hire. The second type of work made for hire can be easily dismissed as not applying to this case. The photographs which Pam took for Bob Builder for his construction do not fit into any of the nine categories specified by the Act (which are collective works, parts of motion pictures or other audiovisual works, translations, supplementary works, compilations, instructional texts, test, answer materials for tests, or atlases). Even if the photographs were found to fit into one of these nine categories, the Act specifically requires a signed writing stating that the work is to be considered a work made for hire in order for it to be so, and there is no indication that Pam and Bob Builder ever signed any express agreement that he would be the copyright owner of the photographs as works made for hire.

A work can also be a work made for hire if the work is prepared by an employee within the scope of her employment. A court will not likely find Pam to have been Bob Builder's employee when the photographs were taken. The definition of "employee" follows the common law agency meaning. The Restatements guidelines of factors that tend to show that there is an employer‑employee relationship include the hiring party's right to control the manner and means by which the product is accomplished, whether the hiring party has the right to assign additional projects to the hired party without additional pay, the tax treatment of the hired party (whether the hiring party pays social security and payroll taxes), and the regularity of payments and provision of employee benefits. None of the factors fit in the present case to indicate the presence of an employer‑employee relationship. The memorandum of terms that Pam gave to Bob Builder indicate that she had most of the control over how the project was going to be accomplished and that he was only to provide the necessary costs related to the project's completion. Furthermore, the memorandum states that Pam would provide an exact quote after he provided the exact details of what he needed, indicating that if he were planning on assigning her additional projects, he would have to do so with additional pay to Pam. Finally, there is no indication that Bob Builder ever paid any employee taxes on Pam's behalf or that he paid her at any time except in the lump sum fee that Pam quoted to him. Therefore, the likely outcome of the first part of the prima facie case for copyright infringement would probably be in Pam's favor, finding her the owner of a valid copyright in the photographs.

The second part of the prima facie case for copyright infringement is to prove copying.  There is no question here that Bob Builder copied Pam's photographs. He admitted to making exact color copies of them because the cost of getting the reprints from Pam was prohibitively high. 

The third part of the prima facie case for copyright infringement is to prove improper appropriation, which will likewise probably be resolved in Pam's favor. The test for improper appropriation is whether there is substantial similarity of a protectable element of the work, and in this case substantial similarity is obvious because Bob Builder made exact copies of entire reprints.

Bob Builder may argue that under the first sale doctrine, he has the right to do with the reprints as he pleases. He lawfully purchased the first set of images from Pam and so has the right to reproduce and distribute them as he pleases. This argument would be flawed, however, because the first sale doctrine is a limitation on the exclusive right to distribute copyrighted works, not on the exclusive right to reproduce them. The first sale doctrine allows one who lawfully purchased a copy of a copyrighted work to sell or otherwise dispose of that copy, but it does not allow one who lawfully purchased a copy to make additional copies of the work for distribution. In addition, the fact that Pam sold the actual photographs to Bob Builder does not mean that she also transferred the copyright in the photos to him. The transfer of chattels on which copyrighted material is fixed does not include the transfer of the copyright unless there is proof of the plaintiffs intent to transfer the copyright with the chattels. Therefore, a court is likely to find in favor of Pam that there is improper appropriation of her copyrighted photographs.

Bob will assert the affirmative defense of fair use. This seems a weak defense. The purpose and character of the use is not even one of the purposes stated in section 107. It is certainly not for criticism, comment, news reporting, teaching, scholarship or research.  Further the character of the use is in no way transformative. That is, the new copies do not add anything new, they merely supersede the original photos. While its true that his purpose is not of commercial motivation, this first factor certainly seems to cut against him. 

The nature of the photographs may not be as original or creative as fiction, audiovisual work, or a painting, but the photographs are certainly more creative than directories or mere catalogs. 

As for the amount and substantiality, Bob copied essentially all of the photos he had. He made a total of 2034 complete copies from a set of 203 of the original photographs. 

Finally, Bob affected Pam's market for the value of the copyrighted works. The purpose of the work was to provide documentation and establish an evidentiary record of the progress of the construction. It appears that almost the entire market for the work was for this "evidentiary record." By simply having Copy Corp copy the photos rather than Pam, he essentially undercut Pam's entire market for the photos.

Bob's strongest defense is that there was an implied license for him to make copies of the photos he purchased for litigation purposes. The factual record of objective intention and knowledge, and the customary practices in the business may shed more light on this question.  While under section 204 an exclusive transfer must be in writing, a non‑exclusive license may be granted orally, or may even be implied from conduct. Bob's non‑exclusive license would be to make copies of the photos for the intended purpose of potential litigation. It is presumed the Pam had knowledge of the intended purpose of the photos. It is not clear the she intended Bob to freely copy the photos, once purchased from her, for that intended purpose. Bob did pay for each individual trip for the cost to fly and the cost to shoot the job site but the facts seem to indicate  that Bob was required to purchase any of the photos he wanted from her once chosen from the proofs.

Question 2 

Jurisline will probably obtain a declaration that its copying of judicial opinions from LEXIS is protected under federal copyright law. Jurisline is correct in stating that the judicial opinions on the LEXIS CD‑ROMs are public domain material, in which LEXIS may not claim a copyright. Jurisline will probably further succeed in convincing the court that LEXIS does not have any basis for claiming copyright in the CD‑ROM information as compilations. According to Feist Publications, Inc. v. Rural Telephone Service, a compilation is copyrightable only if the particular selection, coordination, or arrangement of facts satisfies the two constitutional requirements of originality: independent creation and a minimal level of creativity. According to Matthew Bender & Co. v. West Publishing Co., there are three functions of creativity in compilations: 1) the total number of options available; 2) external factors that limit the viability of certain options and renders others non‑creative; and 3) prior uses that render certain selections "garden variety." That court decided that the selection, coordination, and arrangement of judicial opinions by WestLaw was not minimally creative. Assuming that LEXIS has a similar selection and arrangement of its decisions that is mostly dictated by legal standards and the Bluebook and not one that is more creative, a court will probably decide that the LEXIS compilation of judicial opinions is not copyrightable.  

If LEXIS includes brief summaries of the cases that it has written before each opinion and Jurisline copied those, then Jurisline certainly infringed upon LEXIS's copyright, because the summaries are certainly copyrightable expression. However, there is no indication that such summaries exist or that Jurisline copied those, so there would be no copyright infringement of LEXIS CD‑ROMs. LEXIS's argument that it spent a great deal of "time, effort and money" in creating the CD‑ROMs would have no relevance in the copyright inquiry, because the Court in Feist specifically rejected protection of works that do not satisfy the two originality requirements based on the "sweat of the brow" theory. 

Although Jurisline may get a declaratory judgment in its favor that its copying is protected by federal copyright law, that declaration may not make any difference, as LEXIS's claims against Jurisline are state law claims of fraud and breach of contract, not federal copyright. The basic question with respect to LEXIS's claim against Jurisline is whether the state law claim for breach of contract is preempted by federal copyright. In all likelihood, the answer is no.

First, there is evidence in the legislative history of section 301 of the Copyright Act, the preemption provision, that indicates that claims for breach of contract were not intended to be preempted. Under section 301 (a) copyright law preempts any state law that grants legal or equitable rights equivalent to any of the exclusive rights granted by copyright within the general scope of copyright. An early version of section 301 (b)(3) listed certain rights and remedies which were examples of non‑equivalent state claims and included breaches of contract. Although this version was not adopted in the final Act, it is instructive for purposes of determining what types of claims Congress did not originally intend to preempt.

Second, according to ProCD, Inc. v. Zeidenberg, copyright law does not preempt contracts between parties. According to the court in ProCD, rights equivalent to any of the exclusive rights within the general scope of copyright are those that restrict the options of persons who are strangers to the author, whereas contracts only establish the rights of the parties entering into the agreement, without having any effect on the rest of the world. The ProCD court stopped short of saying that all contracts are outside the copyright preemption provision; it acknowledged that there may be some situations in which upholding a contract could "interfere with the attainment of national objectives" and, therefore, be subject to preemption under section 301 (a). However, in that case the court upheld the shrinkwrap licenses on database software which precluded the purchaser from certain uses of the software, presumably because the contract did not interfere with the attainment of national objectives as embodied in copyright law. Although the software could not satisfy the originality requirement and therefore was not copyrightable, making the defendant's use of the software otherwise permissible, the presence of a contract, in the form of the shrinkwrap license which limited the defendant's ability to commercially redistribute the software, made defendant's use of the software violative of the plaintiffs legal rights. The ProCD case is similar to the claim by LEXIS. Although the judicial opinions in LEXIS's database are probably not copyrightable, as discussed above, Jurisline's co-founder signed a contract expressly stating that he would be using the LEXIS CDROMs for his personal use only and not to post on the Internet. This, in fact, is exactly what he did, however, by making the information on the CD‑ROM's available to other users on the Jurisline web site. LEXIS, therefore, would likely be able to succeed on its claim for breach of contract (whether it would succeed on its claim for fraud depends on whether or not LEXIS could prove that the Jurisline co-founder initially purchased the CDROMs with the intent to violate the agreement, which depends on facts not given in this summary).