5.1 Exclusive Rights
Section 106 of the copyright law gives the following six “exclusive rights” in a copyright owner:
(1) reproducing the copyrighted work in copies or phonorecords;
(2) preparing derivative works based upon the copyrighted work;
(3) distributing copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, performing the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, displacing the copyrighted work publicly; and
(6) in the case of sound recordings, performing the copyrighted work publicly by means of a digital audio transmission.
Key point. Section 106A of the Copyright Act grants additional rights to authors of “works of visual art.” These works include paintings, sculptures, and photographic images produced for exhibition purposes. Such works have little relevance to most churches and are not addressed in this text.
These six exclusive rights are sometimes referred to as the rights of:
• reproduction
• adaptation
• publication
• performance
• display
These six rights comprise the “bundle of rights” that constitute or define copyright. As noted elsewhere in this book, each exclusive right may be subdivided indefinitely, and each subdivision of an exclusive right may be owned and enforced separately.
It is unlawful for anyone to violate any of the exclusive rights of a copyright owner. These rights, however, are not unlimited in scope. The approach of the Copyright Act is to set forth the copyright owner’s excusive rights in broad terms in section 106, and then to provide various limitations, qualifications, or exemptions in sections 107 through 122 of the Act. In some cases, these limitations are exemptions from infringement liability. One such limitation is the doctrine of “fair use.” In other instances, the limitation takes the form of a “compulsory license” under which certain limited uses of copyrighted works are permitted upon payment of specified royalties and compliance with certain conditions. Many of the limitations on exclusive rights are discussed later in this chapter.
A. Reproduction
Section 106 of the Copyright Act gives the owner of a copyright in a work the exclusive right “to reproduce the copyrighted work in copies or phonorecords.” This is perhaps the most important right that a copyright owner has, and it helps to explain the origin of the term “copyright”—i.e., the right to make copies. Read together with the relevant provisions of section 101, the right to reproduce a copyrighted work means the right to produce a material object in which the work is duplicated, transcribed, imitated, or simulated in a fixed form from which it can be “perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” A copyrighted work is infringed by reproducing it in whole or in any substantial part, and by duplicating it exactly or by imitation or simulation.
meaning of “reproduction”
The courts have helped to clarify, the meaning of the term “reproduction.” Consider the following: (1) it is now clear that the copying of a work into a different medium constitutes reproduction. To illustrate, copying a piece of sheet music onto a slide or transparency is a reproduction. (2) Copying can be done with a machine or by hand. It is no defense to argue that a copy was made “freehand.”1 (3) Copying need not be verbatim to constitute reproduction. All that is required is that the infringing work is substantially similar to the copyrighted work, and that the infringing work was the product of copying rather than independent effort. (4) Copying constitutes a reproduction even if done for purely private purposes. It is the act of making the reproduction that violates the copyright owner’s exclusive right, regardless of whether or not the infringer makes the copy for his or her own private use or distributes it publicly.2 (5) The making of a single copy violates the copyright owner’s exclusive right of reproduction. There is no requirement that multiple copies be reproduced. 3
common church practices
It is the exclusive right of reproduction that poses the greatest risk of copyright infringement for most churches, since churches so commonly duplicate copyrighted materials. Consider just a few examples:
• fabricating transparencies
• duplicating copyrighted music for use by a choir, soloist, accompanist, or instrumental group
• printing the words of a chorus or hymn on a bulletin insert
• printing copyrighted materials in a church newsletter
• duplicating copyrighted materials in a church’s educational program (e.g., Sunday School or private school)
• recording of worship services on audio and video tape and the distribution of such tapes
All of these acts, and many others, constitute potential infringements on a copyright owner’s exclusive right of reproducing his or her copyrighted works. Whether infringement actually exists in a particular case will depend on the significance of the material copied both in terms of quantity and quality (see section 5.2), and the availability of one or more of the defenses to infringement discussed in Chapter 6. There is no doubt that most music publishers view the acts of copying described above to constitute copyright infringement.
Example. Pastor Mike is a minister of music. To save the church money, and to avoid copyright infringement, he transcribes by hand a copyrighted song and then makes copies for each member of the church choir. The fact that Pastor Mike made the copy by hand does not prevent the act from constituting copyright infringement.
Example. Pastor Mike makes a transparency containing only the lyrics of a song. He did not have authorization from the copyright owner. The making of the transparency infringes upon the copyright owner’s exclusive right of reproduction. It does not matter that only the lyrics were copied (this is still a substantial reproduction of the copyrighted song), that a different “medium” was used (i.e., a transparency compared to a piece of sheet music), that the copy was made by hand, that only a single copy was made, or that Pastor Mike uses the transparency only in the course of worship services and does not otherwise distribute the work publicly.
B. Adaptation
derivative works
Section 106 gives the copyright owner the exclusive right “to prepare derivative works based upon the copyrighted work.” Section 101 defines derivative works to include “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.” Only the copyright owner has the right to make a derivative work based on a copyrighted work. The making of a derivative work based on a copyrighted work without authorization from the copyright owner is an act of infringement
Example. Dave composed a song (lyrics and music) in 1990. He owns the copyright in the work. Anne hears the song a few years later, and, without authorization, composes an arrangement using the same lyrics but different music. She has infringed upon Dave’s exclusive right to make derivative works based on the original copyrighted work.
Example. Dave writes if book in 1980. It is copyrighted in the name of the publisher that published the work. In 1990, Dave decides to write a second edition of the same work. He may not do so without authorization front the publisher, since only the publisher (as copyright owner) has the right to make derivative works based on the original.
C. Distribution
The copyright law gives the copyright owner the exclusive right to distribute copies or phonorecords of a copyrighted work to the public. This provision gives a copyright owner the right to control the first public distribution of an authorized copy or phonorecord of his or her work, whether by sale, gift, loan, rental, or lease. Likewise, any unauthorized public distribution of copies or phonorecords that were unlawfully made would be an infringement. As section 109 makes clear, however, the copyright owner’s rights cease with respect to a particular copy or phonorecord once he or she has parted with ownership of it, meaning that a purchaser of an authorized copy of a work can later sell or in any other manner dispose of that particular copy.
D. Performance
A copyright owner has the exclusive right to publicly perform literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works. To “perform” a work, according to the definition in section 101, includes reading a literary work aloud (book, article, etc.), singing or playing music, dancing a choreographic work, and acting out a dramatic work or pantomime. A performance is “public,” according to section 101, if it takes place at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered. Performances in semipublic places such as schools, churches, and summer camps ordinarily are considered public performances.
broadcasts
What about a live performance that is transmitted to the public via radio or television? For example, let’s assume that the morning worship services at a church are broadcast over a local radio station. What is the effect of such an arrangement? There are two considerations to note. First, if there are no copyrighted songs or other copyrighted materials performed during the service, there ordinarily will not be a problem in broadcasting the service. Second, even if copyrighted music is performed during the service, such a performance is exempt from copyright infringement so long as it occurs in the course of a religious service at a church or other place of religious assembly. However, this exemption (which is discussed fully in Chapter 6) does not extend to public broadcasting over radio or television. Such transmission of the performance of copyrighted materials constitutes a separate performance, since under section 101 the concept of public performance covers not only the initial performance but also any further act by which that performance is transmitted or communicated to the public.4 In most cases, such public broadcasts will not constitute an infringement upon the copyright owner’s exclusive right of performance if the radio or television station has an appropriate license with ASCAP, BMI, SESAC or some other performing rights society. It should be the broadcaster’s responsibility to ensure that it can broadcast worship services containing live performances of copyrighted materials, though it would be prudent for churches that broadcast their services to question the broadcaster regarding the scope and coverage of its license agreements with the various performing rights societies.
E. Display
A copyright owner has the exclusive right to display publicly a copyrighted literary, musical, dramatic, or choreographic work, pantomime, or audiovisual work. Section 101 defines “display” as the showing of a copy of a work “either directly or by means of a film, slide, television image, or any other device or process…” Note that this definition covers any showing of a “copy” of a work. Since “copies” are defined as including the material object in which the work is first fixed, the right of public display applies to original works as well as to reproductions of them. In addition to the direct showings of a copy of a work, a “display” would include the projection of an image on a screen or other surface by any method, the transmission of an image by electronic or other means, and the showing of an image on a cathode ray tube or similar apparatus connected with any sort of information storage and retrieval system (i.e., a computer monitor).
The exclusive right of the copyright owner extends only to public displays of the copyrighted work. As noted above, according to section 101, a performance or display is “public” if it occurs at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered. Performances in semipublic places such as schools, churches, and summer camps ordinarily will be public performances.
5.2 Infringement
Section 501 of the Copyright Act states that “[a]nyone who violates any of the exclusive rights of the copyright owner … is an infringer of the copyright.” Of the six exclusive rights, the one causing the most difficulties for churches is the copyright owner’s exclusive right to reproduce the work (i.e., make copies).
Key point. Copyright infringement does not require that the infringer “intends” to violate one or more of the copyright owner’s exclusive rights. In many cases copyright infringers “innocently” commit copyright infringement in the sense that they do not realize that what they are doing is wrong. This is no defense to liability.
verbatim copying
similarity
Obviously, an infringement occurs when someone makes a verbatim copy of copyrighted material. But what if someone produces a work that is similar but not identical to another’s copyrighted work? Can this constitute infringement on the copyright owner’s exclusive right of reproduction? To illustrate, what if Joan writes an article that is published in a periodical in 2000, and that Gary submits an article to another periodical in 2002 that is very similar to Joan’s work. Does Gary’s article constitute infringement (i.e., an unauthorized reproduction of Joan’s material)? The courts generally have resolved this question by applying the following presumption—access by the alleged infringer to the copyrighted material, plus substantial similarity between the allegedly infringing material and the copyrighted works, the less likely it is that such a claim will prevail. Other relevant factors to consider in such a case would be the experience and training of the alleged infringer, his previous publishing record, the likelihood that he was capable of independently producing the work, and prior instances of infringement on his part. Some copyright owners intentionally insert errors in their works. The alleged infringer’s claim of independent creation will seldom succeed if such errors are duplicated.
The House Report to the Copyright Act of 1976 specifics that “wide departures or variations from the copyrighted work would still bean infringement as long as the author’s ‘expression’ rather than merely the author’s ‘ideas’ are taken.”5
Key point. Copying rarely is proven by direct evidence, since copiers usually deny that they were engaged in copying. Keep in mind two rules that the courts apply. First, a presumption of copping arises if there is proof of “access” by the alleged infringer to the original work, plus substantial similarity between the two works. Second, if access to the original work cannot be proven, then a presumption of copying may arise if the degree of similarity between the original work and the alleged copy is “striking.”
Key point. What is “substantial similarity”? Most courts apply the “ordinary person” test: Is the alleged copy so similar to the original that an ordinary reasonable person would conclude that the alleged copier unlawfully appropriated the owner’s material? This test does not involve “analytic dissection and expert testimony,” but depends rather on whether the alleged copy has captured the “total concept and feel” of the copyrighted work.6
paraphrasing
What about paraphrasing? If Gary’s work (in the example used above) did not contain any “word-for-word” copying of Joan’s material, but rather consisted of a paraphrase of it, can he prevail against Joan’s charge of infringement? Probably not, since a number of courts have held that “paraphrasing is tantamount to copying in copyright law.”7 Another court has observed that copying “cannot be limited literally to the text, else a plagiarist would escape by immaterial variations.”8
copying small portions
Another difficult question is the verbatim copying of only small portions of copyrighted material. When does such use constitute infringement on the copyright owner’s exclusive right of reproduction? There is no easy answer to this question. Courts generally evaluate both the quantity of copyrighted material that is copied verbatim, and its quality. That is, what percentage of the copyrighted work was copied, and how much of the allegedly infringing work consisted of the copied material? Further, how significant was the “quality” of the copied material? Was it the essence of the work as a whole, or was it incidental or insignificant?
Copies violating the copyright owner’s right of reproduction
examples of infringement
To illustrate, the courts have found copying of the following amounts of copyrighted material to constitute copyright infringement:
• two identical bars of a musical work9
• four notes and two words, which comprised the “heart of the composition”10
• three sentences (that were used for advertising purposes)11
• three sentences12
• eight sentences13
• less than one percent of the copyrighted work14
• the phrase “put on a happy face”15
• summaries of copyrighted reports, even though the copier cited the owner as the source information16
• 20 articles out of 90,000 (the court quoted from an opinion by a famous judge, “no plagiarist can excuse the wrong by showing how much of his work he did not pirate”)17
Copies not violating the copyright owner’s right of reproduction
examples of non- infringement
Copying of the following portions of copyrighted material was held not to constitute infringement upon the copyright owner’s exclusive right of reproduction:
• a sentence and a half18
• sixteen words19
• two sentences20
• the musical notes comprising the melodies of the original song and the allegedly infringing song did not share significant amounts of either pitch or rhythm; at no place in the two songs were three musical notes in a row the same; the chord progressions of both songs, which are known as “I-IV-V progressions,” are of “the most common chord progressions in all of the music of Western civilization”; the chord changes are the same in only four out of twenty chord changes in the songs; no two melodic phrases in the two songs have the same rhythm; the lyrics of the songs have only six words in common, consisting of a phrase that is not unique or original to either song and that appears in at least eight songs that predate the songs involved in this case21
• 50 words copied from a 12,000-word book22
• direct quotations from a copyrighted biography comprised between .01% and .34% of the alleging of the infringing works, and were for “informational” rather than “creative” purpose23
• 5% of 12 works and 8% of 11 other works, each copy comprising only a few pages in length24
• “inclusion of 4.3% of published copyrighted work is not incompatible with a finding of fair use” 25
church practices
Such precedent leaves little doubt that many reproductions of copyrighted materials by churches will constitute an infringement of the exclusive right of copyright owners to reproduce their works. To cite just a few examples, the copying of copyrighted chorus or hymn lyrics onto a transparency or bulletin insert ordinarily will amount to an infringement, since a substantial quantity of the original work is reproduced, the amount reproduced is significant in terms of quality, and the copy serves the same function as the original work.
To illustrate, in one case a publisher reproduced the chorus lyrics of two famous copyrighted songs in songsheet pamphlets, maintaining that the reproduction of only chorus lyrics of copyrighted songs was so trivial in nature and amount as to constitute noninfringing fair use. The court found such reproductions to be an infringement, and rejected the publisher’s claim that its reproductions constituted fair use. Though only the chorus lyrics were reproduced (and not the regular verse lines or music), the court found that “the chorus of a musical composition may constitute a material and substantial part of the work and it is frequently the very part that makes it popular and valuable.” 26 Similarly, another court found the reproduction of chorus lyrics in a song sheet magazine to be an infringement rather than fair use, since the reproduction “met the same demand on the same market” as the original. 27 The courts in each of these two cases gave a narrow interpretation of fair use because the function served by the infringing use directly satisfied a function that was served by the copyright owner’s sheet music.
Obviously, verbatim copying of the lyrics and melody of a copyrighted musical work (for use by the choir, a soloist, an accompanist, or an instrumental group) would constitute infringement.
Key point. One judge has observed, “Copyright law does not admit of simple, bright-line rules…. It is not possible to determine infringement through a simple word count; the quantitative analysis of two works must always occur in the shadow of their qualitative nature. For example, different quantities of use may be required to support a finding of substantial similarity depending on whether the use is a direct quotation of a fictional work, or a paraphrase of a factual compilation.28
5.3 Remedies
What legal remedies are available to a copyright owner whose copyrighted work has been infringed? This section will review the major remedies established under the Copyright Act.
A. Injunctions
Section 502 provides that a court may “grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain infringement of a copyright.” An injunction is a court order directing an individual to do or not to do some specified act. Noncompliance with such an order typically will constitute contempt of court.
A number of courts have held that a preliminary injunction is available if four factors are present: (1) a likelihood of success on the merits; (2) the copyright owner will suffer irreparable harm if injunctive relief is not granted; (3) the harm to the copyright owner if relief is denied is significantly greater than the harm to the alleged infringer if relief is granted; and (4) the public interest will be served by granting the relief. Permanent (“final”) injunctions generally are available whenever copyright infringement has been established in a court of law, and there is a threat of continued acts of infringement.
B. Impounding and Disposition of Infringing Items
Section 503 specifics that a court, at any time after an infringement lawsuit is filed, “may order the impounding, on such terms as it may deem reasonable, of all copies or phonorecords claimed to have been made or used in violation of the copyright owner’s exclusive rights ….” The same section further provides that if a court determines that infringement has occurred, it can “order the destruction or other resonable disposition of all copies or phonorecords found to have been made or used in violation of the copyright owner’s exclusive rights …”
C. Actual Damages and Profits
Section 504(a) provides that “an infringer of copyright is liable for either (1) the copyright owner’s actual damages and any additional profits of the infringer … or (2) statutory damages …” Accordingly, the remedies of actual damages plus profits or statutory damages are in the alternative, and a copyright owner can choose to pursue only one of them. As was seen in a previous chapter, statutory damages will not be available to some copyright owners (e.g., owners of unregistered works), and in such cases the copyright owner has no choice under section 504 but to seek actual damages plus the infringer’s profits. The remedy of actual damages plus profits will be summarized in this subsection, and the remedy of statutory damages in the following subsection.
Section 504(h) specifics that “[t]he copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages.” How can a copyright owner compute actual damages? This has proven to be a very difficult task. In fact, the difficulty of proving actual damages prompted Congress to add the statutory damages provision. Copyright owners, in an attempt to prove actual damages, generally have tried to establish the fair market value of their copyright, and then base damages on the degree to which the copyright has been impaired by the act of infringement. Obviously, this is an inherently difficult task. In addition to actual damages, a copyright owner may recover any profits generated by the infringer that are attributable to the infringement. Proving the amount of such profits has proven as difficult a task as proving the copyright owner’s actual damages. Section 504(b) specifies that “[i]n establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.” Some courts have awarded higher statutory damages in cases where infringement has occurred, but the amount of the copyright owner’s damages and the infringer’s profits cannot be established with sufficient certainty.
D. Statutory Damages
$750 to $30,000
A copyright owner whose work has been infringed may elect to recover statutory damages instead of actual damages plus the infringer’s profits. Because of the difficulty in proving actual damages and infringer’s profits, copyright owners frequently prefer to pursue statutory damages. Section 504(c) specifies that
the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.
In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.
Statutory damages are awarded in the discretion of the court whenever they are elected by a copyright owner who has established that one or more of his or her exclusive rights has been infringed. Perhaps the most important feature of statutory damages is that they are not dependent upon proof of actual damages. Rather, they are awarded automatically, in the discretion of a court, once infringement has been established. Section 504 establishes a maximum and a minimum amount of statutory damages, and authorizes the courts to choose whatever amount between and including such amounts that they consider to be “just”. A number of important aspects of statutory damages are considered below:
(1) general rule
As a general rule, when a copyright owner elects to recover statutory damages, a court is obliged to award between $750 and $30,000.
(2) minimum statutory damages
$750
While minimum statutory damages generally are $750 for “all infringements involved in an action, with respect to any one work,” section 504(c) goes on to provide that a court has the discretion to reduce the statutory damages from $750 to $200 if the infringer “sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright….” In addition, section 504(c)(2) provides that when a teacher, librarian, or archivist working for a nonprofit educational institution infringes copyrighted material in the honest belief that what he or she was doing constituted fair use, a court is prevented from awarding any statutory damages. The burden of proof with respect to an infringer’s good faith rests with the copyright owner.
Example. A teacher at a religious school constituting a nonprofit educational institution makes copies of a copyrighted article for each member of her class in the honest belief that what she was doing constituted fair use. Unless the copyright owner can prove that the teacher was not in fact acting in good faith, the teacher’s action, assuming that it constitutes copyright infringement, cannot be the basis for statutory damages.
(3) maximum statutory damages
$30,000 ($150,000 if intentional)
A court, in its discretion, may award statutory damages of up to $30,000 for “all infringements involved in the action, with respect to any one work.” However, if a copyright owner proves, and a court agrees, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to $150,000. Unfortunately, “willfully” is not defined anywhere in the Copyright Act, but court rulings generally have interpreted the term to mean knowledge by the infringer that (a) his or her conduct amounts to infringement, and (b) no defenses are reasonably available.29
Example. A religious radio station that broadcasts copyrighted religious music without permission was found guilty of “willful infringement” and was assessed statutory damages of $52,500. The station manager admitted that he played copyrighted songs on the radio and that he had no license or permission to do so. He defended his actions by noting that “the artists have publicly stated their intent to minister through their Christian music” and that “their intent to minister is further accomplished by radio stations broadcasting their music to a listening audience.” The court rejected this reasoning and assessed statutory damages of $52,500 against the station for willful copyright infringement. The court based this result on 15 proven infringements at $3,500 each. The court also ordered the station to pay the attorneys’ fees the copyright owners incurred in maintaining their infringement lawsuit. This case serves as a useful reminder of the consequences associated with the willful infringement of another copyright. It is common for church leaders to assume that they can infringe upon religious music or literature at will since the writers and composers of such material obviously had a religious motivation and in effect have “donated” their work to the church. Not only is this assumption inappropriate, but as this case demonstrates, it can lead to statutory damages for willful infringement. 30
(4) multiple infringements by one infringer of the same work
Section 504(c)(1) specifies that a copyright owner may elect to recover statutory damages “for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually ….” The House Report to the Copyright Act of 1976 further specifies that “[a] single infringer of a single work is liable for a single amount between [$750] and [$30,000], no matter how many acts of infringement are involved in the action and regardless of whether the acts were separate, isolated, or occurred in a related series.” 31 These statements seem to place beyond any doubt the principle that a copyright owner may recover only a single award of statutory damages despite repeated infringements of a particular copyrighted work by the same infringer.
To illustrate, if a church music director makes a copy (without authorization) of a copyrighted song for each of the 50 members of the church choir, and the copyright owner elects statutory damages, then apparently only a single award of statutory damages is available (assuming that the copyright owner brings an infringement action involving all of the allegedly infringing works). The copyright owner cannot receive a separate award for each of the 50 separate copies that were made of the same copyrighted work. Of course, a court is free to award a higher amount of statutory damages based on the number of copies that were made, and could award up to $150,000 if the copies were made willfully. However, only a single award of statutory damages would be available. This discussion assumes that the reference in section 504(c) to “all infringements involved in the action” refers to the lawsuit rather than to the transaction involved in the infringement. This seems to be the most sensible and natural interpretation, and it is certainly consistent with the provisions of the House Report quoted above.
A few courts have concluded that the reference in section 504(e) to “all infringements involved in the action” refers to the infringing transaction rather than to the lawsuit. Such an interpretation, though seemingly contrary to the wording of the House Report, would allow separate awards of statutory damages for each act of infringement.32 Alternatively, a copyright owner in the example cited above could file 50 infringement lawsuits (i.e., 50 “actions”) against the infringing party (the music director or the church), and elect statutory damages in each case. While not free from doubt, there is the possibility that this tactic could avoid the limitation on multiple awards of statutory damages for “all infringements involved in the same action, with respect to any one work, for which any one infringer is liable individually ….” And, it is possible that a court, in the interests of “judicial economy,” world order all 50 lawsuits consolidated into a single action, while retaining the right of the copyright owner to seek multiple awards of statutory damages. Some courts have reached this very conclusion. 33 As a result, one cannot say that multiple infringements of a single copyrighted work by a single infringer will necessarily entitle the copyright owner to only a single award of statutory damages (assuming that statutory damages are elected). It is conceivable that a court would allow multiple awards based on the factors discussed above. If this is so, then the music director’s act of making 50 copies of a copyrighted song (in the illustration described above) for each member of the church choir could result in statutory damages of $750 (or such other amount as the court deems just) times 50 ($37,500) rather than a single award. The possibility of such a result must be taken into account when evaluating the propriety of church copying activities.
(5) compilations
Section 504(c)(I) specifies that for the purposes of computing statutory damages, “all the parts of a compilation or derivative work constitute one work.” This is a significant provision, and apparently was designed to prevent astronomical awards of statutory damages that otherwise would result from the unauthorized reproduction of compilations. For example, assume that XYZ Publishing Company prepared a hymnal containing 200 hymns, 125 of which are still protected by copyright. A church music director makes an unauthorized copy of the hymnal for her library. If XYA Publishing Company sues the music director and a court awards the minimum amount of statutory damages, will XYZ receive a single award of $750 or an aggregate award of $93,750 ($750 times 125 copyrighted songs in the compilation)? Section 504(c)( I) seems to resolve this question unequivocally in favor of the single award of $750 because of its statement that “all parts of a compilation or derivative work constitute one work.” But what if several copies of a compilation are made? For example, assume that XYZ Publishing Company publishes a chorus booklet containing 40 copyrighted songs, and that a church music director makes 100 unauthorized copies of the booklet on church duplicating equipment for use by the church congregation. While no court has addressed this question under the current copyright law, it is likely that the award of statutory damages in such a case would be limited to a single award of $750 based on the principles discussed in the preceding paragraphs. However, as noted before, it is conceivable that XYZ could avoid the limitations on statutory damages for multiple infringements by bringing 100 separate infringement suits.
chorus booklets
A common practice among churches is the fabrication of their own “compilations” consisting of chorus or song booklets containing several copyrighted musical works. To illustrate, assume that a church prepares a “chorus booklet” containing 50 popular copyrighted choruses, and then makes 200 copies of the booklet that are inserted in hymnal racks in the church sanctuary. Also assume that there is a different copyright owner for each of the 50 choruses. What would the statutory damages be in such a case, assuming that a court awards the minimum amount of $750? There are four possibilities: (1) a single award of $750 that must be apportioned among the 50 copyright owners whose works are represented in the compilation; (2) $37,500 ($750 per violation times 50 copyrighted works); (3) $150,000 ($750 per booklet times 200 unauthorized copies); or (4) $7,500,000 (5750 times fifty copyrighted works times 200 unauthorized copies). Note carefully that the limitations applicable to compilations discussed above ordinarily would not apply in such a case since the church is not reproducing or otherwise infringing upon an existing compilation. Rather, it is independently making copies of individual copyrighted works and then compiling those copies in its own compilation. As a result, there seems to be little basis for applying the first option mentioned above (a single award of $750).
The second option ($37,500) appears to be the most consistent with the plain meaning of section 504(c)(1) of the Copyright Act, which specifics that a copyright owner may elect to recover a single award of statutory damages “for all infringements invoked in the action, with respect to any one work, for which any one infringer is liable individually ….” The House Report to the Copyright Act of 1976 further specifies that “[a] single infringer of a single work is liable for a single amount between [$750] and [$30,000], no matter how many acts of infringement are involved in the action and regardless of whether the acts were separate, isolated, or occurred in a related series.” As a result, it seems logical to conclude that the church will be liable, at a minimum, for statutory damages of $750 times the number of copyrighted works that were infringed (50).
The third approach ($150,000) is unlikely since it bases statutory damages on the number of unauthorized copies of a work that the infringer makes without reference to the number of works involved. This clearly contravenes section 504(c)(1). The fourth option ($7,500,000) is unlikely as well, since it also bases statutory damages upon the number of copies of a copyrighted work that the infringer unlawfully copies. This approach is in opposition to the principles outlined in the preceding section dealing with multiple infringements by one infringer of the same “work.” As noted in that section, the House Report to the Copyright Act of 1976 specifics that “[a] single infringer of a single work is liable for a single amount between [$750] and [$30,000], no matter how many acts of infringement are involved in the action and regardless of whether the acts were separate, isolated, or occurred in a related series.” These statements seem to place beyond any doubt the principle that a copyright owner may recover only a single award of statutory damages despite repeated infringements of a particular copyrighted work by the same infringer. Therefore, though the church made 200 unauthorized copies of each work, the copyright owners presumably cannot recover more than a single award of statutory damages apiece. However, as noted in the preceding section, it is possible that each of the 50 copyright owners in the example cited above could file 200 infringement lawsuits (i.e., 200 “actions”) against the infringing party and elect statutory damages in each case. Under this approach, each copyright owner (50 in all) could collect $150,000 ($750 times 200), which would amount to a total of $7,500,000 in damages. While not free from doubt, there is the possibility that this tactic could avoid the limitation on multiple awards of statutory damages for “all infringements involved in the same action, with respect to any one work, for which any one infringer is liable individually ….”And, it is possible that a court, in the interest of “judicial economy,” would order all 200 lawsuits consolidated into a single action, while retaining the right of the copyright owner to seek multiple awards of statutory damages. While this result is unlikely, it must be viewed as a possibility when evaluating the propriety of church practices and procedures.
(6) multiple infringements by the same infringer of different works of the same owner
Nothing in section 504 prevents a copyright owner from receiving separate awards of statutory damaged from an infringer who infringes upon more than one of his or her copyrighted works. In this regard, the House Report to the Copyright Act of 1976 provides that “[w]here the suit involves infringement of more than one separate and independent work, minimum statutory damages for each work must be awarded. For example, if one defendant has infringed three copyrighted works, the copyright owner is entitled to statutory damages of at least [$2,250] and may be awarded up to [$90,000].” 34
(7) infringements of multiple exclusive rights
Earlier in this chapter, the important point was made that each exclusive right may be subdivided indefinitely by the copyright owner. This raises the question of the proper manner of assessing statutory damages in cases where a copyright owner has transferred various exclusive rights in a particular work to two or more persons, and those exclusive rights are thereafter infringed upon by one or more individuals. Should each owner of an exclusive right in the same work be entitled to a separate award of statutory damages? The House Report to the Copyright Act of 1976 answers this question in the negative, by providing that “although the minimum and maximum amounts are to be multiplied where multiple ‘works’ are involved in the suit, the same is not true with respect to multiple copyrights, multiple owners, multiple exclusive rights, or multiple registrations. This point is especially important since, under a scheme of divisible copyright, it is possible to have the rights of a number of owners of separate ‘copyrights’ in a single ‘work’ infringed by one act of a defendant.” 35
(8) registration
Several benefits associated with copyright registration were summarized in Chapter 2. One of those benefits is eligibility for statutory damages. Section 412 specifies that “no award of statutory damages … shall be made for (1) any infringement of copyright in an unpublished work commenced before the effective date of its registration, or (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.”
Example. A federal court in Massachusetts ruled that a trade show organizer was liable for copyright infringement occurring because of the unauthorized performance of copyrighted music by 6 of 2,000 exhibitors at a national trade show. This was so despite the fact that the organizer’s contract with exhibitors contained a statement instructing exhibitors to comply with copyright law. This did not shift liability. The court concluded that the organizer retained sufficient control over the exhibitors to make it responsible for their copyright infringement. Control was demonstrated by (1) the rules and regulations that the organizer had established for exhibitors; (2) agents of the organizer circulated among the exhibitors to “ensure compliance” with the rules and regulations; (3) agents of the organizer were available during the convention to address exhibitor needs and respond to complaints; and (4) the organizer had the authority to restrict exhibits that were objectionable. The court stressed that the organizer could have prohibited exhibitors from playing or performing copyrighted music, but did not. The fact that exhibitors’ contracts required them to comply with the copyright law did not prevent the organizer from liability for the exhibitors’ copyright infringements, since the organizer “must shoulder responsibility when the instruction is not followed.” The court awarded damages of $1,000 for each violation (a total of $6,000). 36
Example. A federal appeals court ruled that copyright infringement had occurred even though only lyrics were copied. The court observed: “Song lyrics enjoy independent copyright protection as literary works … and the right to print a song’s lyrics is exclusively that of the copyright holder…. A time-honored method of facilitating singing along with music has been to furnish the singer with a printed copy of the lyrics. Copyright holders have always enjoyed exclusive rights over such copies. While projecting lyrics on a screen and producing printed copies of the lyrics, of course, have their differences, there is no reason to treat them differently for purposes of the Copyright Act.” Many churches make unauthorized copies of song lyrics. Sometimes the lyrics are printed in a church bulletin. In other cases they are duplicated onto a transparency. In either case, or in any other case when lyrics are copied without authorization, copyright infringement has occurred. Church leaders need to understand that lyrics are entitled to copyright protection independently from the musical score. 37
Example. A federal appeals court ruled that a church violated the copyright law when it publicly distributed an unauthorized copy of copyrighted materials. The Church of Jesus Christ of Latter-Day Saints (the “Church”) acquired a single copy of a copyrighted genealogical text and made several unauthorized copies which were distributed to the Church’s “branch libraries.” When the copyright owner learned of the Church’s actions, it demanded that further distribution be stopped immediately. The Church recalled and destroyed many of the copies that it had made. It was concerned that nine libraries continued to possess unauthorized copies, and it wrote them each a letter asking them to locate and return any offending copies. The copyright owner visited a number of libraries, and found unauthorized copies at two locations. The owner sued the Church for copyright infringement. A federal appeals court ruled that the Church might be liable for copyright infringement. It observed: “A copyright infringement is a violation of any of the exclusive rights of the copyright owner. One of those exclusive rights is the right to distribute copies…of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending. Generally, as permitted by what is known as the first sale doctrine, the copyright owner’s right to distribute a copyrighted work does not prevent the owner of a lawful copy of the work from selling, renting, lending, or otherwise disposing of the lawful copy. For example, a library may lend an authorized copy of a book that it lawfully owns without violating the copyright laws. However, distributing unlawful copies of a copyrighted work does violate the copyright owner’s distribution right and, as a result, constitutes copyright infringement. In order to establish distribution of a copyrighted work, a party must show that an unlawful copy was disseminated to the public.” The court agreed with the copyright owner in this case that when a library “adds a work to its collection, lists the work in its index or catalog system, and makes the work available to the borrowing or browsing public, it has completed all the steps necessary for distribution to the public.” 38
Example. A federal appeals court ruled that Andrew Lloyd Webber may have engaged in copyright infringement of a religious song composed by Ray Repp, a composer of liturgical music. Ray Repp has written religious music for more than thirty years, and is a leading composer and performer of liturgical folk music. His music is included in many hymnals and songbooks, and has been published by the Lutheran, Episcopal, Presbyterian, and Catholic churches as well as by the Church of the Brethren. In 1978 he wrote the song “Till You.” The song is liturgical in nature, and is based on passages from the Book of Luke commonly known as the “Magnificat.” It has been distributed on albums, cassettes, and 25,000 copies of sheet music. Repp claimed that Andrew Lloyd Webber had access to this song and unlawfully copied it in writing the “Phantom Song” in his musical “The Phantom of the Opera.” A federal district court dismissed the lawsuit largely on the basis of Webber’s own testimony that he never heard the song, that he disliked “pop church music,” and that his interest in church music was limited to the “English choral tradition.” Repp appealed, and a federal appeals court reversed the district court’s ruling and ordered the case to proceed to trial. The court noted that “if the two works are so strikingly similar as to preclude the possibility of independent creation, copying may be proved without a showing of access.” The court continued: “While there was little, if any, evidence demonstrating access, there was considerable evidence that Phantom Song is so strikingly similar to ‘Till You’ as to preclude the possibility of independent creation and to allow access to be inferred without direct proof.” In support of its conclusion, the court referred to two expert musicologists who had testified that there was “no doubt” that Webber’s “Phantom Song” was strikingly similar to and based upon “Till You.” 39
E. Costs and Attorneys’ Fees
Section 505 specifies that in any infringement lawsuit the court “in its discretion may allow the recovery of full costs by or against any party…[and] may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”
F. Criminal Offenses
Section 506 lists four types of criminal offenses: willful infringement for profit, fraudulent use of a copyright notice, fraudulent removal of a copyright notice, and knowingly false representations in connection with a copyright application. Conviction of criminal infringement may result in a fine of up to $250,000, imprisonment for up to 5 years, or both. In addition, a court is empowered to order the seizure, forfeiture, and destruction or other disposition of infringing copies.
5.4 Liability of Churches for the Copyright Infringement of Employees
Can a church be liable for the copyright infringements of its staff? What about for the infringements of volunteers, such as youth workers and Sunday School teachers? Churches can be liable for copyright infringement in any of the following three ways:
(1) direct copyright infringement
direct infringement
A church may directly commit copyright infringement by its own actions. For example, if a church creates a web site that includes unauthorized copies of copyrighted material, the church would be directly liable for violating the copyright owner’s exclusive right of reproduction. Or, if a church records worship services in which copyrighted music was performed, the church has infringed upon the copyright owners’ exclusive right of reproduction.
(2) contributory copyright infringement
contributory infringement
The Copyright Act does not limit liability for copyright infringement to direct infringers. Section 501 states that “anyone who violates any of the exclusive rights of the copyright owner … is an infringer of the copyright.” The courts have ruled that “third parties” can be liable for copyright infringement on the basis of either contributory or vicarious copyright infringement.
The most often-quoted definition of contributory infringement was provided by a federal appeals court:
[O]ne who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be held liable as a contributory infringer. 40
This definition demonstrates that contributory liability requires that the secondary infringer “know or have reason to know” of direct infringement. Knowledge of specific acts of infringement is not required. One court has observed that “if a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement.” 41
Contributory copyright infringement also requires that the secondary infringer “materially contribute to the infringing conduct. Material contribution can include providing the “site and facilities” for the infringing conduct.
(3) vicarious copyright infringement
vicarious infringement
Vicarious copyright liability is an “outgrowth” of the doctrine of respondeat superior. Under this doctrine an employer is liable for the acts of its employees committed within the scope of their employment. Therefore, a church may be liable on the basis of vicarious copyright infringement for the acts of direct copyright infringement by its employees committed within the scope of their employment. However, the principle of vicarious copyright liability goes well beyond infringement by employees while at work. It also extends to cases in which an organization “has the right and ability to supervise the infringing activity and also direct financial interest in such activities.” 41 Under this expanded definition, it is possible for churches to be liable for many acts of direct copyright infringement by their employees and others. All that is required is that a church have a right to supervise an infringing activity and a direct financial interest in that activity.
A right of supervision exists whenever a church has the authority to access and inspect its computers. Such authority often is expressly given in a computer use policy. One court has noted that “to escape imposition of vicarious liability, the reserved right to police must be exercised to its fullest extent. Turning a blind eye to detectable acts of infringement for the sake of profit gives rise to liability…. [F]ailure to police the conduct of the primary infringer leads to imposition of vicarious liability for copyright infringement.” 43
Vicarious liability is sometimes justified on the ground that it will create “a greater incentive for the enterprise to police its operations carefully to avoid unnecessary losses.” 44
Key point. The Supreme Court has noted that the “lines between direct infringement, contributory infringement, and vicarious liability are not clearly drawn.” 45
Example. In 1987 a standard file format for the storage of audio recordings in a digital format was established that became known as MP3. With appropriate software, a computer operator can copy an audio compact disk (CD) directly onto a computer’s hard drive by compressing the audio information on the CD into the MP3 format. The MP3’s compressed format allows for rapid transmission of digital audio files from one computer to another by electronic mail. Napster is a company that promoted the sharing of MP3 files through a process called “peer-to-peer” file sharing. Users simply went to the Napster internet site, downloaded software, and then were able to transfer exact copies of the contents of MP3 files from one computer to another via the internet. This allowed users to “download” exact digital copies of a vast array of popular copyrighted songs. A group of music publishers sued Napster in federal court. The publishers claimed that Napster was a “contributory and vicarious” copyright infringer, and they asked the court to issue an injunction prohibiting Napster from “engaging in, or facilitating others in copying, downloading, uploading, transmitting, or distributing” copyrighted music. The court issued the injunction, and Napster appealed. A federal appeals court ruled that Napster had engaged in copyright infringement, and it sustained the district court’s injunction. The appeals court concluded that Napster users infringe at least two of the copyright holders’ exclusive rights—the rights of reproduction and distribution. Napster users who upload files for others to copy violate the copyright holder’s exclusive right of public distribution. And, Napster users who download files containing copyrighted music violate the copyright holder’s exclusive right of reproduction. The court concluded that Napster was liable for the users’ acts of copyright infringement on the basis of “contributory copyright infringement.” It explained, “one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another; may be held liable as a contributory infringer. Put differently, liability exists if the defendant engages in personal conduct that encourages or assists the infringement.” The court noted that Napster had “actual, specific knowledge of direct infringement” by its users, and concluded that “if a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement.” The court also found Napster liable for its users’ acts of copyright infringement on the basis of “vicarious copyright infringement.” It defined vicarious infringement as infringement that is imputed to an employer because of acts of infringement by its employees in the course of their employment. But it concluded that vicarious liability also can be imputed to a defendant that “has the right and ability to supervise the infringing activity and also has a direct financial interest in such activities.” The court ruled that this test was met in this case. Not only did Napster have a direct financial interest in the infringing activity of its users (its future revenue were directly dependent upon “increases in userbase”), but it also had the ability to supervise its users’ conduct. The court noted that Napster’s ability to block infringers’ access for any reason was evidence of the right and ability to supervise, and that “to escape imposition of vicarious liability, the reserved right to police must be exercised to its fullest extent. Turning a blind eye to detectable acts of infringement for the sake of profit gives rise to liability.” 46
Endnotes
1 Universal Athletic Sales Co. v. Salkeld, 376 F. Supp. 514 (W.D. Pa. 1974).
2 Sony Corp. v. Universal City Studios, Inc, 104 S. Ct. 774 (1984); Walt Disney Productions v. Filtration Associates, 628 F. Supp. 871 (C.D. Cal. 1986).
3 House Report on the Copyright Act of 1976, p. 61.
4 Schumann v Albuquerque Corp., 664 F. Supp. 473 (D.N.M. 1987).
5 House Report on the Copyright Act of 1976, p. 61.
6 See, e g., Atari, Inc. v. North American Philips Consumer Electronics Corporation, 672 F.2d 607 (7th Cir. 1982).
7 See, e.g., Davis v. E.I. duPont de Nemours & Co., 240 F. Supp. 612 ( S.D.N.Y. 1965).
8 Nichols v. Universal Pictures Co., 45 F.2d 119 (2nd Cit. 1930).
9 Robertson Sc Batten, Barton, Durstine and Osborn, Inc., 146 F. Supp. 795 (S.D. Cal. 1956).
10 Elsmere Music, Inc. v. National Broadcasting Co., 482 F. Supp. 741 (S.D.N.Y 1980), gaff’s, 623 F.2d 252 (2nd Cir. 1980).
11 Henry Holt & Co. v. Liggett & Myers Tobacco Co., 23 F. Supp. 302 (E. D. Pa. 1938).
12 Amana Refrigeration, Inc. v. Consumers Union of the United States, Inc., 431 F. Supp. 324 (N.D. Iowa 1977).
13 Martin Luther King, Jr. Center for Social Change, Inc. v. American Heritage Products, Inc., 508 F. Supp. 854 (N.D. Ga, 1981).
14 Hederman Products Copr. v. Tap-Rite Products Corp., 228 F. Supp. 630 (D. N. J. 1964).
15American Greetings Corp. v. Kleinfab Corp., 400 F. Supp. 228 (S.D.N.Y. 1975).
16 Wainwright Securities, Inc. v. Wall Street Transcript Corporation, 558 F,2d 91 (2nd Cir. 1977).
17 Nihon Keizai Shimbun, Inc v. Comline Business Data, Inc., 166 F.3d 35 (2nd Cir. 1999) quoting Judge Learned Hand in Sheldon
v. Metro-Goldwyn Pictures, Corp., 81 F.2d 49 (2nd Cir. 1936).
18 Toulmin v. The Rike-Kumler Co., 316 F.2d 232 (6th Cir. 1963).
19 Suid v. Newsweek Magazine, 503 F. Supp. 146 (D.D.C. 1980).
20 Jackson v. Washington Monthly Co., 481 F. Supp. 647 (D.D.C. 1979).
21 McCrae v. Smith. 968 F. Supp. 559 (D. Colo. 1997).
22 Norse Sc Henry Holt & Company, 847 F. Supp. 142 (N.D. Cal. 1994).
23 Wright v. Warner Books, Inc., 748 F. Supp. 105 (S.D.N.Y. 1990).
24 New Era Publications International v. Carol Publishing Group, 904 F.2d 152 (2nd Cir. 1990).